Patent Prosecution. (a) Test: "Skill of the ordinary mechanic" is required; Hotchkiss v Greenwood, 52 US 246 (1 850) - US Supreme Court

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1 Patent Prosecution OBVIOUSNESS REJECTIONS UNDER 35 U.S.C SEC1-ION 103(a) I. In General A. Prior to 1952: Various Standards, or Tests, for Patentability 1. Various Standards, or Tests, for Patentability (a) Test: "Skill of the ordinary mechanic" is required; Hotchkiss v Greenwood, 52 US 246 (1 850) - US Supreme Court (b) Test: "Flash of creative genius" is required; Cuno Engineering v Automatic Devices; 5 1 USPQ US Supreme Court (c) Test: "Addition of something to the total stock of knowledge" is required; Great A&P Tea v Supermarket Equip; 87 USPQ US Supreme Court B Enactment of 35 U.S.C. Section 103(a) 1. Former "tests," (or Standards) in. effect, overruled by enactment of 35 U.S.C. $1 03 in 1952; was intended to moderate"... the extreme degrees of strictness exhibited by a number of judicial opinions... that is,... some change of attitude more favorable to patents..." (P. J. Federico com~nentary on 1952 Act, in part) C. Some Responsibilities of USPTO Relating to 35 U.S.C. Section 103(a) 1. Examiner has a responsibility of presenting a prima facie case of obviousness of the claimed invention in the sense of 35 U.S.C. Section 103(a) (a) Concept of "Prima Facie" Case of obviousness: When information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard C.F.R Sectionl.56(b)(2)(ii) (b) USPTO has not prescribed a specific test for implementing a prima facie obviousness rejection on the regulatory level. (c) USPTO's reluctance to specifically address requirements for prima facie obviousness under 35 U.S.C. 103 is troublesome (d) USP'rO has, however, enacted procedures for Examiners to follow: MPEP \ Examiner has the responsibility of citing the best references and of explaining the 1

2 pertinence of each reference, if not apparent, and to specify each claim rejected. (37 C.F.R 1.106) and the Examiner may rely upon admissions by applicant and upon facts within his or her own personal knowledge, subject to the provisions to 37 C.F.R 1.104(d)(2) 3. For a rejection by the Examiner based on his own personal knowledge, it must be supported, when called for by the applicant, by affidavit of the Examiner, 37 C.F.R (d)(2) 11. Attacking Establishment of Prima Facie Case of Obviousness A. In General 1. Directly attack Examiner's contention that prima facie case of obviousness has been established (a) If examination (by the Examiner) at the initial stage does not establish a prima facie case of unpatentability, then the applicant is entitled to a grant of the patent. (In re Oetiker, 24 USPQ2d 1443) (b) It is not enough that the Examiner cite the references. The Examiner must show why "it would appear" that the references should have been combined (In re Fritch 23 USPQ2d 1780) (c) It may be incumbent upon the Applicant to argue (e.g. prove) one or more of the following Elements to attack a 35 U.S.C. Section 103(a) rejection on a basis that a prima facie case of obviousness of the claimed invention is not made out: (1) Element No. 1: That the reference(s) is not proper prior art (2) Element No. 2: That the reference(s) were not available to the inventor (3) Element No. 3: That the reference(s), particularly a combination of references, fail to teach to one having ordinary skill in the pertinent art (4) Element No. 4: That a combination of references fail to contain a suggestion or motivation for their combination (5) Element No. 5: That a combination of references or modification is not obvious to one having ordinary skill in the pertinent art B. Requirements to Make Out a Prima Facie Case (The Above Five Elements) 1. Element No.1: - The reference must be proper prior art a. Effective date of reference may be significant b. Applicant may remove the reference by antedating the reference's effective date (e.g. by Rule 13 1 affidavit or declaration) c. Applicant may require Examiner to provide an affidavit if rejection is based on Examiner's own knowledge. 37 C.F.R (d)(2) However, if such rejection

3 is unchallenged by the Applicant, it may become an effective rejection d. Removal of one reference of a 35 U.S.C. rejection based upon a combination of cited references normally defeats the rejection 2. Element No.2: - References must be available to the inventor a. Reference must be either in the field of the inventor' s endeavor or reasonably pertinent to the specific problem with which the inventor was involved (In Deminski, 230 USPQ 3 13) (e.g. the reference must be in an art which is analogous to that of the invention (C&A Potts v Creager 155 US 597) (1) A case where art was not in field of invention was, however, reasonably pertinent - Laptop computer case - (In re Paulsen :3 1 USPQ2d 1671) (2) Federal Circuit has held that "common sense" and "reality of the circumstances" are to be used in deciding in which fields a person of ordinary skill would reasonably be expecteded to look for a solution to the problem (In re Oetiker 24 USPQ2d 1443) See also, Wang Labs v Allen Bradley (26 USPQ2d 1767) for a rather narrow interpretation of analogous art In re Gentile (unpublished) demonstrates the dangers of overstating the invention in the specification to the extent that it may enable the Examiner to cite what might otherwise be considered non-analogous art (see Donner's text on page 364) 3. Element No.3: - The reference must teach: a. The test for obviousness is not whether the features of one reference may be incorporated into another reference... Rather we look to see whether the combined teachings render the claimed subject matter obvious (In re Wood, 202 USPQ 171). (1) The issue of failed experiments was undecided (In re Wilder 166 USPQ 545 and Foseco v Chemincon 210 USPQ 697) (2) Teaching may be held to be inherent (In re Napier 34 USPQ2d 1782) Element No.4: - Suggestion to Combine or Modify the References a. Obviousness cannot be established by combining the teachings cited prior art absent some teaching, suggestion or incentive supporting the combination (In re Geiger 2 USI'Q2d 1276) 1. The motivation must exist before the date of the invention (Ex parte Skinner, 2 US PQ2d 1788 and Panduit v Dennison 1 USPQ2d 1593)

4 b. What if the references teaches away from the claimed invention? 1. The degree of "teaching away" would be taken into consideration (US v Adams, 148 USPQ 479 and In regurley 3 1 USPQ 2d 1040) - the application of this philosophy is somewhat difficult c. Cases relating to combination of references: 1. Ex parte Re Qua 56 USPQ Lindermann v American Hoist 221 USPQ In re Oetiker, 24 USPQ2d In re Fritch 23 USPQ2d Ex parte Obukowicz 27 USPQ2d In re Johenning 35 USPQ2d Element No.5: - Combination or Modification Obvious to One of Ordinary Skill a. In General 1. The resulting combination or modification, must appear to show or suggest the claimed invention. (In re Nielson 2 USPQ2d 1525) 2. Differences between the prior art and claims at issue are to be ascertained; ancl the level of ordinary skill in the pertinent art resolved. Against this background, the obvious~~ess or nonobviousness of the subject matter is determined. (Graham v John Deere, 148 USPQ 459) 3. Be aware that this attack against a prima facie case of obviousness is more appropriate in attacking an obviousness of an already established prima facie case (ie: In re Oetiker, 24 USPQ2d 1443) b. More Specifically 1. Improper Standards of Obviousness: (a) The combination must produce a synergistic result, that it, the whole must be greater than the sum of its parts (Gardner v. TEC 220 USPQ 232) (b) Obvious to Try - Examiner may not use as an element of the obviousness rejection that one of ordinary skill in the art would have arrived at the invention by trying different alternative structures or materials (In re Lindell 155 USPQ 52 1) 2. Determining Level of Ordinary Skill (a) One of ordinary skill in the art is not the inventor but a hypothetical person (an ordinary person, not the judge, the Examiner, a genius or layman) who is presumed to be aware of all the pertinent art. (Environmental Design v Union Oil 21 8 USPQ 865

5 and Custom Accessories v Jeffrey-Allan 1 USPQ2d 1 196) Note: When presenting affidavits or declaration via Rule 13 1 & 1 32, it is usually important to set forth the credentials of the affiant or declarant (Ex parte Rodgers 27 USPQ2d 1738) (b) If applicant fails to define the level of ordinary skill in responding to an unobviousness rejection, the applicant may effectively conceded that the level of ordinary skill is the level of skill represented by the cited references (In re Gentile - unpublished) (c) Judicial notice of ordinary skill was held to be inappropriate the court related to judicial notice or "commonptactice of wide notoriety" (In re Pardo 21 4 USPQ 673) -- Thus, the Examiner should rely, at least to some extent, on a reference for describing level of ordinary skill. (d) Affidavits to show new evidence or change of focus after filing Where applicant finds new evidence or Examiner cites new reference - applicant may change the focus of the invention to show unobviousness (so long as the specification provides support or new matter requirements are not breached) In re Zenitz 142USPQ 158 unexpected results were determined after the patent application was filed - see also In re Saunders 170 USPQ 21 3) (e) Affidavit of expert versus one of ordinary skill Affidavits of experts are generally less persuasive -unless it is carefully drafted to reflect what one of ordinary skill in the art would have known and done (In re Ona, unpublished) (0 Affidavit to show unexpected results. A typical way to rebut a prima facie case of obvioiusness is to make a showing of "unexpected results" -- this applies more often to unpredictable fields such as chemistry where minor changes may result in substantially different results (In re Soni 34 USPQZd 1684) Unexpected results must be supported by factual evidence - e.g. not merely conclusory statements in the patent application's specification (In re De Blauwe 222 USPQ 19 1 and In re Soni 34 USPQ2d at 1688) -- see also, in general as to affidavits for presenting "unexpected results", In re Klosak 173 USPQ 14 and In re Zenitz 142 USPQ 158) Considering Discovery of the Problem Discovery of the problem is to be considered in determining if a prima facie case of obviousness is made out. Whether the situation is presented in the specification or later by affidavit may be important in this case (In re Sun 3 1 USPQ2d and In re Wright 6 USPQ2d 1959 and In re Atkinson 41 USPQ 308 and In re Nomiya 184 USPQ see also H. T. Markey "Why Not The Statute, 65 J.Pat.Off Soc'y 33 1 (1983))

6 111. Rebutting Prima Facie Case of Obviousness A. Rebutting Prima Facie Obviousness with Evidence C.F.R (Rule 132) a. Affidavit (or declaration) should make a at least a casual connection between the evidence and the claimed invention (Ex parte Remark 15USPQ2d 1498) B. Preparing Persuasive Affidavit (Declaration) Evidence 1. Affidavits should not present unsupported, conclusory statements. (In re Huntzicker, 34 USPQ at 15) However, the Board is still required to consider those portions of the affidavit that are not conclusory. 2. Affidavits to show technical differences (a)affidavit can be used to show technical differences in a manner distinguished from In re Huntzicker (Ex parte Frankliln 41 USPQ 43) This case emphasis the persuasiveness of a carefully written affidavit in overcoming an obviousness rejection. (b) Of course the features relied upon in the affidavit must be features recited in the claim(s) -- Ex parte GPAC 29 USPQ2d Affidavits to show secondary considerations: (a) Commercial success, particularly in a crowded field (Stratoflex v Aeroquip USPQ 87 1 and Continental Can v Monsanto 20 USPQ 2d 1746 and Ex parte Remark 15 USPQ2d 1498) (1) Of course there must be a connection between the commercial success and the claimed invention (Ex parte Anderson 2 1 USPQ2d 124 1)