I am concerned that there will be a significant increase in the number of examiner rejections based upon the asserted obviousness of the invention. The KSR decision has weakened the ability of the applicant to rebut those claims during prosecution. It is no longer possible to point to the absence of a suggestion, motivation or teaching of a combination. Now, suggestion, motivation and teaching can be assumed within the common sense of a person skilled in the art. (Inherently known to persons skilled the art?)
I reviewed the MPEP regarding the ability of an inventor to give an oath as what knowledge would be in the possession of the person skilled in the art. One relevant section is MPEP 716. This section pertains to the “catch-all” category of affidavits or declarations used to overcome a 37 USC § 103 rejection for obviousness.
A rejection can be overcome by a declaration meeting the requirements of 37 CFR 1.132.
The MPEP does not provide specific guidance as to the evidence required to overcome the examiner’s rejection for obviousness. Of course at this stage of the prosecution, it is the examiner that will make the determination of the sufficiency of the declaration.
MPEP 716 provides some examples of insufficient declarations:
The Declarant has never seen the subject matter of the claims before.
The Declarant merely states that the claimed subject matter functions as it was intended to function.
The declaration refers only to the invention and not to the individual claims.
The declaration states merely that the subject matter solved a problem that was long standing in the art. Such a statement does not provide evidence that others were working on the problem and for how long. In addition, it does not provide evidence that persons skilled in the art who were presumably working on the problem knew of the teachings of the above cited references, they would still be unable to solve the problem.
MPEP 2112 states that express, implicit and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 37 USC 103. In relying upon the theory of inherency, the examiner must provide a basis in fact and /or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art
The inherency of the teaching is a question of fact. The possibility of a result is not sufficient to establish the inherency of that result. To establish inherency, the extrinsic evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. Inherency, however, may not be established by probabilities or possibilities.