Obviousness Rejection

A § 103 obviousness rejection asserts that the claimed invention, taken as a whole, would have been obvious to a person having ordinary skill in the art (POSITA) at the time the invention was made: STATUTORY BASIS: 35 U.S.C. § 103: 'A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the pertinent art'; GRAHAM v. JOHN DEERE (S.Ct. 1966) — THE FOUNDATION: four factual inquiries for obviousness: (1) the scope and content of the prior art; (2) the differences between the claimed invention and the prior art; (3) the level of ordinary skill in the pertinent art; (4) objective indicia of non-obviousness (secondary considerations); PRIMA FACIE CASE — WHAT EXAMINER MUST ESTABLISH: (a) explicit identification of prior art references; (b) identification of which claims elements are found in which reference; (c) articulated reason why POSITA would have been motivated to combine the references; (d) reasonable expectation of success in making the combination; (e) explicit statement of WHY the combination renders the claim obvious; MPEP 2143: examiner must make explicit findings — cannot reject without articulation; rejection that just lists references without explanation is insufficient; BURDEN SHIFTING: if prima facie case is established, burden shifts to applicant to rebut; if prima facie case is not established, examiner should withdraw the rejection.

KSR International Co. v. Teleflex Inc. (S.Ct. 2007) was a landmark decision that significantly liberalized the obviousness standard: PRE-KSR: Federal Circuit had applied a rigid teaching-suggestion-motivation (TSM) test — a prior art combination was obvious only if there was explicit teaching, suggestion, or motivation in the prior art to combine; this made it difficult for examiners to reject claims and difficult for defendants to challenge patents in court; KSR HOLDING: the Supreme Court rejected the Federal Circuit's rigid TSM test; a flexible analysis of obviousness is required; the TSM test is not THE test — it is one rationale among many; KSR RATIONALE BASES (from the decision): (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) obvious to try: choosing from a finite number of identified predictable solutions (when there are only a few options, trying each is obvious — In re Kubin, Fed. Cir. 2009); (d) application of known technique to a known device ready for improvement; (e) design need or market forces: known need + known methods to satisfy it = obvious; (f) TSM: there was teaching, suggestion, or motivation to combine (still valid, just not exclusive); WHAT KSR CHANGED: courts and examiners can now consider common sense and ordinary creativity of a POSITA; not every step needs to be found in a prior art reference — a POSITA brings skills, knowledge, and creativity; 'obvious to try' from a finite number of solutions supports an obviousness rejection; KSR LIMITS: there is still a requirement for articulation — examiners cannot make conclusory assertions without factual support; mere existence of components in separate references is not enough; hindsight is still prohibited (using knowledge of the invention to reconstruct it from prior art); POSITA IS NOT AN AUTOMATON: a POSITA has ordinary creativity and judgment — this is a KSR key concept.

Responding to a § 103 rejection requires analyzing the examiner's arguments and addressing each legal requirement: STEP 1 — ANALYZE THE PRIMA FACIE CASE: is the prima facie case actually established? Is the motivation to combine articulated or conclusory? Are all claim elements found in the references or is the examiner combining elements that don't exist in any reference? Is the examiner using hindsight (reading back from the claimed invention)? ARGUMENTS ONLY (PREFERRED FOR BROAD CLAIMS): argue that the prima facie case is insufficient — challenge motivation to combine, teaching away, no reasonable expectation of success; CHALLENGING MOTIVATION TO COMBINE: the references teach away from the combination (the reference explicitly discourages the modification); the combination would render one reference inoperable or unsatisfactory for its intended purpose; the only motivation to combine is knowledge of the claimed invention (hindsight); no reasonable expectation of success in making the combination; CHALLENGING 'OBVIOUS TO TRY': more than a finite number of solutions (if it's a large design space, 'obvious to try' fails); no reasonable expectation of success when trying (outcome was unpredictable); specific technical reasons why the proposed combination would fail; CLAIM AMENDMENTS: add a limitation that distinguishes from the combination; be careful — every amendment creates prosecution history estoppel and a potential DOE bar (Festo); add minimum necessary limitation; SECONDARY CONSIDERATIONS: objective evidence that rebuts the prima facie case: commercial success (with nexus to claimed invention); long-felt need (prior attempts to solve problem failed); failure of others; unexpected results; industry praise; copying by competitors (implies value); submit via § 1.132 declaration from inventor or expert; NEXUS REQUIREMENT: secondary considerations evidence must be connected to the claimed invention's merits — not just commercial success of the product generally.

Secondary considerations (also called objective indicia of non-obviousness) are powerful evidence that a claimed invention was not obvious: THE BASICS: Graham v. John Deere explicitly recognized objective indicia as a fourth Graham inquiry; properly presented secondary considerations can overcome a strong prima facie case of obviousness; the Federal Circuit has increasingly emphasized their importance (WBIP v. Kohler, Fed. Cir. 2016: 'objective indicia of nonobviousness are not merely 'secondary' considerations'; they must always be considered); THE NEXUS REQUIREMENT: evidence of secondary considerations must be CONNECTED to the claimed invention's novel features — not to the entire product, company, or commercial activity; if secondary consideration is attributable to unclaimed features (design, marketing, price), it has little weight; COMMERCIAL SUCCESS: evidence: sales data; market share; licensees paying royalties; nexus to claims: show that the commercial success is DUE TO the claimed invention, not to other factors (advertising, price, brand name); USPTO rebuttal: examiner can argue success is due to marketing, not the invention; LONG-FELT BUT UNSOLVED NEED: evidence: industry publications identifying the problem; competitor attempts that failed; time between problem identification and solution; nexus: the claimed invention solves the long-felt need; FAILURE OF OTHERS: others tried to solve the same problem and failed; strong evidence if skilled researchers with resources couldn't solve it; UNEXPECTED RESULTS: evidence: comparative testing showing claimed invention produces results that would have been unexpected to POSITA; nexus: must compare the claimed features (not the prior art features) to produce the unexpected result; results must be compared to the closest prior art; COPYING: competitors' copying of the invention implies it had commercial value that wasn't obvious; INDUSTRY PRAISE: awards, publications praising the invention; endorsements by experts; HOW TO SUBMIT: Declaration under 37 C.F.R. § 1.132 from inventor, technical expert, or marketing/business person; exhibit evidence; timely submission (before or with appeal brief).

The person having ordinary skill in the art (POSITA) is the hypothetical person from whose perspective obviousness is judged: DEFINING POSITA: factors: educational background typical for the field; types of problems encountered in the field; prior art solutions to those problems; sophistication of the technology; rate of innovation in the field; POSITA IS NOT AN EXPERT: not the leading researcher in the field; not a novice; not an inventor; a reasonably skilled practitioner who is aware of the state of the art; POSITA HAS ORDINARY CREATIVITY: KSR: a POSITA is not an automaton; POSITA brings ordinary skill, knowledge, and creativity to solving problems; does not need explicit instruction for every combination — common sense modifications are within skill; WHY LEVEL OF SKILL MATTERS: what was 'routine' for POSITA: lower skill = less is obvious; higher skill = more is obvious; knowledge imputed to POSITA: a POSITA is presumed to know all the prior art in the field; not just the references cited in the rejection, but the entire body of published knowledge; ability to make predictable modifications: higher skill = more modifications are predictable; DISPUTE STRATEGY: during prosecution, applicants can argue for a lower POSITA definition (making the invention more non-obvious); defendants in litigation argue for higher POSITA definition (making patents easier to invalidate); POSITA definition disputes are common in Markman hearings and expert testimony; POSITA IN COMPLEX FIELDS: in fields like pharmaceuticals, biotechnology, or complex electronics, POSITA may have a PhD and years of experience — the level matters enormously for what is 'predictable'; RECORD THE POSITA: applicants should explicitly describe the level of POSITA in the specification to anchor favorable assumptions; examiners should state their POSITA assumption in rejections.