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March 14, 2005

Handling §103 Rejections

It’s not unusual to receive a 35 U.S.C. §103(a) combination rejection applied with little more than the glib dab of glue: "it would have been obvious". Examiners often implicitly rely upon art class as a binder for justifying combination. Convenient selective quotations are applied for features that wouldn’t mesh if looking at the art holistically. Application out of context is a similar flaw: applying a prior art feature used in a specific way to a claimed invention using a similar feature differently.

Case law guidelines edifying the criteria for a §103(a) combination rejection are remarkably consistent.

1. The prior art references themselves must suggest combination. Failing explicit self-suggestion, the prior art must provide the motivation for obviousness in combination. Such motivation may be found by considering the references holistically. If the purpose / problem being solved ("nature of the problem"), function and structure of the prior art references are aligned, one may reasonably conclude combination of the references obvious, as no differences exist in the principles of operation between the references. The initial burden of meeting this criterion by logical exposition belongs to the Examiner.

2. To combine references without evidentiary support, at least some suggestion or motivation, by the prior art constitutes impermissible hindsight. Combination of prior art with different principles of operation is impermissible. An Examiner cannot simply assert 'well within the ordinary skill of the art at the time the claimed invention was made'.

3. To be construed anticipatory, the prior art must teach or at least suggest all claim limitations, whether such limitations appears in the preamble or body of a claim.

4. The final test is comparing the claimed invention as a whole to a prior art reference. Claim limitations are not puzzle pieces to be matched to atomized prior art reference suggestions, and thus examined out of context. As with obviousness in combining prior art references, only if the prior art aligns with the claimed invention in principles of operation may a prior art reference be considered anticipatory.

MPEP itself provides all the ammunition for the above summary about the appropriate grounds for §103(a) combination rejection, including case law support.

MPEP 2143 -To establish a prima facie case of obviousness, three basic criteria must be met. First, there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings. Second, there must be a reasonable expectation of success. Finally, the prior art reference (or references when combined) must teach or suggest all the claim limitations. The teaching or suggestion to make the claimed combination and the reasonable expectation of success must both be found in the prior art, not in applicant's disclosure. In re Vaeck, 947 F.2d 488, 20 USPQ2d 1438 (Fed. Cir. 1991).

The initial burden is on the examiner to provide some suggestion of the desirability of doing what the inventor has done. "To support the conclusion that the claimed invention is directed to obvious subject matter, either the references must expressly or impliedly suggest the claimed invention or the examiner must present a convincing line of reasoning as to why the artisan would have found the claimed invention to have been obvious in light of the teachings of the references." Ex parte Clapp, 227 USPQ 972, 973 (Bd. Pat. App. & Inter. 1985).

When applying 35 U.S.C. 103, the following tenets of patent law must be adhered to:
(A) The claimed invention must be considered as a whole;
(B) The references must be considered as a whole and must suggest the desirability and thus the obviousness of making the combination;
(C) The references must be viewed without the benefit of impermissible hindsight vision afforded by the claimed invention; and
(D) Reasonable expectation of success is the standard with which obviousness is determined.
Hodosh v. Block Drug Co., Inc., 786 F.2d 1136, 1143 n.5, 229 USPQ 182, 187 n.5 (Fed. Cir. 1986).

Obviousness can only be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either explicitly or implicitly in the references themselves or in the knowledge generally available to one of ordinary skill in the art. "The test for an implicit showing is what the combined teachings, knowledge of one of ordinary skill in the art, and the nature of the problem to be solved as a whole would have suggested to those of ordinary skill in the art." In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1317 (Fed. Cir. 2000). See also In re Lee, 277 F.3d 1338, 1342-44, 61 USPQ2d 1430, 1433-34 (Fed. Cir. 2002) (discussing the importance of relying on objective evidence and making specific factual findings with respect to the motivation to combine references); In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988); In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992).

The mere fact that references can be combined or modified does not render the resultant combination obvious unless the prior art also suggests the desirability of the combination. In re Mills, 916 F.2d 680, 16 USPQ2d 1430 (Fed. Cir. 1990)

A statement that modifications of the prior art to meet the claimed invention would have been " 'well within the ordinary skill of the art at the time the claimed invention was made' " because the references relied upon teach that all aspects of the claimed invention were individually known in the art is not sufficient to establish a prima facie case of obviousness without some objective reason to combine the teachings of the references. Ex parte Levengood, 28 USPQ2d 1300 (Bd. Pat. App. & Inter. 1993). See also In re Kotzab, 217 F.3d 1365, 1371, 55 USPQ2d 1313, 1318 (Fed. Cir. 2000)

MPEP 2141.01(a) - While Patent Office classification of references and the cross-references in the official search notes of the class definitions are some evidence of "nonanalogy" or "analogy" respectively, the court has found "the similarities and differences in structure and function of the inventions to carry far greater weight." In re Ellis, 476 F.2d 1370, 1372, 177 USPQ 526, 527 (CCPA 1973)

To establish prima facie obviousness of a claimed invention, all the claim limitations must be taught or suggested by the prior art. In re Royka, 490 F.2d 981, 180 USPQ 580 (CCPA 1974). "All words in a claim must be considered in judging the patentability of that claim against the prior art." In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970). If an independent claim is nonobvious under 35 U.S.C. 103, then any claim depending therefrom is nonobvious. In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988).

If the proposed modification or combination of the prior art would change the principle of operation of the prior art invention being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious. In re Ratti, 270 F.2d 810, 123 USPQ 349 (CCPA 1959) (Claims were directed to an oil seal comprising a bore engaging portion with outwardly biased resilient spring fingers inserted in a resilient sealing member. The primary reference relied upon in a rejection based on a combination of references disclosed an oil seal wherein the bore engaging portion was reinforced by a cylindrical sheet metal casing. Patentee taught the device required rigidity for operation, whereas the claimed invention required resiliency. The court reversed the rejection holding the "suggested combination of references would require a substantial reconstruction and redesign of the elements shown in [the primary reference] as well as a change in the basic principle under which the [primary reference] construction was designed to operate." 270 F.2d at 813, 123 USPQ at 352.).

Distilling an invention down to the "gist" or "thrust" of an invention disregards the requirement of analyzing the subject matter "as a whole." W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984)

In determining the differences between the prior art and the claims, the question under 35 U.S.C. 103 is not whether the differences themselves would have been obvious, but whether the claimed invention as a whole would have been obvious. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 218 USPQ 871 (Fed. Cir. 1983); Schenck v. Nortron Corp., 713 F.2d 782, 218 USPQ 698 (Fed. Cir. 1983)

A prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984)

On a slightly different but related note, MPEP clarifies that a preamble may itself provide claim limitations. It is recommended practice to recite all limitations explicitly within the body of a claim, but such explicitness in the body may be more definitive in its limitation than the claim drafter intends. As a hinted limitation, a preamble limitation can offer a flexible defense against prior art during prosecution, and later enforcement proceedings, prosecution estoppel withstanding.

MPEP 2111.02 - Any terminology in the preamble that limits the structure of the claimed invention must be treated as a claim limitation. See, e.g., Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257, 9 USPQ2d 1962, 1966 (Fed. Cir. 1989).

"[A] claim preamble has the import that the claim as a whole suggests for it." Bell Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 620, 34 USPQ2d 1816, 1820 (Fed. Cir. 1995). "If the claim preamble, when read in the context of the entire claim, recites limitations of the claim, or, if the claim preamble is `necessary to give life, meaning, and vitality' to the claim, then the claim preamble should be construed as if in the balance of the claim." Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165-66 (Fed. Cir. 1999). See also Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951)

There are four aspects to rebutting §103(a) combination claim rejections:
1) conveying the nature of the prior art references holistically;
2) expositing the appropriateness of combining prior art references or specific features thereof, especially regarding similarities in purpose ("nature of the problem"), function, and structure;
3) assessing the anticipatory power of the prior art used for rejection, particularly what remains unanticipated;
4) disassembling the specific logic for rejection on a claim-by-claim basis.
Well-reasoned arguments pursuing these points should lead to allowance.

Posted by Patent Hawk at March 14, 2005 12:58 PM | Prior Art


One other way is to argue that the cited prior art is not actually prior art. Sometimes the examiner's don't carefully check the filings dates, or take the chance that you won't check the filings dates (i.e., when is "prior art" not prior art).

Posted by: james at June 16, 2009 3:46 AM