Suppose your client's patent application is rejected as
allegedly obvious under 35 USC §103, and the Examiner cites
one or more references and sets forth an "obvious to try"
rationale in an Office action. Here are some tools you can
add to your toolkit, and possibly apply to challenging the Office
assertion that the claimed invention is "obvious to try"
in light of the cited reference(s). Of course, arguments
should be tailored to the circumstances at hand, an amendment might
help, and it is not necessarily the case that all (or even any) of
the following arguments will apply in all scenarios.
We may rely on advice the Manual of Patent Examining Procedure
(MPEP) dispenses in 2143 "Examples of Basic Requirements of a
Prima Facie Case of Obviousness":
E. "Obvious To Try" – Choosing From a Finite Number
of Identified, Predictable Solutions, With a Reasonable Expectation
of Success
To reject a claim based on this rationale, Office personnel must
resolve the Graham factual inquiries. Then, Office personnel must
articulate the following:
(1) a finding that at the time of the invention, there had been a
recognized problem or need in the art, which may include a design
need or market pressure to solve a problem;
(2) a finding that there had been a finite number of identified,
predictable potential solutions to the recognized need or
problem;
(3) a finding that one of ordinary skill in the art could have
pursued the known potential solutions with a reasonable expectation
of success; and
(4) whatever additional findings based on the Graham factual
inquiries may be necessary, in view of the facts of the case under
consideration, to explain a conclusion of obviousness.
Relating to (1) above, has the Office action produced a factual
showing in the cited reference(s) of the "recognized problem
or need in the art"? If not, this can be challenged.
For example, there is a silence in the reference as to the
alleged recognized problem or need in the art, and the Office has
not produced such a factual showing.
Relating to (2) above, has the Office action produced a factual
showing in the cited reference(s) of "a finite number of
identified, predictable potential solutions"? If the
reference does not show the specific combination of elements or
interrelationships among the elements recited in the claims of the
Applicant (e.g., there would've been a 35 USC §102
rejection as anticipation), the reference likely shows a finite
number of other arrangements or interrelationships among some of
the elements recited in the claims of the Applicant. But, how
many ways can these elements be rearranged or interrelated?
Is this finite, or infinite or semi-infinite? Does the
reference teach or suggest any guidance as to other arrangements or
combinations of these elements? You may be able to argue that
the reference shows certain elements, which could be rearranged in
an infinite or semi-infinite number of ways. If the reference
shows only a few specific arrangements or combinations, and
doesn't provide guidance as to the rest of the possibilities,
you may be able to argue as follows. The claimed arrangement
or combination is not specifically shown among the finite number of
identified potential solutions in the cited reference. What
remains as to other possible arrangements or combinations of these
elements is semi-infinite or infinite, and is therefore not shown
in the reference as a finite number of identified potential
solutions.
Relating to (3) above, has the Office articulated a motivation that
directs the person of ordinary skill in the art in an appropriate
direction to pursue the known potential solutions? If the
motivation cited in the Office action is general in nature, this
can be challenged as not distinguishing among a very large number
of possible combinations of the elements and therefore not
directing towards a reasonable expectation of success to the
particular problem which Applicant addresses. For example, a
motivation to improve could be pursued in any of a very large
number of directions with not only the elements cited in the Office
action but many further elements besides, and might not constitute
a factual showing of how the person of ordinary skill in the art
could have pursued the known potential solutions with a reasonable
expectation of success that leads to the claimed limitations.
Relating to (4) above, what does the Office action say about the
gaps between what is shown in the cited references and the claimed
device, system or method, etc.? This is often where the
opportunity for an amendment arises. Sometimes, a clarifying
amendment, which highlights such a gap but does not unduly narrow a
claim, is a good approach to pursue. This can strengthen
arguments.
Let's work through an hypothetical example that may provide
insights as to the above processes. Applicant has discovered
that arranging elements A and B at a particular angle and applying
C in a range of positions relative to A and B solves a specific
problem. The references cited in the Office action show
elements A, B and C, but A and B are always parallel (i.e., not at
the particular angle) and C is shown performing some function
unrelated to what A and B are doing. The Office action
rejects the claim as "obvious to try" in light of the
showing of A, B and C in the cited references.
This can be challenged as follows. The cited references do
not identify the specific problem solved by Applicant, nor do the
cited references show the specific solution arrived at by
Applicant. Although the cited references show A and B, these
are always in parallel arrangement which teaches away from the
angular arrangement applied and claimed by Applicant.
Moreover, A and B could be arranged at an infinite number of
possible angles and relative positions, so the cited references do
not show a finite number of possible solutions. The cited
references are silent as to the advantages of arranging A and B at
angles other than in parallel and so do not teach a range of
predictable potential solutions to various problems. The
cited references do not show the relationship of C to A and B, so
the aspects of the claimed relationship of C to A and B are not
shown in the possible solutions identified in the cited references.
Any or all of the above can be argued as challenges to the
"obvious to try" rationale.
Similar examples can be set up for electronics circuits, mechanical
devices, electromechanical devices, software and hardware systems,
methods (this may be useful for software-based patenting), material
layers, biochemistry and numerous other types of subject matter.
Moreover, the above analysis and toolkit building for patent
prosecution can be applied to other rejection rationales.
Just look up in the MPEP and see what the Examiner is
supposed to do to make a proper rejection. Pay attention to
the details. Then, see if there are opportunities for
challenging or amendment during patent prosecution. This is
all part of the art of patenting.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.