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How to Argue Against a Section 103 Patent Obviousness Determination

By John DiGiacomo

Generally speaking, you cannot obtain a patent for an obvious invention. However, to be a bit humorous, it is not always obvious whether an invention is obvious. When a patent application is filed, the application will be examined by a patent attorney at the US Patent & Trademark Office (“USPTO”). Under USPTO guidelines and court precedents, obviousness is based on three underlying factual inquiries:

  • What is the scope and content of the prior art
  • What are the differences between the claimed invention and the prior art and
  • Would a person with “ordinary skill in the pertinent art” have deemed the claimed invention “obvious”

The patent attorney may also evaluate some “secondary considerations” which may include evidence of commercial success, long-felt but unsolved needs, failure of other inventors and unexpected results.

If a patent attorney makes a determination of obviousness, the attorney must explain and clearly articulate the reason or reasons why the claimed invention would have been obvious. Over the years, certain reasons have been upheld by the USPTO and the courts to support rejection on the basis of obviousness. Examples include:

  • Mere combination of prior art elements according to known methods to yield predictable results
  • Use of simple substitution of one known element for another to obtain predictable results
  • Use of known technique to improve similar devices (methods, or products) in the same way
  • Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results
  • Choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success — known as “obvious to try”
  • Use of known work in one field of endeavor to make variations of it for use in a different field of endeavor if the variations are predictable to one of ordinary skill in the art
  • Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention
  • And more

If a patent attorney makes a preliminary determination of obviousness, generally, the applicant has an opportunity to respond. To respond, the first step is to make a close examination of the patent attorney’s reasoning. After examination, sometimes, the best response is to amend the application. Maybe the solution is to add an element to the invention or modify a method. Sometimes a change of that sort will be sufficient to overcome the obviousness objection. In other cases, the applicant can directly challenge the claim of obviousness with one or more of the following arguments or evidentiary showings:

  • Demonstrate that factual errors were made — for example, if possible, show that the examining attorney misunderstood some aspect of the application or the prior art
  • Argue that the definition used for “one of ordinary skill” was in error
  • Show that “one of ordinary skill in the art” could NOT have changed/combined/substituted the claimed elements by known methods — for example, show information was confidential or unknown or show that technological difficulties would have made it impossible for one of ordinary skill to make the change/combination/substitution
  • Prove that the new elements or combinations or methods function differently from the prior art or traverse a different “path” to the end result
  • Show that the results were different, unexpected and/or not predictable
  • Provide evidence of commercial success or targeting of new/emerging markets or satisfaction of long-felt need
  • And more

For more information or if you have questions about applying for a patent, contact the patent lawyers at Revision Legal at 231-714-0100.

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