Patent Prosecution. A. For a determination of obviousness of the subject matter under 35 U.S.C

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1 Patent Prosecution Decisions Relating to Obviousness Reiections Under 35 U.S.C (a) 1) Graham v. John Deere (148 USPQ 459) A. For a determination of obviousness of the subject matter under 35 U.S.C 9 103, certain basic factual inquiries are to be made: 1. Determine scope and content of prior art 2. Ascertain differences between prior art and the claims 3. Resolve level of ordinary skill in the pertinent art B. Secondary considerations have relevancy to indicia of obviousness and may be utilized to give light to surrounding circumstances 1. Commercial success 2. Long felt, but unresolved, need 3. Failure of others 4. etc 2) In re Oetiker (24 USPQ2d 1443) To present a prima facie case of obviousness, where the claims are rejected over a combination of references under 35 U.S.C. $1 03, there must be some reason, suggestion, or motivation found in the prior art whereby a person of ordinary skill in the field of the invention would make the combination. That knowledge cannot come from the applicant's invention itself. 3) In re Kaplan (229 USPQ 678) - (1986) In obvious type double patenting rejections, to establish that a claimed invention is "a mere variation"... which would have been obvious to one or ordinary skill in the relevant... there must be some clear evidence to establish why the variation would have been obvious which can property qualify as "prior art". 4) In re Kahn (78 USPQ2d 1329) - (2006) Rejections on obvious grounds cannot be sustained by mere conclusory statements: instead, there must be some articulated reasons with some rational underpinning to support the legal conclusion of obviousness. The "motivation-suggestion-teaching" test asks not merely what references disclose but whether a person of ordinary skill in the art - possessed with understanding and knowledge reflected in the prior art, and motivated by general problem facing the inventor - would have been led to make the claimed invention. From this it may be determined whether the overall disclosure, teaching and suggestion of the prior art, and level of skill in the art, will support a legal conclusion of obviousness.

2 5) In re Oelrich, et a1 (1 98 USPQ 2 10) - (1 978) The Examiner must show that the claimed subject matter would have been obvious to one of ordinary skill in the art at the time the invention was made by application of the basic factual inquiries of Graham v John Deere. 6) In re Fritch (23 USPQ2d 1780) A. Mere fact that prior art may be modified to reflect features of claimed invention is not enough (under 35 U.S.C. $ 103) 1. In a combination of cited references, there must be a suggestion of motivation, or desirability, of the changes suggested by the Examiner. a. It is impermissible for the Examiner to rely upon hindsight to arrive at a determination of obviousness by using the claimed invention as an instruction manual or a template to piece together the teachings of the prior art so that the claimed invention is rendered obvious. b. One cannot use hindsight reconstruction to pick and choose among isolated disclosure in the prior art to deprecate the claimed invention (see In re Fine, 5 USPQ2d at 1600; and Hartness v. Simplimatic, 2 USPQ2d 1826; and In re Sernaker, 21 7 USPQ 1) 7) In re Geiger (2 USPQ2d 1276) A. A prima facie case of obviousness cannot be established, under 35 U.S.C. $ 103, by combining teachings of prior art to produce the claimed invention, absent some teaching, suggestion, or incentive supporting the combination (see ACS Hospital v. Montefior 221 USPQ 929) B. Where, in light of cited references, under 35 U.S.C. $ 103, one skilled in the art might find it obvious to try various combinations of materials disclosed in the prior art, this is not the standard of 35 U.S.C. $ bobvious to try" is not the standard of 35 U.S.C. $ 103. A disregard for unobviousness of results of "obvious to try" experiments disregards the "invention as a whole" concept of $103. (In re Goodwin, 1898 USPQ 1) 2. Standard of 35 U.S.C. $103 is not that it could be obvious for one of ordinary skill in the art to try. Over emphasis on routine nature of data gathering required to arrive at applicant's discovery, after its existence became expected, overlooks the last sentence of Section 103. (In re Antonie, 195 USPQ2d 6)

3 3. There is usually an element of obviousness to try in any research endeavor (ie; research is not undertaken with complete blindness but with some semblance of a chance of success). Patentability based on that as a test would be contrary to statute. (In re Tomlinson, 150 USPQ 623) 8) In re Deminski (230 USPQ 3 13) A. There must be a motivation in the cited prior art combination of references, under 35 U.S.C. $103, to arrive at the applicants invention without a hindsight analysis by reading the applicant's own invention into the prior art. B. A "teaching away" from the applicant's invention by a cited reference may be taken into consideration. 9) In re Vaeck (20 USPQ 2d 1438) A. Where claimed subject matter has been rejected as obvious in view of prior art references, a proper analysis under 35 U.S.C. $ 103 to establish a prima facie case of obviousness requires consideration of two factors: 1. Whether the prior art would have suggested to those of ordinary skill that they should make the claimed invention, or carry out the claimed proccss; and 2. Whether the prior art would also have revealed that in so making or carrying out the claimed invention, those of ordinary skill would have a reasonable expectation of success. (see In re Dow, 5 USPQ 1429) 3. Both the suggestion and the reasonable expectation of success must be found in the prior art, not in the applicant's disclosure. 10) Ex Parte Clapp (227 USPQ 972) A. A rejection of claims to a new combination of old elements as being obvious under 35 U.S.C. $103 is improper where the Examiner simply cited several references to show that the individual elements were known without any collective teaching in the references themselves, or any convincing line of reasoning as to why an artisan would have found it to be obvious, to pick an choose the elements - without using the applicant's claims as a guide. 11) In re Davies (177 USPQ 381) A prima facie case of obviousness can be rebutted by evidence of unexpected properties of a composition. However, whether such evidence is admissible via a Rule 132 Affidavit depends upon whether adequate basis is present in the patent application's specification to introduce evidence of a newly found property. (see also, In re Papesch, 137 USPQ 43; and In re Herr, 134 USPQ 176; and In re Zenitz, 142 USPQ 101).

4 12) In re Keller (208 USPQ 871) A. Applicant cannot show non-obviousness by attacking references individually where rejection is based on combination of references under 35 U.S.C. $103 (see also In re Merck, 23 1 USPQ 375) B. Test of obviousness is not whether features of secondary reference may be incorporated into primary reference, nor whether claimed invention is expressly suggested in any one or all of the references; rather, the test is what the combined teachings of the references would have suggested to one of ordinary skill in the art. 13) Gore v. Garlock (220 USPQ 303) A. In evaluating whether claims are obvious under 35 U.S.C. $103, one must forget what he or she has been taught at trial about the claimed invention. Then they must cast their mind back to the time that the invention was made to occupy the mind of one skilled in the art who is presented only with references, and who is normally guided by then-accepted wisdom in the art. B. Praise of a commercial product claimed in a patent by an owner of a prior art patent, may be objective evidence of non-obviousness under 35 U.S.C. $103. C. Anticipation under 35 U.S.C. $ 102 requires the disclosure in a single prior art reference of each and every element of the claim under consideration. D. It is irrelevant under 35 U.S.C. $ 102 that one using an invention may not have appreciated the results, where the patent owner's operation of a device is a consistent and reproducible use of the claimed invention; were that alone enough to prevent anticipation, it would be possible to obtain patents for an old and unchanged process

5 SUMMARY 1) Motivation to Combine (Teaching, Suggestion, Non-Analogous Art, Motivation - In re Fritch - In re Oetiker - In re Geiger - In re Deminski - In re Kahn 2) Hindsight - In re Fritch - In re Oetiker - In re Dominski - Ex Parte Clapp 3) Obvious to Try - In re Geiger - In re Goodwin - In re Antonie - In re Tomlinson 4) Teaching Away - In re Deminski - Graham v. John Deere 5) Ordinary Skill - In re Vaeck 6) Reasonable Expectation of Success - In re Vaeck 7) Long Felt Need - In re Dow Chemical - Graham 11. John Deere 8) Unexpected Properties - In re Davies - In re Papesch - In re Herr - In re Zenitz - In re Lorenz 9) Praise of Commercial Product - Gore v. Garlock - Graham v. John Deere 10) Attacking Individual References - In re Keller - In re Merck