WEB PATENT NEWS--January, 2003

by Robert M. Hunter, Registered Patent Agent

News about patents, licensing and seed capital sources for inventors and innovating organizations.


I. WE SHALL OVERCOME - OBVIOUSNESS REJECTIONS, THAT IS - Learn how to convince an Examiner that your invention is nonobvious and, therefore, patentable.

II. USPTO ENHANCES WEBSITE TO ASSIST INDEPENDENT INVENTORS - New and improved web pages focus on the needs of the independent inventor.


Patent prosecution is often an adversarial process, in which the Examiner assigned to your regular patent application rejects your claims and you attempt to overcome those rejections. It is not unusual for the Examiner to reject claims, giving as a reason for that rejection that the claimed invention would have been obvious to a person having ordinary skill in the art at the time the applicant conceived the claimed subject matter. This article explains how to overcome such obviousness rejections.

An obviousness rejection (made under 35 USC 103) is an assertion by the Examiner that a particular invention as described by the proposed words of a patent claim is insignificantly different from the prior art. The Examiner is not necessarily saying that your invention is obvious per se, but rather the way you have described it in a claim renders the subject matter obvious. (For example, you may have described in a claim the basic idea of your invention, rather than one way to do it, which is what you really invented.)

When an obviousness rejection is made in a first Office action on the merits of an application, the applicant has two choices: (1) if the Examiner is correct, the applicant can amend the wording of the claim so that it does not describe obvious subject matter or (2) if the Examiner is incorrect (being human, Examiners are fallible), the applicant can show that the claimed invention is not obvious. (If such a rejection is made in a second Office action, the applicant typically must either agree with the Examiner or appeal his decision to a board of supervisory Examiners, which can get expensive, due to the extra time and fees involved. So, prompt and thorough action is required to keep your options open.)

Often, the meaning of only one term or phrase is at issue, so it is critical to understand what the position of the Examiner really is. The Examiner has an initial duty to supply a factual basis for each rejection, including obviousness rejections. The courts have interpreted this duty as placing on the Examiner the burden of presenting a prima facie (on first view) case of obviousness. Thus, in the Office action, the Examiner must not only assert that a claimed invention is obvious, he must provide to the applicant "such information and references as may be useful in judging of the propriety of continuing the prosecution of his application" (35 USC 132). The USPTO has provided this definition of prima facie unpatentability: "A prima facie case of unpatentability is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard, giving each term in the claim its broadest reasonable construction consistent with the specification, and before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability" (1.56(b)(2)). The MPEP also describes the information that must be provided by the Examiner as follows: "(A) the relevant teachings of the prior art relied upon, preferably with reference to the relevant column or page number(s) and line number(s) where appropriate, (B) the difference or differences in the claim over the applied reference(s), (C) the proposed modification of the applied reference(s) necessary to arrive at the claimed subject matter, and (D) an explanation why one of ordinary skill in the art at the time the invention was made would have been motivated to make the proposed modification" (MPEP 706.02(j)).

One way, then, that an obviousness rejection can be attacked is to argue that the Office action is procedurally defective because the Examiner has not provided the information required by MPEP 706.02(j). Unless the Examiner has failed to include in the Office action a reference (document) that is difficult for you to obtain, relying solely on this approach can be dangerous, in that the next Office action may be made final even if the applicant is ultimately shown to be correct (e.g., by means of a petition to the Commissioner or the decision of a court). If this approach is taken, it is prudent to file the response within 30 days of the mailing date of the Office action so that the response can also include a request that the response period be reset by the Examiner, giving the applicant a chance to make up for lost time. If a reference is not missing from the Office action, it is prudent only to use this approach in conjunction with alternative approaches described below. One must always remember that the goal is always to obtain the broadest possible patent protection and not to show that an Examiner is incompetent (even is he is) because time (and time is money, especially in the patent world) is on his side.

A second way that an obviousness rejection can be overcome (notice I did not say "attacked" because this is a nicer way) is to show that the Examiner has not demonstrated all the elements of a prima facie case and that, therefore, the applicant is deserving of a patent. For all of the elements to have been met, all of the following must be true: (1) all of the references that the Examiner is relying on must have been in the prior art (in a chronological sense), (2) all of the references must be either in the field of the inventor's endeavor or in a reasonably pertinent field, (3) the reference(s) must generally place the subject matter of the claimed invention in prior art, (4) a reason, suggestion or motivation for combining the teachings of the references to produce the claimed invention must be present in the prior art, and (5) the resulting combination or modification of the prior art would render the claimed invention obvious to a person having ordinary skill in the art. (You can think of a prima facia case of obviousness as a five-legged table that will collapse if just one of the legs is pulled out from under it.)

The first element (leg) of the case to investigate is the chronological one. For example, if the critical date of the reference is less than a year before your provisional (or parent regular) patent application's filing date, it may be possible for you to show that you had conceived of your invention and were in the process of diligently reducing it to practice (by either filing a patent application or building and testing a working model) before the critical date. That approach (called "swearing behind a reference") would remove the reference from the prior art, but it can only work if you can produce evidence of conception and diligence (which is the reason you are maintaining your inventor's notebook, right?) (MPEP 2138.06). If the Examiner is relying not on a reference, but on his personal knowledge (called "official notice"), it is important to request that the Examiner provide citations to back up his position (37 CFR 1.104(b)(2)). Failure to make this request effectively waives this important legal right (MPEP 2144.03).

The second element of the case requires that all the references be in one or more arts (technical fields) that are analogous to that of the claimed invention (MPEP 2141.01(a)). The Federal Circuit has stated that the references must be "reasonably pertinent to the particular problem with which the inventor is involved" and that "common sense" must be used to decide "in which fields a person of ordinary skill would reasonably be expected to look for a solution to the problem facing the inventor." One place the Examiner can look to determine which arts are pertinent is the applicant's statement of the field of the invention in the specification. For this reason, applicants must take care not to overstate the field of the invention in patent applications. If the field of any of the references are not pertinent to the problem you solved as an inventor, you can argue that the reference should not be considered by the Examiner.

The third element of the case requires that the references "teach or suggest all the claim limitations," that is, all the features of the claimed invention (MPEP 2143). In the words of the Federal Circuit, "the test for obviousness in not whether the features of one reference may be bodily incorporated into another reference . . . . Rather, we look to see whether combined teachings render the claimed subject matter obvious." In this regard, it is often possible to show that a combination proposed by an Examiner will change the principle of operation of the primary reference or render the reference inoperable for its intended purpose (MPEP 2143.01). Even combinations of old parts or steps can be nonobvious, in some cases, for the same reason that "the dictionary, a mere book of words, contains the great novels of the future which will appear only when those words are combined to create a great work by those skilled in the art." It is also often the case that the Examiner, in his haste (operating under a rigid examination productivity system) has simply misunderstood one or more of the references, or the claim. In justifying his obviousness rejection, the Examiner could be giving a word or phrase in the claim a definition that is other than its "plain meaning" or a meaning that is inconsistent with the way the word or phrase is used in the specification, which is not allowed (MPEP 2111, MPEP 2111.01). In claims to a process, a novel starting material or end product can render an otherwise known sequence of steps nonobvious (MPEP 2116.01). As I pointed out in my October, 2002 newsletter, care must be taken in explaining how the claimed invention differs from the teachings of the references, because what you put in the record can be used against in the event you file a patent infringement suit. So, try to say as little as possible about what your invention is "not."

The fourth element requires that the prior art as a whole contain some implicit or explicit reason, suggestion or motivation for a person of ordinary skill (having no knowledge of the claimed invention) to combine or modify the references in the way proposed by the Examiner. Just because references can be combined or modified does not render the proposed combination obvious, unless the prior art also suggests the desirability of the combination (MPEP 2143.01). A reasonable expectation of success of the proposed combination or modification is also required (MPEP 2143.02). Potential sources for motivation to combine references include the nature of the problem to be solved, the teachings of the prior art, and the knowledge of persons having ordinary skill in the art. It is often possible to argue that the Examiner is making the very human mistake of using impermissible hindsight (recognizing the advisability to combine the references only after the inventor has claimed the combination) as the motivation to combine the references. Sometimes, you can show, in fact, that the references actually "teach away" from your claimed invention, discouraging persons of ordinary skill from taking the path you took in addressing the problem solved by your invention.

The fifth element requires that the combination of teachings assembled by the Examiner appear to show or suggest that the claimed subject matter would have been obvious at the time the claimed invention was made to a person having ordinary skill in the art (not today, but way back when you thought of it). The claim as a whole must be considered because it is inappropriate for the Examiner to piece together an invention using the claim limitations as a guide. Sometimes, an inappropriate standard of obviousness is proposed, such as asserting that the invention is "obvious to try" or asserting that the invention must produce a synergistic result (a result that is greater than the sums of the parts). Reliance on such standards cannot be used to establish obviousness. Moreover, it is not the opinion of the inventor or the Examiner (who may be experts in the art), but that of the hypothetical "person of ordinary skill" who is presumed to be aware of all of the pertinent prior art and who has "the capability of understanding the scientific and engineering principles applicable to the pertinent art" that counts (MPEP 2141.03). Sometimes nonobviousness can be established by showing that the inventor discovered the problem, because U.S. patent law permits patenting of inventions that address problems that are difficult to detect but easy to solve.

Submitting objective evidence of nonobviousness (by means of affidavits) is appropriate in some instances. Factors such as commercial success, fulfilling a long-felt need, failure of others, copying of the invention by others, unexpected results or properties, licenses indicating industry respect or prior skepticism by those skilled in the art can support a holding of nonobviousness, as long as there is a connection (a "nexus" or cause and effect relationship) between the factor and the claim limitations. For example, it must be shown that it is the structure of the invention that makes it commercially successful and not a brilliant marketing campaign.

There are lots of arguments that do not work in trying to convince an Examiner that your invention is nonobvious. Arguing against the references individually (instead of their combined teachings), arguing that the Examiner is combining too many references, arguing that your claims contain limitations that they do not, arguing that a combination would not make economic sense, are all approaches that do not typically work (MPEP 2145). Neither are arguments about how an apparatus works appropriate in defending apparatus claims (MPEP 2115).

Hopefully, this article will help you participate in the development of arguments and evidence needed to convince an Examiner that your invention is nonobvious, and therefore, patentable. Don't take an obviousness rejection personally. Understand it and overcome it. It is almost always possible to patent some aspect of an invention if a patent application is drafted by a patent professional and based on the results of a professional novelty search.


The United States Patent and Trademark Office (www.USPTO.gov) recently updated its website to better meet the special needs and interests of independent inventors and entrepreneurs. “How to” brochures expressly designed for independent inventors are now posted on the website. Links to other useful USPTO Web pages, such as the Patent and Trademark Depository Library Program and Patent Cooperation Treaty (PCT), have been added, as have links to other government agencies, including the Small Business Administration (SBA) and the Federal Trade Commission FTC), each of which have programs and information useful to independent inventors. The USPTO’s independent inventor website also now has a useful “tip of the month.”


Robert M. (Bob) Hunter, Ph.D.
Licensed Professional Engineer
Registered Patent Agent
65-1116 Hoku'ula Rd.
P.O. Box 2709
Kamuela, HI 96743
tel (808) 885-4194
fax (808) 885-4114
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