News

WEB PATENT NEWS–January, 2003

News about patents, licensing and seed capital sources for inventors and
innovating organizations.

by Robert M. Hunter, Registered Patent Agent

CONTENTS

I. WE SHALL OVERCOME – OBVIOUSNESS REJECTIONS, THAT IS – Learn how to
convince an Examiner that your invention is nonobvious and, therefore,
patentable.

II. USPTO ENHANCES WEBSITE TO ASSIST INDEPENDENT INVENTORS – New and
improved web pages focus on the needs of the independent inventor.

IV. LINKS – View this newsletter in HTML at the following link:
http://www.webpatent.com/news/news1_03.htm

I. WE SHALL OVERCOME – OBVIOUSNESS REJECTIONS, THAT IS

Patent prosecution is often an adversarial process, in which the Examiner
assigned to your regular patent application rejects your claims and you
attempt to overcome those rejections. It is not unusual for the Examiner to
reject claims, giving as a reason for that rejection that the claimed
invention would have been obvious to a person having ordinary skill in the
art at the time the applicant conceived the claimed subject matter. This
article explains how to overcome such obviousness rejections.

An obviousness rejection (made under 35 USC 103) is an assertion by the
Examiner that a particular invention as described by the proposed words of a
patent claim is insignificantly different from the prior art. The Examiner
is not necessarily saying that your invention is obvious per se, but rather
the way you have described it in a claim renders the subject matter obvious.
(For example, you may have described in a claim the basic idea of your
invention, rather than one way to do it, which is what you really invented.)

When an obviousness rejection is made in a first Office action on the merits
of an application, the applicant has two choices: (1) if the Examiner is
correct, the applicant can amend the wording of the claim so that it does
not describe obvious subject matter or (2) if the Examiner is incorrect
(being human, Examiners are fallible), the applicant can show that the
claimed invention is not obvious. (If such a rejection is made in a second
Office action, the applicant typically must either agree with the Examiner
or appeal his decision to a board of supervisory Examiners, which can get
expensive, due to the extra time and fees involved. So, prompt and thorough
action is required to keep your options open.)

Often, the meaning of only one term or phrase is at issue, so it is
critical to understand what the position of the Examiner really is.
The Examiner has an initial duty to supply a factual basis for each
rejection, including obviousness rejections. The courts have interpreted
this duty as placing on the Examiner the burden of presenting a prima facie
(on first view) case of obviousness. Thus, in the Office action, the
Examiner must not only assert that a claimed invention is obvious, he must
provide to the applicant "such information and references as may be useful
in judging of the propriety of continuing the prosecution of his
application" (35 USC 132). The USPTO has provided this definition of prima
facie unpatentability: "A prima facie case of unpatentability is
established when the information compels a conclusion that a claim is
unpatentable under the preponderance of evidence, burden-of-proof standard,
giving each term in the claim its broadest reasonable construction
consistent with the specification, and before any consideration is given to
evidence which may be submitted in an attempt to establish a contrary
conclusion of patentability" (1.56(b)(2)). The MPEP also describes the
information that must be provided by the Examiner as follows: "(A) the
relevant teachings of the prior art relied upon, preferably with reference
to the relevant column or page number(s) and line number(s) where
appropriate, (B) the difference or differences in the claim over the applied
reference(s), (C) the proposed modification of the applied reference(s)
necessary to arrive at the claimed subject matter, and (D) an explanation
why one of ordinary skill in the art at the time the invention was made
would have been motivated to make the proposed modification" (MPEP
706.02(j)).

One way, then, that an obviousness rejection can be attacked is to argue
that the Office action is procedurally defective because the Examiner has
not provided the information required by MPEP 706.02(j). Unless the
Examiner has failed to include in the Office action a reference (document)
that is difficult for you to obtain, relying solely on this approach can be
dangerous, in that the next Office action may be made final even if the
applicant is ultimately shown to be correct (e.g., by means of a petition to
the Commissioner or the decision of a court). If this approach is taken, it
is prudent to file the response within 30 days of the mailing date of the
Office action so that the response can also include a request that the
response period be reset by the Examiner, giving the applicant a chance to
make up for lost time. If a reference is not missing from the Office
action, it is prudent only to use this approach in conjunction with
alternative approaches described below. One must always remember that the
goal is always to obtain the broadest possible patent protection and not to
show that an Examiner is incompetent (even is he is) because time (and time
is money, especially in the patent world) is on his side.

A second way that an obviousness rejection can be overcome (notice I did not
say "attacked" because this is a nicer way) is to show that the Examiner has
not demonstrated all the elements of a prima facie case and that, therefore,
the applicant is deserving of a patent. For all of the elements to have
been met, all of the following must be true: (1) all of the references
that the Examiner is relying on must have been in the prior art (in a
chronological sense), (2) all of the references must be either in the field
of the inventor’s endeavor or in a reasonably pertinent field, (3) the
reference(s) must generally place the subject matter of the claimed
invention in prior art, (4) a reason, suggestion or motivation for combining
the teachings of the references to produce the claimed invention must be
present in the prior art, and (5) the resulting combination or modification
of the prior art would render the claimed invention obvious to a person
having ordinary skill in the art. (You can think of a prima facia case of
obviousness as a five-legged table that will collapse if just one of the
legs is pulled out from under it.)

The first element (leg) of the case to investigate is the chronological one.
For example, if the critical date of the reference is less than a year
before your provisional (or parent regular) patent application’s filing
date, it may be possible for you to show that you had conceived of your
invention and were in the process of diligently reducing it to practice (by
either filing a patent application or building and testing a working model)
before the critical date. That approach (called "swearing behind a
reference") would remove the reference from the prior art, but it can only
work if you can produce evidence of conception and diligence (which is the
reason you are maintaining your inventor’s notebook, right?) (MPEP 2138.06).
If the Examiner is relying not on a reference, but on his personal knowledge
(called "official notice"), it is important to request that the Examiner
provide citations to back up his position (37 CFR 1.104(b)(2)). Failure to
make this request effectively waives this important legal right (MPEP
2144.03).

The second element of the case requires that all the references be in one or
more arts (technical fields) that are analogous to that of the claimed
invention (MPEP 2141.01(a)). The Federal Circuit has stated that the
references must be "reasonably pertinent to the particular problem with
which the inventor is involved" and that "common sense" must be used to
decide "in which fields a person of ordinary skill would reasonably be
expected to look for a solution to the problem facing the inventor." One
place the Examiner can look to determine which arts are pertinent is the
applicant’s statement of the field of the invention in the specification.
For this reason, applicants must take care not to overstate the field of
the invention in patent applications. If the field of any of the references
are not pertinent to the problem you solved as an inventor, you can argue
that the reference should not be considered by the Examiner.

The third element of the case requires that the references "teach or suggest
all the claim limitations," that is, all the features of the claimed
invention (MPEP 2143). In the words of the Federal Circuit, "the test for
obviousness in not whether the features of one reference may be bodily
incorporated into another reference . . . . Rather, we look to see whether
combined teachings render the claimed subject matter obvious." In this
regard, it is often possible to show that a combination proposed by an
Examiner will change the principle of operation of the primary reference or
render the reference inoperable for its intended purpose (MPEP 2143.01).
Even combinations of old parts or steps can be nonobvious, in some cases,
for the same reason that "the dictionary, a mere book of words, contains the
great novels of the future which will appear only when those words are
combined to create a great work by those skilled in the art." It is also
often the case that the Examiner, in his haste (operating under a rigid
examination productivity system) has simply misunderstood one or more of the
references, or the claim. In justifying his obviousness rejection, the
Examiner could be giving a word or phrase in the claim a definition that is
other than its "plain meaning" or a meaning that is inconsistent with the
way the word or phrase is used in the specification, which is not allowed
(MPEP 2111, MPEP 2111.01). In claims to a process, a novel starting
material or end product can render an otherwise known sequence of steps
nonobvious (MPEP 2116.01). As I pointed out in my October, 2002 newsletter,
care must be taken in explaining how the claimed invention differs from the
teachings of the references, because what you put in the record can be used
against in the event you file a patent infringement suit. So, try to say as
little as possible about what your invention is "not."

The fourth element requires that the prior art as a whole contain some
implicit or explicit reason, suggestion or motivation for a person of
ordinary skill (having no knowledge of the claimed invention) to combine or
modify the references in the way proposed by the Examiner. Just because
references can be combined or modified does not render the proposed
combination obvious, unless the prior art also suggests the desirability of
the combination (MPEP 2143.01). A reasonable expectation of success of the
proposed combination or modification is also required (MPEP 2143.02).
Potential sources for a motivation to combine references include the nature
of the problem to be solved, the teachings of the prior art, and the
knowledge of persons having ordinary skill in the art. It is often possible
to argue that the Examiner is making the very human mistake of using
impermissible hindsight (recognizing the advisability to combine the
references only after the inventor has claimed the combination) as the
motivation to combine the references. Sometimes, you can show, in fact,
that the references actually "teach away" from your claimed invention,
discouraging persons of ordinary skill from taking the path you took in
addressing the problem solved by your invention.

The fifth element requires that the combination of teachings assembled by
the Examiner appear to show or suggest that the claimed subject matter would
have been obvious at the time the claimed invention was made to a person
having ordinary skill in the art (not today, but way back when you thought
of it). The claim as a whole must be considered because it is inappropriate
for the Examiner to piece together an invention using the claim limitations
as a guide. Sometimes, an inappropriate standard of obviousness is
proposed, such as asserting that the invention is "obvious to try" or
asserting that the invention must produce a synergistic result (a result
that is greater than the sums of the parts). Reliance on such standards
cannot be used to
establish obviousness. Moreover, it is not the opinion of the inventor or
the Examiner (who may be experts in the art), but that of the hypothetical
"person of ordinary skill" who is presumed to be aware of all of the
pertinent prior art and who has "the capability of understanding the
scientific and engineering principles applicable to the pertinent art" that
counts (MPEP 2141.03). Sometimes nonobviousness can be established by
showing that the inventor discovered the problem, because U.S. patent law
permits patenting of inventions that address problems that are difficult to
detect but easy to
solve.

Submitting objective evidence of nonobviousness (by means of affidavits) is
appropriate in some instances. Factors such as commercial success,
fulfilling a long-felt need, failure of others, copying of the invention by
others, unexpected results or properties, licenses indicating industry
respect or prior skepticism by those skilled in the art can support a
holding of nonobviousness, as long as there is a connection (a "nexus" or
cause and effect relationship) between the factor and the claim limitations.
For example, it must be shown that it is the structure of the invention that
makes it commercially successful and not a brilliant marketing campaign.

There are lots of arguments that do not work in trying to convince an
Examiner that your invention is nonobvious. Arguing against the references
individually (instead of their combined teachings), arguing that the
Examiner is combining too many references, arguing that your claims contain
limitations that they do not, arguing that a combination would not make
economic sense, are all approaches that do not typically work (MPEP 2145).
Neither are arguments about how an apparatus works appropriate in defending
apparatus claims (MPEP 2115).

Hopefully, this article will help you participate in the development of
arguments and evidence needed to convince an Examiner that your invention is
nonobvious, and therefore, patentable. Don’t take an obviousness rejection
personally. Understand it and overcome it. It is almost always possible to
patent some aspect of an invention if a patent application is drafted by a
patent professional and based on the results of a professional novelty
search.

II. USPTO ENHANCES WEBSITE TO ASSIST INDEPENDENT INVENTORS

The United States Patent and Trademark Office (www.USPTO.gov) recently
updated its website to better meet the special needs and interests of
independent inventors and entrepreneurs. "How to" brochures expressly
designed for independent inventors are now posted on the website. Links to
other useful USPTO Web pages, such as the Patent and Trademark Depository
Library Program and Patent Cooperation Treaty (PCT), have been added, as
have links to other government agencies, including the Small Business
Administration (SBA) and the Federal Trade Commission (FTC), each of which
have programs and information useful to independent inventors. The USPTO’s
independent inventor website also now has a useful "tip of the month."

III. LINKS

An HTML version of this newsletter containing links to reference
documents is accessible via the "Newsletters" link on the WebPatent.com
website. If you have any questions about patents or U.S. Government
funding for technology research and development, please contact us. If
you wish to be removed from this mailing list, please Reply to this
message with "remove" in the subject line.

Aloha,

Robert M. (Bob) Hunter, Ph.D.

Licensed Professional Engineer

Registered Patent Agent

65-1116 Hoku’ula Rd.

P.O. Box 2709

Kamuela, HI 96743

tel (808) 885-4194

fax (808) 885-4114

[email protected]

http://www.webpatent.com

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