IP Lawyer: montysimmons, Patent Prosecutor replied 9 years ago
Obviousness Rejections are difficult to argue around as the Examiners often use hindsight in their analysis but they will deny same with their last breath.
Below are simply some case law and sample arguments that can be modified and used in an non-obviousness argument. One possible template for an non-obviousness argument.
1.1 REJECTIONS UNDER 35 U.S.C. §102 and §103
Relevant Case Law and Statutes: §102 and §103
It is respectfully XXXXX XXXXX controlling case law has frequently addressed rejections under 35 U.S.C. §102 and §103, a review of which might prove helpful before setting forth a discussion of the prior art applied in the Office Action.
Prima Facie Case
The Examiner has the initial burden to set forth the basis for any rejection so as to put the patent Applicant on notice of the reasons why the Applicant is not entitled to a patent on the claim scope that he seeks – the so called “prima facie case.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (the initial burden of proof is on the USPTO “to produce the factual basis for its rejection of an application under sections 102 and 103”). (quoting In re Warner, 379 F.2d 1011, 1016 (CCPA 1967)). The “prima facie case” serves as a procedural mechanism that shifts the burden of going forward to the Applicant, who must produce evidence and/or argument rebutting the case of unpatentability. See Oetiker, 977 F.2d at 1445; Piasecki, 745 F.2d at 1472.
Applicant’s rebuttal evidence “may relate to any of the Graham factors including the so-called secondary considerations.” Piasecki, 745 F.2d at 1472 (citations omitted, emphasis added).
35 U.S.C. §102 Anticipation
“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). To establish anticipation, every element and limitation of the claimed invention must be found in a single prior art reference, arranged as in the claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). If any claim, element, or step is absent from the reference that is being relied upon, there is no anticipation. Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 230 U.S.P.Q. 81 (Fed. Cir. 1986). In USPTO proceedings, claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Sneed, 710 F.2d 1544, 1548, 218 U.S.P.Q. 385, 388 (Fed. Cir. 1983).
35 U.S.C. §103 Obviousness
“Section 103 forbids issuance of a patent when ‘the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
The question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, (3) the level of skill in the art, and (4) where in evidence, so-called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18(1966). See also KSR, 550 U.S. at 406-07 (“While the sequence of these questions might be reordered in any particular case, the [Graham] factors continue to define the inquiry that controls.”).
Further, “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418.
With regard to secondary considerations, an Applicant can negate a prima facie case of obviousness by proffering evidence of secondary considerations of non-obviousness. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 405 (2007). In fact, the courts have noted that: “[s]econdary considerations ‘can be the most probative evidence of nonobviousness in the record . . . .’” Crocs, Inc. v. ITC, 598 F.3d 1294, 1310 (Fed. Cir. 2010) (quoting Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 960 (Fed Cir. 1986)).
Relevant secondary considerations include: (1) a product’s commercial success; (2) skepticism in the field; (3) copying of the product by others; and (4) the product meeting a long felt, but unsolved need. See e.g., KRS, 550 U.S. at 405 (commercial success and long felt need); Metabolite Labs. Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1368 (Fed. Cir. 2004) (initial skepticism); Akami Techs., Inc. v. Cable & Wireless Servs., Inc., 344 F.3d 1186, 1196 (Fed. Cir. 2003) (copying).
Furthermore, “‘there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness’”. KSR Int’l Co. v. Teleflex Inc.,XXXXX 1727, 82 USPQ2d 1385, 1396 (2007) (quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)). Therefore, the task of the Patent Office is essentially a burden of proof, not just to show that every limitation in the claimed invention is contained in a plurality of prior patents with selected elements similar to respective parts of a claimed combination, but to show teachings to support obviously combining the elements in the manner claimed.
Additionally, it should be appreciated that virtually all inventions are necessarily combinations of old elements. The notion, therefore, that combination claims can be declared invalid merely upon finding similar elements in separate prior patents would necessarily destroy virtually all patents and cannot be the law under 35 U.S.C. §103. Panduit Corp. v. Dennison Manufacturing Co., 1 U.S.P.Q. 2d 1593, 1603 (Fed. Cir. 1987; footnotes omitted).
Further, "simplicity and hindsight are not proper criteria for resolving the issue of obviousness." Ex parte Clapp, 227 U.S.P.Q. 972, 973 (PTO Bd. App. 1985). Indeed, hindsight is the magic that makes every invention obvious.
Claims xxx stand rejected under 35 U.S.C. §103(a) as being unpatentable over the xxxxx in view of xxxxx.
For the same reasons presented above, Applicant respectfully XXXXX XXXXX his invention, as previously claimed and as now claimed, is patentable and non-obvious over the above identified prior art references, alone or in combination, for the same reasons provided in the previous section.
More specifically, the prior art of reference, neither alone nor in combination, teach or make obvious each and every limitation of the claimed invention including a [novel feature].
Regarding [prior art references], such references also fail to teach or makes obvious the Applicant’s [novel feature], and therefore, there cannot be a motivation to combine the cited reference to achieve the Applicant’s [novel feature] as such such feature is not present in the prior art.
[add more arguments here as to missing limitation and failure to provide motivation to combine.
Importantly, the prior art must make an invention obviousness when the invention is considered as a whole, not in components.
[Consider this crazy accident. This example takes a little time but it shows how obviousness rejections use “hindsight” to make anything obvious.
Two kids are playing basketball. Before the game, one of the kids throws a spoon over on the side of the court. They are playing and miss a shot and the ball bounces over and hits a rake leaning against a wall. The rake falls over and hits the spoon lying on the ground. The Spoon flips way up into the air and comes down hitting a guy walking by in the eye. The guy quickly covers his eye and walks out into the highway in shock. A car X swerves to miss him and loses control and runs into another car. Car x sues the kids for negligence for leaving a spoon on the ground.
Of course this event is a crazy accident but the “smart” lawyer breaks the accident down into individual events to prove that the accident was completely predictable and the kid was at fault for negligently leaving that spoon on the ground.
The lawyer examines the kid on the stand asks: Was it not predictable that you could miss a shot and for the ball to bounce over and hit that rake? Kids answers: Yes.
Then lawyer asks: Is it not predictable that such rake would fall over and hit the spoon lying on the ground making the spoon flip into the air? Kids answers: Yes.
Lawyer: now, is it not predictable that such spoon could hit a person waling by in the eye? Kid answers: Yes.
Lawyer: Ok. No is it not predictable such a person would be shocked at being hit in the eye and as a result not watch where he was going an walk out into the street? Kid answers: Yes.
OK says the lawyer, so now I ask you, since all the individual events we just talked about are predictable, is it not obvious that your throwing that spoon on the ground could cause the car accident that occurred that day?
The point is, one has to look at the accident as a whole and without hindsight. One can make even the most complex accident/event obvious by using hindsight and focusing on individual events.
Same for inventions, the Space Shuttle is obviousness using hindsight and focusing on individual components and not viewing the Space Shuttle as a whole. Thus, one must sometimes remind an Examiner that he/she must view the invention as a whole and not to use hindsight.
OBJECTIVE ANALYSIS of non-Obviousness
Questions related to obviousness are necessarily a subjective issue where everyone has an opinion usually supporting their own self-interests and frequently using impermissible hindsight (with regard to claim construction). As stated previously, hindsight is the magic that makes all inventions obvious. The Applicant’s claimed invention does become obvious after reading Applicant’s disclosure and using hindsight to project Applicant's teachings onto the prior art. And while the step from the prior art in combination to Applicant’s device may seem a simple step [or not], the objective facts indicate such step was not so obvious.
The courts understand such problems and to make the issue of obviousness less subjective and more objective, and thus, predictable, the courts have established a process of objectively making selected underlying factual determination related to the issue of obviousness. Thus, as noted above, the question of obviousness is correctly resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, (3) the level of skill in the art, and (4) where in evidence, so-called secondary considerations . Applicant will address such issues below.
(1) the scope and content of the prior art
The arguments in this section are invention dependent but one basically describes what the prior art references do and teach and contrast it with what the Applicant’s Invention does.
(2) Differences between prior art and the claimed subject matter
The arguments in this section are invention dependent: here you simply compare and contrast your invention with the prior art.
(3) the level of skill in the art
Just describe the level of skill in the art of your invention.
(4) SECONDARY CONSIDERATIONS
As noted above, with regard to secondary considerations, an Applicant can negate a prima facie case of obviousness by proffering evidence of secondary considerations of non-obviousness . In fact, the courts have noted that: “[s]econdary considerations ‘can be the most probative evidence of non-obviousness in the record . . . .’” (emphasis added). Relevant secondary considerations include:
(i) skepticism in the field;
(ii) the product meeting a long felt, but unsolved need;
(iii) a product’s commercial success; and
(iv) copying of the product by others; and
(v) failed attempts to solve problem.
See e.g., KRS, 550 U.S. at 405 (commercial success and long felt need); Metabolite Labs. Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1368 (Fed. Cir. 2004) (initial skepticism); Akami Techs., Inc. v. Cable & Wireless Servs., Inc., 344 F.3d 1186, 1196 (Fed. Cir. 2003) (copying).
(i) Skepticism in the field: Tell how others said your invention could not be done (if applicable).
(ii) Meeting a long felt but unsolved need: Show how the problem had been around for some time and never “solved”.
(iii) Commercial success: Show your commercial success if you can. The point is, if you are making lots of money, and your invention is so obvious, why did others not do it first? They just did not need the money?
(iv) Copying of the product by others:
Evidence of copying by others, if available, is evidence of non-obviousness.
(v) Failure by others: Evidence that others have tried and failed to solve the problem your invention address is evidence of non-obviousness.
The above is simply one possible template for addressing non-obviousness. The actual arguments made are very dependent on the claims of interest, the prior art asserted and the invention as a whole. The case law does not change, only how it is used.
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