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November 12, 2006

Overcoming Obviousness

§103(a) has become a scourge of prosecution (some would say it has been for years). With the CAFC pretzel preening in anticipation of the Supreme Court going bananas with KSR v. Teleflex, examiners feel even more emboldened to sling obviousness rejections with aplomb.

The Kahn ruling (441 F.3d 977, 985 (Fed. Cir. 2006) (citing Graham v. John Deere Co., 383 U.S. 1, 13-14, (1966)) admonished:

[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.

That doesn't seem to stop examiners from hand-waving rejection of merely "...it would have been obvious to one skilled in the art at the time of the invention..."

The CAFC ruling from Cross Medical Products (424 F.3d at 132): "[what] the nature of the problem to be solved as a whole would have suggested to those of ordinary skill in the art."

The natural inclination when facing combined references via examiner imagination (i.e., without explicit suggestion by the prior art itself) is to argue that combined references constitute impermissible hindsight because the references were addressing different problems.

In attempting refutation of a combination, where the two patents used for rejection had contemporaneous prosecution, it occurred to me to argue, as circumstantial evidence to the contrary of both solving the same problem, that, of the over 150 references cited by the two prior art patents, there was no overlap at all. If they'd been solving the same problem, being contemporaneous, one would expect at least some overlapping prior art references out of such a large number.

Posted by Patent Hawk at November 12, 2006 5:48 PM | Prosecution