MPEP Section 2141 on Obviousness

Any examples of how this section is being applied?:

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 reference (or references when combined) need not teach or suggest all the claim limitations, however, Office personnel must explain why the difference(s) between the prior art and the claimed invention would have been obvious to one of ordinary skill in the art. The “mere existence of differences between the prior art and an invention does not establish the invention’s nonobviousness.” Dann v. Johnston, 425 U.S. 219 (1976).

The gap between the prior art and the claimed invention may not be “so great as to render the [claim] nonobvious to one reasonably skilled in the art.” Id. In determining obviousness, neither the particular motivation to make the claimed invention nor the problem the inventor is solving controls. 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 disclosures of the cited prior art may provide a basis for concluding that it would have been obvious to one of ordinary skill in the art to bridge the gap.

62 thoughts on “MPEP Section 2141 on Obviousness

  1. 62

    “My position is that each one of the claimed elements or steps must be met by the PA cited in a 103 rejection, but all (or any?) of limitations need not be found in the PA.”

    I’ve never seen a compelling case made to support the argument that an “element” is distinct from a “limitation.”

    Good luck.

  2. 61

    There is a lot of red meat in these comments. Blogging at its best.

    Up above there somewhere New Attorney observed that the PTO removed a line from 2143 that said the PA had to disclose each claimed element. And 2141 now says that all claimed limitations need not be present in the cited PA. MPEP does not say, nor did KSR, that all of the elements need not be met. I am responding to an OA right now where the art cited in a 103 rejection does not disclose each of the elements,and like New Atty, I’m struggling a bit to reconstruct the all elements rule. I call this the All Elements Rule II.

    My position is that each one of the claimed elements or steps must be met by the PA cited in a 103 rejection, but all (or any?) of limitations need not be found in the PA. Limitations are subject to being inserted into the PA by the examiner. But if the examiner does that, he must provide an explanation. The examiner cannot supply elements/steps that are missing from the PA.

    A single reference that discloses all of the claim elements but not all of the limitations will not work for a 102 rejection, but it might work for a 103 rejection if the missing limitation is supplied by the examiner as being obvious.

    I do not see in the post-KSR MPEP or in KSR itself a statement that all elements either must be present or need not be present in the PA. Pre-MPEP said clearly all elements must be present. But 103 itself says the subject matter as a whole must be met by the PA and I take that to mean each and every element and step. Interestingly, KSR does not have a single word about claim limitations. I think the justices, like many examiners and practitioners, don’t appreciate that there may be legal distinctions between elements/steps and limitations for the purposes of 103 analysis.

    I think this is sound ground, but I’d appreciate some other opinions.

    Bab

  3. 60

    It is so sad. Companies invest large shares of their resources in R&D, enter into business arrangements, sometimes bet their future on inventions only to see someone in a far away office read their patent application and say (to mention a recent experience) that it would have been obvious for an inventor developing a medical device to solve problem A to take a device with some similarity developed in a different country to solve problem B and combine it with a device developed in a third country to solve problem C, because, voila, the two prior device put together have all the features of the claimed invention – even when combining would include adding up features with opposing functions.
    Why the combination? Typically, you get explanations such as “improved efficiencies,” “lower costs,” etc. Not much, is it? Why would the inventor have combined those two prior art references (the “reason” to combine) and no others to achieve his stated goal? Who knows, but who cares? Hindsight?
    Examiners out there, this is not a game. It is very serious business. I expect some of my foreign clients pulling put of the US market because inventions they can get patented in Europe cannot get patented here based on such off-the-air “obviousness” arguments. Can you say damage to all of us from such games being played? Even to us personally, considering those invention related to surgical devices?

  4. 59

    It is so sad. Companies invest large shares of their resources in R&D, enter into business arrangements, sometimes bet their future on inventions only to see someone in a far away office read their patent application and say (to mention a recent experience) that it would have been obvious for an inventor developing a medical device to solve problem A to take a device with some similarity developed in a different country to solve problem B and combine it with a device developed in a third country to solve problem C, because, voila, the two prior device put together have all the features of the claimed invention – even when combining would include adding up features with opposing functions.
    Why the combination? Typically, you get explanations such as “improved efficiencies,” “lower costs,” etc. Not much, is it? Why would the inventor have combined those two prior art references (the “reason” to combine) and no others to achieve his stated goal? Who knows, but who cares? Hindsight?
    Examiners out there, this is not a game. It is very serious business. I expect some of my foreign clients pulling put of the US market because inventions they can get patented in Europe cannot get patented here based on such off-the-air “obviousness” arguments. Can you say damage to all of us from such games being played? Even to us personally, considering those invention related to surgical devices?

  5. 58

    That wasn’t a Freudian slip was it, 6k, in your first line? But looking in from Europe I can understand your yearning to get back to the patent system as it ought to be. It is not just in Europe that one finds a succinct statement more convincing that 50 pages of text containing no more grist for the mill of the intended engineering reader. Ultimately, patents are written by engineers for engineers and the lawyers and judges are there to serve the industry users of the patents system as intermediaries with the courts. That’s well understood in Europe and Japan. I suspect that engineers in USA find the patents system incomprehensible. If the judges get a grip, they can do something about that.

  6. 57

    That’s right, the patent system fuctioning at it’s finest ;)

    Their supporting spec says all it needs to say as to their “inventive concept”. I’m not sure why you’re worried about him getting estoppel though, he’ll end up claiming what he made with all material steps included, not something he didn’t make (which sans these important steps I’ll reject on the merits anyway). You’re very correct about the design around, as with most of the “inventions” my group sees, literally anyone in the art could design around after seeing just the spec, the question is, would it be a good enough design around for production. You see, in my art, people are paid to do the work of an ordinary designer, doing ordinary designer things and are all taught in school how to be ordinary designers. We routinely do things that under the strictest old school interpretation of the laws are patentable (and thus my AU exists), though anyone in the art would see quickly, if not immediately, the same solution when faced with the problem the “inventor” was faced with (according to their overclaim anyway), or else come up with another solution at near the same “quality” level (and thus my AU may shrink if KSR gets built upon for obviousness or becomes more mainstream in rejections). Otherwise they’d be fired for being useless at their job.

    Indeed, in this case there is no real reason to make his invention anyway, it’s yet another on the heap of useless crap that comes out of here that’ll just add to some corporate portfolio somewhere. So far I’m at a 1:1 ratio for useless vs. semibeneficial allowances. I like the useless ones though to be honest, easier to allow usually because they don’t bother about overclaiming as much, they really do just want to protect what they made, and only what they made, not the entire genus of what they made (which they probably didn’t enable anyway). It’s almost as if it’s … it’s … wait, no that can’t be it … could it be ?!?!?!? The way the patent system is supposed to be!?!?!

  7. 56

    so he will end up with one narrow independent claim, a few dependents, prosecution history estoppel and a short supporting spec — should be easy for competitors to design around

  8. 55

    darnit my post didn’t get posted.

    261?- Yeah, see this examiner is what I’m talking about. Some spe’s like it, and using those instead of other 103’s is for lulz timewise. Rich, hearty, deep, from the depths of your soul, lulz. It’s like, take a half a day off, your hounds will chase the wild geese today so you can concentrate on killing a fox (the invention they’re shooting for in the ind.).

    Pub- I only have one that has filed notice of an appeal and it’s an easy win. His argument will be: “Applicant believes x word to mean y” My argument will be: “Examiner believes x word to mean y or z and in this instance sees that z reasonably applies, and further, failing that, or assuming applicant’s disclaimer of z meaning to be sufficient to overcome the primary reference, reference a (reference I haven’t used yet but is applicable should I need it) a clearly shows the feature in question clearly within the meaning y applicant asserts x to mean and reference a is combinable with the primary reference under motivation p”

    What can I say? He shoulda called me. I’ve got a whole ton of art to use over here, and he’s calling me out on the tip of the iceberg?

    Also, a nice update, I got an applicant today with an actual invention. His claims are a little broad, and he failed to include all necessary steps, so there’s a weak 103 to get around and a 112, but fixing the 112 gets the 103 as well. On the whole, you can see the man invented something and if he didn’t have a bunch of drawing problems and the 112 then it woulda been a first action allow.

    His spec: 5 pages long (avg is 20 for me). Specifically states that the prior art is notable only in that similar has been done before (which it has).
    His claims: 3/24, 1/7 after restriction and the ind. reasonably limited off the bat.
    His invention’s complexity: The same as all the rest of the 40 page long 80 claim filers that take all day to even read.

    Read and learn how to get good first (or in this case a second that should have been a first) actions.

  9. 54

    darnit my post didn’t get posted.

    261?- Yeah, see this examiner is what I’m talking about. Some spe’s like it, and using those instead of other 103’s is for lulz timewise. Rich, hearty, deep, from the depths of your soul, lulz. It’s like, take a half a day off, your hounds will chase the wild geese today so you can concentrate on killing a fox (the invention they’re shooting for in the ind.).

    Pub- I only have one that has filed notice of an appeal and it’s an easy win. His argument will be: “Applicant believes x word to mean y” My argument will be: “Examiner believes x word to mean y or z and in this instance sees that z reasonably applies, and further, failing that, or assuming applicant’s disclaimer of z meaning to be sufficient to overcome the primary reference, reference a (reference I haven’t used yet but is applicable should I need it) a clearly shows the feature in question clearly within the meaning y applicant asserts x to mean and reference a is combinable with the primary reference under motivation p”

    What can I say? He shoulda called me. I’ve got a whole ton of art to use over here, and he’s calling me out on the tip of the iceberg?

    Also, a nice update, I got an applicant today with an actual invention. His claims are a little broad, and he failed to include all necessary steps, so there’s a weak 103 to get around and a 112, but fixing the 112 gets the 103 as well. On the whole, you can see the man invented something and if he didn’t have a bunch of drawing problems and the 112 then it woulda been a first action allow.

    His spec: 5 pages long (avg is 20 for me). Specifically states that the prior art is notable only in that similar has been done before (which it has).
    His claims: 3/24, 1/7 after restriction and the ind. reasonably limited off the bat.
    His invention’s complexity: The same as all the rest of the 40 page long 80 claim filers that take all day to even read.

    Read and learn how to get good first (or in this case a second that should have been a first) actions.

  10. 52

    My SPE really likes KSR so 90% of my rejections now use something from KSR. Mostly A-D (especially C). I’ve used E and F one time. I’ve quit using G.

  11. 51

    “On a somewhat related note, how many of you are encountering rejections including a 103 rejection with a rationale under the new KSR guidelines, i.e.:”

    I work in the chemical arts and am routinely seeing some version of either A or, more especially, B.

  12. 49

    Hah, bs yourself, I can call two people right now who’ll say differently, though, lets be honest, I’m not talking about the bad primaries turning out questionable allowances at a huge rate. I bet KSR didn’t affect you much. You’re old, stuck in your ways, and doing crappy work. Tell us about the Juniors that send 4 avg allowances a year now ok? I didn’t just throw out the example for giggles. If I’m lying then call me out with some of yours or your close friends apps mr. anon. And do tell, what was your increase in production due to if not that? Maybe you have other ideas? The SPE’s are all too aware of the KSR decision, even here in my AU and the others nearby, and we’re a rather conservative group I suppose you’d say.

    You’re right about not catering to HP etc. though. Just because they climbed up the ladder and might be standing on top doesn’t matter, if someone comes up with something patentable over their art then we’ll issue it.

    Poor VA, still butt sore. Do you need some Prep H? With all that money you’re making I would figure you could afford it. Been going by anon_examiner for long or did you just make it up today?

  13. 48

    Responding to Posting by: anon | Feb 14, 2008 at 04:20 PM.

    A-E. All the time with formulation/drug delivery inventions. Mostly out of 1600.

  14. 47

    I have not gotten any yet; but I use it in arguments back, saying that is what they are supposed to show and they haven’t shown it.

  15. 46

    On a somewhat related note, how many of you are encountering rejections including a 103 rejection with a rationale under the new KSR guidelines, i.e.:

    A. Combining Prior Art Elements According to Known Methods To Yield Predictable Results
    B. Simple Substitution of One Known Element for Another To Obtain Predictable Results
    C. Use of Known Technique To Improve Similar Devices (Methods, or Products) in the Same Way
    D. Applying a Known Technique to a Known Device (Method, or Product) Ready for Improvement To Yield Predictable Results
    E. ‘‘Obvious To Try’’—Choosing From a Finite Number of Identified, Predictable Solutions, With a Reasonable Expectation of Success
    F. 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
    G. 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

    (obviously “G” is the old TSM test)

  16. 45

    “So, my question for you is how do you now support an argument that if claim elements and/or features are missing, then the 103 rejection is no good? Specifically, what case law and/or sections of the new MPEP are you relying on?”

    If the examiner is going to rely on this, the examiner is obligated to provide reasoning and fact finding concering the gaps. If the rejection instead mis-identifies some portion of the reference as teaching that element or otherwise fails to acknowledge any gap, then you can overcome the rejection by pointing out the error. In such a situation, your response should look pretty much the same as it did pre-KSR.

    Hopefully if the examiner now wants to assert that the missing element doesn’t prevent the claim from becoming obvious, the examiner acknowledges that the rejection is a new one.

    On the other hand, if the examainer acknowledges that X is missing, but provides the rationale/facts supporting a conclusion that the claimed invention is still obvious without finding X, the examiner might be correct. Obviously simply pointing out the missing X isn’t going to be an appropriate response.

  17. 43

    Just FYI, examiner#6k is full of $hit. I’m an examiner in the printer art and KSR has not affected us that much. Our production goals were not changed as a result of the KSR decision. And, we aren’t limited to allowing only 4 applications per year with RCE after RCE. I know there are examiners in my art who allow over 100 patents per year.

    To real anonymous, who posted about the PTO catering to HP…I’ve never been given any guidance about how many patents to allow, and I still get plenty of HP applications to review. So, they’re obviously still interested in obtaining some intellectual property rights.

  18. 42

    “So, my question for you is how do you now support an argument that if claim elements and/or features are missing, then the 103 rejection is no good? Specifically, what case law and/or sections of the new MPEP are you relying on?”

    New Attorney,

    Take a look at In re Lowry, 32 USPQ2d 1031 (Fed. Cir. 1994); In re Fine, 5 USPQ2d 1596 (Fed. Cir. 1988); In re Jones, 21 USPQ2d 1941 (Fed. Cir. 1992); In re Vaeck, 20 USPQ2d 1438 (Fed. Cir. 1991) and MPEP § 707.07(f). Even after SCOTUS in KSR International seemed to muddy the water on 103 issues, it’s clear the Federal Circuit is now doing “damage control” (see the recent case of Cordis Corp v. Medtronic Ave for this) so that the impact of KSR International may be far less than many postulated at the outset. It may take the Federal Circuit a few cases to straighten out the PTO on this (after those cases make it beyond the Board of Appeals and Interferences), but the Federal Circuit has the benefit that SCOTUS can’t and won’t take every case involving 103 issues. You just have to have an applicant/client who is willing to be patient, persistent and pay the freight to potentially take their case all the way to Federal Circuit.

  19. 41

    VA- I take notice of the features themselves (maybe once or twice the functional relationship), and once it has been established that it exists and is well known (not just sorta known) then I state the motivation one has and that’s that. Legal conclusion of obviousness for you.

    Of course, this might be why I don’t ever get responses demanding references and instead actually admitting x feature is well known, but then traversing the obviousness conclusion. This usually happens without addressing why my motivation is bad, but rather, why their motivation is different. Sorry, uh uh, no can do there skipper. No. 1 of course your motivation is different, I can’t use the same (more well known than the one I used) motivation that you are using since I’m not pulling it directly out of a reference. Of course, if you make me pull a reference then not only will the feature be shown, but your motivation for combining will be right there with it because it’s the major motivation, I had to pull out the secondary motivations to have mine for off. notice, that’s not to say that I didn’t already know the more well known motivation also. And No. 2, yes I knew your motivation as well because it is literally the bedrock of half of the “innovations” my art for the last 15 years. Not only does everyone know about it, everyone uses it every day, literally. Would it be obvious to apply it to every last situation in the art? Barring some extreme circumstance one of ordinary skill, that has not been fired from his job, would think of that first, rather than any other way.

    All they usually present is at best a secondary consideration. Unless they moved it up I usually couldn’t give a crap less. Either properly traverse it, elevate it to being the real issue, or let it go. Any examiner caving in to any “demand” without a proper traversal is either a. new or b. likes or respects you enough to just do it.

    Mark- I’m pretty sure that I gave a good factual grounding for the proposed rejections in your example. Lets be clear, it’s not because they were undisclosed, or would normally be performed that they were rejected, that was merely the things that made me know that I needed to reject them right off the bat, I then have to reach a legal conclusion. It is because one of ordinary skill knows of the means available to him to do such investigations and also is want to use them. Both the knowledge and the want are key. So far, all? of my allowances have not passed the test of my asking myself “well would it be obvious to do that?” but they do pass the test of a legal conclusion. It’s a fine line I have to say, and applicants are always trying to toe that line rather than be clearly in the legal nonobvious catagory by pulling in more limitations.

  20. 40

    It is also worth noting that the prior art to be combined need not be “documentary” prior art. It is possible to invalidate by obviousness by proffering documentary + non-documentary prior art. In addition, “single reference” obviousness from non-documentary sources is also allowable when the obviousness stems from the non-documentary prior art + common sense. For example, in Dippin Dots v. Mosey, the Federal Circuit affirmed invalidity because the prior art was the prior public sales combined with common sense.
    Dippin’ Dots, Inc. v. Mosey 476 F.3d 1337, 1344 (Fed. Cir. 2007)(“To find obviousness in light of the Festival Market sales requires two conclusions: first, those sales must have been in the prior art; second, the process practiced at Festival Market combined with any other relevant prior art must render the claims of the ′156 patent obvious. Substantial evidence existed for the jury to find the facts necessary to support both conclusions.”).

  21. 39

    Professor Witherspoon, you are so right. I am sick and tired of getting rejections saying an element is obvious therefore the claim is obvious. The right wing-nut idiots on the SC just perpetuate this nonsense. They don’t have a clue what they’re talking about.

    The issue is whether the invention — the combination, if you will — is obvious, not any single element. On the other hand, if any single element of the combination is novel, then the combination is non-obvious. So a 102 analysis must be applied to the individual elements and the examiner should be providing 102-level references for each combined element — i.e. the reference must disclose the element as claimed.

    BTW, has anyone read MPEP 2141 post-KSR? If so, maybe you could help me interpret the following from Section II:

    “Obviousness is a question of law based on underlying factual inquiries. The factual inquiries enunciated by the Court are as follows:

    (A) Ascertaining the differences between the claimed invention and the prior art; and

    (B) Ascertaining the differences between the claimed invention and the prior art; and

    (C) Resolving the level of ordinary skill in the pertinent art.”

    Huh??? These ‘crats can’t even get their own procedures manual to make sense, much less office actions on complex inventions.

    BTW again, I demand an affidavit from the examiner every time I see “official notice” in an OA. First, because I have never seen official notice properly taken, and second, because I would be sticking my neck into a malpractice noose if I didn’t. Know how many affidavits I’ve ever gotten back? Zip.

  22. 37

    SF, it was Chief Judge Markey, not Judge Rich. But speaking of Judge Rich, he must be spinning in his grave with all this talk about the obviousness of the differences. The statute says no such thing. It is the invention as a whole that must be nonobviousness. The Supreme Court should know better, but certainly the PTO should know better and it should stop perpetuating this nonsense. Focusing on the obviousness of the differences, or gap, is mischievous and contrary to law. Ths statute controls!

  23. 36

    “If you’re an associate does the partner read every word of your correspondence before it is sent?”

    If I’m signing the correspondence, yes.

    Even if I’m not signing the correspondence, yes.

  24. 35

    6K wrote: “To adequately traverse such a finding, an applicant must specifically point out the supposed errors in the examiner’s action, which would include stating why the noticed fact is not considered to be common knowledge (this part better not be bs, or a 2ndary consideration, I will send it back to you sans ref if it is just because you’re being annoying and didn’t bother to adequately traverse) or well-known in the art.”

    If I traverse, it’s usually because the examiner has not defined what the examiner considers “the art” to be or, when he or she does, the examiner defines the art too broadly. As Judge Giles Rich (I believe) noted, only God works from nothing, man must use existing elements. If the examiner can cast the art sufficiently broad, almost every component is well known. (e.g., in “the tangible apparatus art” — to be truthful I haven’t seen this one yet, but I fear it’s only a matter of time; I would expect there are analogous rejections already out there for “the software art”)

    I also traverse where the examiner has taken official notice of an element but ignores the recited functional relationship between that element and the other claim elements. Often, that functional relationship is a point of novelty and I want to clarify that, even if the element is well known, the relationship isn’t.

    I think you have the right approach if you try to find the reference where the applicant has a legitimate question and is not just making a knee-jerk request for a reference.

  25. 34

    “My experience has been that if an examiner feels in his or her gut that a claim is not allowable, said examiner will reject said claim based on unsupported assertions of fact if no reference is readily available to support his/her arguments. This practice is normally supported by the examiner’s supervisor.”

    What exactly do you think the spe is supposed to do, argue with the examiner? That is the attorney’s job. Once you’ve been inside for awhile your spe will develop a certain amount of trust in your work. If there was no trust the spe would be micromanaging every rejection of every claim, that is not their job. I’ve only been challenged once with “official notice” and it was on something so obvious and well known it literally took me less than 5 min to find a good reference, mango bango final rejection. When I was at the academy my trainer would not let anyone send out a 103 with “official notice” we were always required to find a 2nd reference. So your assertion that the practice is normally supported completely depends on the spe and examiner.

    If you’re an associate does the partner read every word of your correspondence before it is sent? I have gotten many responses that contain mere allegations “non-analagous” with no reason why, “does not teach” with no reason why. So should I assume that the pratice of sending out poor/incomplete responses is normally supported by partners of major law firms?

  26. 33

    EG – you mention that “the case law and even the MPEP is pretty clear that if claim elements/features are missing, the 103 rejection is no good.”

    However, after KSR, it doesn’t seem to me that is so clear anymore. The original post to this thread was discussing section 2141 of the new revision of the MPEP, which states that “the prior art reference . . . need not teach or suggest all the claim limitations” etc., but the examiner must provide an explanation for any differences. Additionally, my favorite line from section 2143 of previous versions of the MPEP (requiring each and every element of the claim be found in the prior art) has been taken out.

    So, my question for you is how do you now support an argument that if claim elements and/or features are missing, then the 103 rejection is no good? Specifically, what case law and/or sections of the new MPEP are you relying on?

  27. 32

    anonymous,

    I see that rejection all the time. “Applicant has not disclosed/stated/argued that [insert claim feature here] is critical, therefore it’s obvious.”

    Sigh.

    That’s the examiner telling you that he/she can’t even think of even one silly reason for modifying/combining the prior art to arrive at your claim. Or is too lazy to put in the old “better, faster, cheaper” reasoning.

    And yes, I’m aware of all of the MPEP sections regarding “criticality.” However, they require evidence of “criticality” only when the examiner has presented a prima facie case. “It’s not critical, therefore it’s obvious” does not a prima facie case make.

    I’ve also seen that nonsense about applicant’s “admission” that certain claimed features are “obvious variations” of one another.

    I usually cite MPEP 2144.06 (equivalency must be recognized by prior art, and cannot be based on applicant’s disclosure) in that instance. If I’m feeling particularly onery, I’ll point out that concluding something is obvious based on applicant’s disclosure is hindsight. Don’t believe the hype. Hindsight is still not permitted.

  28. 31

    This quote shows a glaring inconsistency with the statute: “The gap between the prior art and the claimed invention may not be ‘so great as to render the [claim] nonobvious to one reasonably skilled in the art.'”
    The statute refers to those of ordinary skill, not reasonable skill.

    What, you say there ain’t no difference? The PTO thinks there is enough difference between the standards of “material to patentability” and “material to examination” to make a big deal out of it. See link to uspto.gov

  29. 30

    “Has anyone seen these types of rejections to fill in the holes of a 1 reference 103? Any suggestions on traversal without creating too much estoppel.”

    Anonymous,

    I have, and they’re actually fairly easy to respond to (and without creating PHE). If the examiner is making a 103 rejection (as opposed to a 102 rejection) based on 1 reference only, that normally means that 1 reference doesn’t show all the features/elements of the claim (you’ll need to point out which one or ones are missing), in which case the examiner should get “dinged” for failure to state a proper case of obviousness under 103. The case law (and even the MPEP) is pretty clear that if claim elements/features are missing, the 103 rejection is no good.

  30. 29

    Has anyone seen these types of rejections to fill in the holes of a 1 reference 103? Any suggestions on traversal without creating too much estoppel.

    “referring to claims 2 and 3, applicant’s numerous means to do X is construed to be an admission that the criticality does not reside in the manner X is done and hence are obvious variations of one another.”

    “applicant’s numerous locations for Y is construed to be an admission that the criticality does not reside in where the location of Y is installed and hence obvious variations of one another and also implies that neither location yields any unexpected outcome as a result of disposing Y in either location.”

  31. 28

    It’s abundantly clear from 6k’s posts that he doesn’t understand that Official Notice can only be taken of facts, not legal conclusions, e.g. obviousness. But as he hasn’t been taught anything, it’s understandable.

    EG is correct, as are many others. Many examiners will not come out and say, “I’m taking Official Notice,” but will say, “It’s well known…” Whatever. It’s the same thing.

    Demand that the examiner produce evidence.

  32. 27

    In my post above, the third sentence of the second paragraph should read “without citing a reference or any other verifiable evidence.”

  33. 26

    Random Examiner,

    It’s perfectly fine to see examiners cite case law (when it’s appropriate), and yes, I’ve seen In re Boesch cited at me ad nausem (and once In re Aller which is a 1955 case that makes no reference to 35 USC 103). What I’m saying is “make sure the facts of the case cited fit or are analogous to the claimed invention you’re applying it to.” But simply citing a case for some broad and well accepted proposition and not bothering to create a factual record in the file wrapper that supports that citation doesn’t help the examiner or the applicant advance prosecution. For example, simply citing cases like In re Boesch for the obviousness of optimizing amounts is meaningless without also establishing that the art teaches or suggests that particular optimization (and which the holding of Boesch requires as is also stated in MPEP 2144.05). That’s all I’m saying.

    As far as an examiner taking “official notice” I’ve only seen one recent instance of that, and it’s not going to work, at least with me. Even SCOTUS’ opinion in KSR International says you have to have evidence (even if it is just “common sense”). If the examiner simply takes “official notice” of something with citing a reference for it or other verifiable evidence, he/she will be meet with from me a request to provide an affidavit/declaration under 37 CFR 1.104(d)(2) because that “official notice” is strictly personal knowledge of the examiner if it isn’t supported by such verifiable evidence. Unless the fact is a notorious as the sun rising in the east and setting in the west, supportable “official notice” just doesn’t exist (examiners in Taiwan and possibly China can get away with this sort of nonsense, but it won’t fly here).

  34. 25

    My experience has been that if an examiner feels in his or her gut that a claim is not allowable, said examiner will reject said claim based on unsupported assertions of fact if no reference is readily available to support his/her arguments. This practice is normally supported by the examiner’s supervisor.

    The question I have is (which I’ve stated in earlier posts) is, “What is it that trips the examiner’s immune system?” If the facts are not readily available, what is it about the case that creates the firm impression in the examiner’s mind that the case is not allowable?

    I think most of us would agree that a particularly short claim will or a particularly simple invention will be tough to get through irrespective of what can be found in the prior art.

    I might add to that if an examiner doesn’t understand an invention or the claim, that that can lead to a rejection based on unsupported assertions as well.

    Examiner #6 has indicated in an earlier post that he/she will reject a claim if the unsupported facts are those what normally would have been developed in a particular experimental investigation, but would not normally be included in a technical publication due to the relative insignificance of the facts or, conversely, the desire to on the part of the investigator to maintain some of the presumably unpatentable details as trade secrets.

    Any others?

  35. 24

    “I know of one huge glaring example of this new stuff’s use though, printers. I know one of the guys over there, and basically they get a lot of claims where they move a piece one inch to the left (or something similar to that, very small changes). They get to allow on avg. 4 patents a year in that group and do nothing but RCE after RCE.”

    Well, of course the PTO isn’t issuing printer patents. The “new” HP is a member of the Coalition for Patent Fairness. They basically do *no* R&D in printers anymore (they’re just marketing Canon products now… LaserJets have been made by Canon for ages), and accordingly the new HP hates patents – since patents can only hurt their marketing operations now.

    PTO management thinks that catering to the whims of a non-innovating American company (like the new HP) fosters American innovation. Go figure. But if PTO management gets its way, every technological field in America will soon be as hot as HP is making the printer field. And we won’t need a Patent Office.

  36. 23

    Unfortunately, I think Ditto is assigned to several cases I’m working now.

    (I really think Ditto is being facetious to make a point, but that sure looks familiar)

  37. 21

    Examiner#6k wrote:

    “They **get to allow on avg. 4 patents a year** in that group and do nothing but RCE after RCE.” (emphasis added).

    Does this mean what I think it does — Central Planning has decided the amount of protectable innovation allowed in the US in a given tech. area?

  38. 20

    Ah, Ditto. You must be so proud. Truly a credit to your profession (not).

    You know, it may be a game to you, but it’s not to the Applicants who are being screwed over by your so-called “advice.”

  39. 19

    The Examiner doesn’t need to be right to win. The Examiner need only force the applicant to appeal. Most applicant’s can’t afford the cost of an appeal and even if they could, the appeal decision will be long after the filing date and long after the market for the invention has been exhausted.

    ADVICE FOR OTHER EXAMINERS – STEP 1. 1st office action, reject all the claims, use 103 since KSR eliminated the motivation to combine element, be vague (don’t provide specific cites to any text in the prior art and use obvious element assertions). STEP 2. Final office action, maintain a rejection of all the claims, add specific cites to the text in the prior art (in case it goes to appeal) and change the “obvious element assertions” to specific cites to the text in the prior art. Collect your points. STEP 3. Maintain a rejection of all the claims in the advisory action, saying something like “the applicant wasn’t persuasive.” STEP 4. In the very unlikely event that the applicant does prepare and file an appeal brief, allow a few of the crapy claims so that the BPAI does not have a chance to review your work and see the shenanigans that you’ve been engaging in. Even if it does make it to BPAI, you’ve probably moved onto some other area of the patent office so it shouldn’t affect your career one way or another.

  40. 18

    FYI guys, if you’re an examiner or attrny that hasn’t heard yet, the attorney can’t make the examiner pull the ref on next action unless the attorney presents actual evidence or a very strong argument the contrary (not weak arguments and “let me see the ref”). We had some training on this. I haven’t had anyone demand, or even ask for a ref yet. That’s not to say that they don’t say “The applicant expressly disagrees with the examiner about x being obvious” (usually followed by a small admission that the general feature is known, and an ambiguous statement that it’s not obvious to combine, because gasp, they have a secondary consideration, here’s a hint, that doesn’t traverse Off. notice, I’m not sure why this is so prevalent on Off notice but not reg. 103’s) but the attorney doesn’t have any evidence to help him, because there probably isn’t much if any in existence, and he is probabaly too lazy/time restricted to find it and he certainly can’t think off his head of an actual reason why what I said wouldn’t be the case (other than his weak 2ndary consideration).

    MPEP now says: To adequately traverse such a finding, an applicant must specifically point out the supposed errors in the examiner’s action, which would include stating why the noticed fact is not considered to be common knowledge (this part better not be bs, or a 2ndary consideration, I will send it back to you sans ref if it is just because you’re being annoying and didn’t bother to adequately traverse) or well-known in the art.

    Though so far I’ve pulled a few refs just to humor their “not agreeing”. Of course, this could be very dependent on your art. And as always, taboo on the inds. I’m not sure what I would do if they moved up a dep I noticed, probably just get the ref.

  41. 17

    “Regarding Dennis’ original post, has anyone used 37 CFR 1.104(d)(2) to request that the Examiner provide an affidavit supporting any facts within the personal knowledge of the Examiner relied on in the rejection?”

    PTO/SB/24.

  42. 16

    Regarding Dennis’ original post, has anyone used 37 CFR 1.104(d)(2) to request that the Examiner provide an affidavit supporting any facts within the personal knowledge of the Examiner relied on in the rejection?
    —————-
    I know the examiner (now retired) that caused that rule to happen. Notes he had taken at a semiconductor meeting, and saved! Yes, he was geeky, but he certainly knew his $h1t.

  43. 15

    Regarding Dennis’ original post, has anyone used 37 CFR 1.104(d)(2) to request that the Examiner provide an affidavit supporting any facts within the personal knowledge of the Examiner relied on in the rejection?

  44. 14

    EG, or any attorney: I’ve seen this “the examiner didn’t read the facts of the case” complaint batted around on this and other message boards. What do you mean by this? Should I ascertain the scope and contents of the prior art, compare the claims to the prior art, and resolve the level of ordinary skill in the art ONLY when I have a case dealing with clamps for vibrating shank plows? (If so, I’ve been doing every single case wrong – I dont examine plows!) How about unexpected results? Do I only pay attention to those when I’m examining a battery case?

    Lets say I whack you with some In re Aller or better yet In re Boesch. Boesch dealt with an alloy (and optimization of result effective variables blah blah) Okay . . . the next time I have a case dealing with alloys, I’m all set to go and I know what to do like the little robot I am. Oh, crap – what about Pfizer v. Apotex? That case deals with some big long nasty chemical . . . but the court cites to In re Boesch? I’m confused EG? Pfizer is about pharmaceutical compounds, not alloys! Harrump! Harrump! More training! More othertime! I need to learn the facts of every case so when the exact same case comes across my desk, I will know what to do!

    Give me a break.

    EG, let me ask you this – do we have judicial review in this country ONLY when John Marshall doesn’t deliver William Marbury his commission?

  45. 12

    “What I always told examiners, the safest thing is to err on the conservative side when taking notice.”

    And the reality is that, if some feature is worthy of official notice, there is some reference showing that feature (at least by itself). And post KSR, that’s really all you need since any examiner worth their salt can come up with a “reason” for combining the feature with a primary reference.

  46. 11

    There are a couple of the reasons new examiners are discouraged from using official notice early on.

    1) So that they learn the art 1st & realize what is and what is not reasonable to take notice on. If they don’t know what is real common in the art (by really learning the art) how would they really know if the feature really is something notorious and easily shown and not a critical feature of the invention?

    2) So that they do not start using it as a crutch and take notice of everything that is not in their reference. We have seen a few examiners where this was a problem. They were all trained by the same primary who would basically take notice on just about everything and he taught them to do it. It really hurt those examiners in the long run. Actually, that primary did the same thing on the program. He was made to pull references to show everything that he took notice of. Didn’t phase him a bit. He is one of those that thinks he knows more that God and that everyone else was dumber than he is. Personally, since he was taking notice of so many things that were not “basic” but were significant features in the claims, I would not have passed him. But I was not the director… Just glad that he is now out of the office!

    What I always told examiners, the safest thing is to err on the conservative side when taking notice.
    If you can stop the average person on the street (NOT the average person of average skill in the art, as least for most arts) and they would know that the feature is something very common, then go ahead and take official notice of it (and make sure that you still include your reasons why it would have been obvious).
    If that average person on the street would NOT know that your feature is obvious, then go find a reference. If you do not now, the lawyer is going to make you do it on the next action, anyhow. DO it all correctly now and be done with it.

    Thanks,

    LL

    PS, I am away from here for a few days and “examiner#6k” is sounding reasonable all of a sudden. What’s going on here? Another “Invasion of the Body Snatchers” (original version of course). :)

  47. 10

    My experience is that 2141/Official Notice is discouraged in most cases especially during the TSM days. It was described as only to be used if you know it is “out there”…of course the follow up statement was, “if it is out there or so well known then just find it quickly.” Essentially, cite it! I think they are more likely to use this in the arts that are emerging rather than the established arts. Business methods or biotech stuff would be good examples.

  48. 9

    I use something similar for claims that apply equations. Using known variables to optimize a known method is obvious if it will produce predictable results.

  49. 8

    I should add that my own test is “could the part of the invention that isn’t disclosed be shown by a reference?”. If so, then I ask for one.

  50. 7

    It’s interesting that examiners are apparently discouraged from using official notice. This would explain why so many do it but avoid calling it that. I had previously thought it was so they could avoid the inevitable invocation of the requirement to produce a reference in their next OA, but maybe not. Either way, if it appears to be official notice I name it that in my response and ask for that reference.

  51. 6

    A search for “existence of differences” in BPAI decisions shows an unsurprising trend:

    2001: 3 hits
    2002: No hits
    2003: 3 hits
    2004: 3 hits
    2005: 1 hit
    2006: No hits
    2007: 8 hits
    2008 YTD: 2 hits

  52. 5

    That’s actually quite a question I’ve been thinking about a lot lately myself. To be quite honest with you, I’ve been sticking to “old school” rejections almost 100% of the time. When the decision came out I was elated thinking my job just got sooo much easier. However, I’ve been too squimish to bring it’s full might to bear just yet. I tried the new obviousness things out in a few situations where even if I hadn’t have used it the references would be easy to find (basically just a new school Off. notice where you lack an explicit, but nontheless well known, motivation in the ref or a well known function etc. that the applicant can’t get out of so easily) I know of one huge glaring example of this new stuff’s use though, printers. I know one of the guys over there, and basically they get a lot of claims where they move a piece one inch to the left (or something similar to that, very small changes). They get to allow on avg. 4 patents a year in that group and do nothing but RCE after RCE. However, this brought an end to their easy street RCE surfing, they are the only group that I’ve heard of that had their production req’s modified when this came out because they use this on almost ever app now and are done in less than half the time. They’re not even too upset about the new production req’s even though some of them actually have to work some now (whereas before it was outrageous, he’d hardly work half his time). They’re not upset yet that is. RCE rules are inc.

    Tell you what, I’ll use it some in my next action, it’s a good candidate from the looks of the spec. I’ll ask around for some examples for you guys though and try to post before end of week.

    Mark- that stems from the proper way of delivering Off. notice not being taught in PTA, they don’t want us using it and they don’t teach it. I sent my first few notices after PTA out basically just calling out that it was obvious. All my old ones got sent back in with the applicant acknowledging I was taking off notice though, my wording wasn’t that bad I guess. You have to learn the proper way from a primary and some just say “use official notice” the first time you ask the question of “how do I use official notice?”. Though your case might be just a single reference 103 ivo SCOTUSs remarks or just a plain ol single reference 103. We do those in my art all the time because the art will talk about x feature in the beginning and then not show it in the embodiment, or will have them on two very similar embodiments that are combinable. But we usually word those like a 2 ref one. However, they will count as one ref on your way to 5 ref’s combination being unreasonable.

    EG- Some examiners do read it, and even knowing that the specific case doesn’t apply across the board we use it to get the case off our desk, keeping stuff moving is the name of our game. If you really think that dependent claim is so good move it up and lets go at it. Also, more than a few of us are still pissed about the whole Graham v Deere fiasco. Oh, so that’s applicable across the board but this thing over here isn’t… Yeah we understand why, but don’t particularly care without your wonderful argument and sometimes, well, sometimes you fought the restriction req. on your very split up case.

  53. 4

    I can tell that the examiners are probably applying at least the case law and “headnote” statements in MPEP 2141 (without citing this section of the MPEP) constantly in Office Actions. But what’s really sad is that the case law cited in MPEP 2141, in many cases, is outdated and in some cases, doesn’t even mention 35 USC 103 (that’s how out of date some of it is). What’s even worse is that I don’t see any indication that the examiner bother to read the facts of the cases cited, and if they did (which I generally do), would (or should) understand why those cases don’t apply.

  54. 3

    I’ve gotten a 103 on a single reference with no official notice taken.

    I don’t remember the case off the top of my head though.

  55. 2

    A question perfectly suited for examiner#6k.

    This section is probably applied in most 103 rejections, since it’s in the introduction to MPEP 2141. I imagine its application is most easily seen in a 103 rejection based only on one reference, when official notice of a fact is taken (see MPEP 2144.03), in the case of equivalents (see MPEP 2144.06), or when a textbook is used as a reference to prove a fact is well known.

  56. 1

    Adding z to x would have been obvious because z is well known in the art and yields predictable results. The well known and predictable factor is the “other factor” that provides a basis for concluding obviousness.

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