When it’s not that obvious: USPTO Obviousness Rejections

If you have filed a patent application in the US, then chances are your invention has initially been rejected on the basis that it is “obvious”.  It’s like a rite of passage for an invention.  The allegation of obviousness goes to the very essence of invention.

It can be confronting and a little offensive, particularly when one sits down to analyse the prior art1 relied upon by the Examiner.  All but the primary prior art reference can be seemingly unrelated to the field of invention as the Examiner seeks to show each part of your invention has previously been described…somewhere.  But never fear, it’s kind of a game.  And if one understands the rules and can execute the skills of the sport of examination, the best available scope of claim can be achieved.

A US Examiner of the USPTO2 has a Patent Examiners Bible.  You can Google® it: MPEP 2100, but reading it might be like being 12th man for a cricket match that goes for 15 days.  The MPEP3 summarises for the Examiner the relevant legal principles and case law, such as the Graham4 analysis that provides guidance on how to assess the relevance of the prior art.  Importantly, the MPEP emphasises that the Examiner must provide explicit reasoning to support an obviousness rejection.  More recent case law has supplanted the Patent Attorney’s strategy of arguing against obviousness rejections based on the old “TSM”5 test.  The TSM test related to the extent to which the prior art taught, suggested or motivated towards the invention, but a major case, KSR v Teleflex6, made TSM arguments much less potent, so we Patent Attorneys have had to become more lateral in our approach to countering obviousness rejections.

When an obviousness rejection is raised in an Office Action (a US Examiner’s Report), the Examiner will typically set out clearly how each part of your invention is disclosed in the prior art.  On the face of it, it often seems to be a thorough list, but sometimes it is not.  A key element of your invention may not be mentioned and we can focus on that.  The Examiner often intentionally and/or helpfully leaves hints as to what he or she considers is patentable within the specification or the claims.  Picking up on these hints and following the Examiner’s line of reasoning can be useful…and dangerous too if it leads to unreasonably narrow or otherwise commercially useless claims.

Most commonly, the Examiner will state clearly if he or she considers that there is any patentable subject matter in the claims.  For example, one or more subsidiary (dependent) claims might contain patentable subject matter if re-written as independent claims.  Depending on the commercial usefulness of such claims, it can be expedient to accept the Examiner’s recommendation.  The Applicant can amend the claims as suggested and secure patent protection for the allowable claims.  If the invention is sufficiently valuable, the rejected (normally broader) subject matter can be pursued in a continuation application.

But the “game” sometimes involves more complex scenarios.  The prior art reference may concern a technology, or a problem is addressed in the prior art, that is quite different to that of the invention.  It may therefore be appropriate to argue that the prior art reference is “non-analogous” and addresses a different type of problem or relates to a non-comparable field of technology.  If appropriate, one might also point out that the prior art lacks utility (doesn’t work as described) or makes statements that should have discouraged the making of the invention.  However, the most persuasive arguments put to Examiners are those supported by amendments, facts and/or the opinions of expert witnesses.

Particularly with regard to inventions involving physical structures, adding a structural limitation to a claim can be persuasive, even if it is inherent in the overall inventive structure and gives little away in real terms.  Factual support may be in the form of evidence of the efficacy of the invention or other secondary considerations suggesting inventiveness, such as evidence of commercial success.

But one of the most effective weapons in a patent applicant’s armour is an affidavit or declaration by an expert.  The expert does not need to be American, just suitably qualified, experienced and preferably independent.  An expert declaration may state that certain prior art doesn’t work or the making of the invention could not have been reasonably predicted.  This can be like check mate in a battle of opinions as a US Examiner must defer to a well made out opinion of an established expert.

So receiving a US Office Action with an obviousness rejection need not fill the patent applicant with trepidation.  Once armed with the shield of the MPEP, the vest of TSM, the helmet of structural limitations and the sword of expert witness declarations, you are best equipped to defeat an obviousness rejection and obtain a US patent with broad and commercially relevant claims.

If you would like any advice regarding this subject matter, please contact Protect@chrysiliouip.com.au

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1.  Prior art includes the one or more documents cited by the Examiner that pre-publish the invention
2.  United States Patent and Trademark Office
3.  Manual of Patent Examining Procedure – see MPEP 2141 specifically in relation to obviousness
4.  Graham v John Deere Co. 383 U.S. 1, 148 USPQ 459 (1966)
5.  Teaching-Suggestion-Motivation test
6.  KSR v Teleflex, 550 U.S.  398 (2007)