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February 3, 2008

Obviousness Training

USPTO examiner training in obviousness rejections has been ongoing. In review, what shines as sunlit crystal is the legacy of KSR: how disparate technologies may be combined as basis for rejection, beyond what prior art disclosed.

The training guide describes rationales to be used and gives examples, as listed:

- Combining prior art elements according to known methods to yield predictable results

- Simple substitution of one known element for another to obtain predictable results

- Use of known techniques to improve similar devices (methods, or products) in the same way

- Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results

- Obvious to try - choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success

- Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations would have been predictable to one of ordinary skill in the art

- Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention

The sine qua non in the training: "To reject a claim based on this rationale, Office personnel must resolve the Graham factual inquiries."

A lovely passage for plastering over the cracks in prior art coverage, from the PowerPoint presentation:

Prior art is not limited just to the references being applied, but includes the understanding of one of ordinary skill in the art. The prior art references need not teach or suggest all the claim limitations.

 - However Examiners must explain why the differences between the prior art and the claimed invention would have been obvious to one of ordinary skill in the art.

</sarcasm on> For those concerned about subjectivity in rejection, reassurance that SCOTUS in KSR plugged that hole, requiring factual objectivity: </sarcasm off>

The proper analysis is whether the claimed invention would have been obvious to one of ordinary skill in the art after consideration of all the facts.

Factors other than the disclosure of the prior art may provide the basis for concluding that it would have been obvious.

The presentation covers "Allowing in a Post-KSR World":

While KSR may provide strong support for obviousness rejections, claims will still be allowable because:

- Insufficient facts, or a persuasive showing by applicant countering one or more findings of fact.

- Consider:
    * Have the claims been given their broadest reasonable interpretation? Is there a special definition?
    * Is there confidence in the search? Did you search for the missing feature by itself?
    * Have the references been properly interpreted and considered for common sense conclusions and what they would teach to those in the art?

- Secondary considerations, e.g. commercial success, long felt need, and unexpected results.
    * Recall that the KSR rationales rely on “predictable results” or an “expectation of success”. Secondary considerations may be used to address this.
    * See MPEP 716 through 716.04 for tips on evaluating the persuasiveness of secondary considerations.
    * Further training on 132 affidavit practice coming soon.

- Claimed elements could not have been combined by known methods.
    * E.g. due to technological difficulties. This is different from “would not” have been combined because of a lack of motivation.
    * Arguments concerning “teaching away” and “destroying the teachings” can apply, but be careful.
        See MPEP 2145 Section X. D. “References Teach Away from the Invention or Render Prior Art Unsatisfactory for Intended Purpose”, as well as MPEP 2141.02 and 2143.01.
    * Arguments concerning “hindsight” can still apply, but be careful.
See MPEP 2145 Section X. A. “Impermissible Hindsight”. A hindsight argument would have to overcome the findings of fact and conclusions expressed in the rationales.
    * Arguments concerning “expectation of success” can still apply, but be careful.
See MPEP 2143.02 “Reasonable Expectation of Success is Required”. Likely to be rare in electrical cases.

- Claimed elements do not merely perform the function that each element performs separately.
    * E.g. a synergistic effect, see MPEP 716.02(a), section I.

- This is not an exhaustive list.

- If you see an allowable feature in the spec or a dependent claim, offer it to applicant.

Links: KSR (Patent Prospector coverage); KSR Federal Guidelines; In re Trans Holding (Patent Prospector coverage); BPAI decisions, specifically noted are Catan, Kubin, & Smith (Patent Prospector coverage).

The materials are from the Business Methods group.

Patent Prospector coverage of KSR and its aftermath: Obviousness Redux (the KSR decision); Common Sense Turns Wily; Ordinary Skill in the Art; The Dynamics of Obviousness; Incremental Invention; KSR Playing; Chemical Obviousness; Obviousness Vampire; Earshot; Chilling Invention at the PTO; Dealing with KSR; The KSR Trend; Obvious Viper; Death Certificate Reissue; The Obvious Guide; Obvious Discrepancy; Domino; Invention Undermined; Not So Obvious.

Posted by Patent Hawk at February 3, 2008 12:59 PM | Prosecution


Thanks for information on obviousness and related issues. I hope the trend will contiune.

Posted by: AMIT KUMAR TIWARI at February 3, 2008 8:05 PM

"If you see an allowable feature in the spec or a dependent claim, offer it to applicant."

All too often, rarely provided by the Examiners I've dealt with, even when asked.

Posted by: EG at February 4, 2008 7:09 AM

The rationales set forth above are the same as were printed in the Fed Reg, and have already been incorporated into MPEP 2100.

Posted by: bierbelly at February 4, 2008 8:01 AM