Arguing Obviousness with the Patent Examiner

by Audrey A. Millemann
The IP Law Blog

Most patent applications are initially rejected on obviousness grounds by the patent examiner in the US Patent and Trademark Office.  That means that the examiner believes that the invention, as set forth in the claims in the application, would have been obvious to a person of ordinary skill in the art at the time the application was filed.   Usually, the rejection is based on one or more prior art references – documents that are publicly available as of the application’s filing date.  In making such a rejection, the examiner states that a person skilled in the art would have found it obvious to modify the teachings of the cited prior art references to achieve the claimed invention.

There are several ways to overcome this type of obviousness rejection.  The applicant can argue that the examiner is incorrect in the interpretation of the prior art references, and that those references do not teach or disclose what the examiner contends.  The applicant can also argue that, although the examiner may be correct in interpreting the prior art references, the examiner is incorrect in concluding that a person skilled in the art would have found the claimed invention obvious based on those  references.  Or, the applicant can amend the claims to add an element that is not taught or disclosed in the references.

The test for obviousness is whether a person of ordinary skill in the art, given the teachings of the prior art as a whole, would have been led to create the claimed invention.  The Supreme Court has held that the examiner must articulate a rational reason why a person skilled in the art would have combined the prior art to create the invention.  KSR International v. Teleflex Inc., 127 S. Ct. 1727 (2007).  The Federal Circuit Court of Appeals has held that the focus must be on the claimed invention; the examiner cannot focus on substitutions between the claims and the prior art.  The examiner may only consider the prior art and the accepted wisdom and knowledge in the field at the time the application was filed.

As the Supreme Court held in Graham v. John Deere Co., 383 U.S. 1 (1966), in order to reject claim on obviousness grounds, the examiner must establish a prima facie case of obviousness.  To do so, the Examiner must first make factual inquiries and factual findings as to the scope and content of the prior art, the differences between the prior art and the claims, and the level of ordinary skill in the art.

Next, the Examiner must make two findings:  (1) that a person skilled in the art would have had some motivation to combine the prior art teachings to achieve the claimed invention; and (2) that a person skilled in the art would have had a reasonable expectation of success. Intelligent Bio-Systems, Inc. v. Illumina Cambridge, Ltd, 821 F.3d 1359, 1366-68 (Fed. Cir. 2016).  The Examiner must make specific findings of these requirements.  If either requirement is not met, the Examiner cannot use this rationale to support an obviousness rejection.

In seeking to overcome an obviousness rejection, the applicant should analyze whether an argument can be made that the examiner has not established a prima facie case of obviousness because the examiner failed to make the two required findings.  It may be possible to argue that the two required findings were not made, that the findings are not supported by a factual basis, or that the findings are incorrect.

In addition to making these arguments, the applicant may submit the declarations of the inventors or of expert witnesses in the field to provide their opinions or facts to demonstrate that the examiner cannot make the required findings, and that the rejection should be withdrawn.