More Ways to Overcome Obviousness

by Audrey A. Millemann
The IP Law Blog

In my last column, I discussed the first argument that should be made in overcoming an obviousness rejection made by the patent examiner in a patent application.  If possible, the applicant should argue that the examiner has failed to establish a prima facie case of obviousness because the examiner did not make the required factual findings.  However, there are several additional arguments that may be applicable.

First, in relying on prior art references for the rejection, the examiner cannot pick and choose only one aspect of a prior art reference and exclude other aspects of the reference or ignore the central teaching of the reference.  “It is impermissible within the framework of section 103 to pick and choose from any one reference only so much of it as will support a given position, to the exclusion of other parts necessary to the full appreciation of what such reference fairly suggests to one of ordinary skill in the art.”  In re Wesslau, 353 F.2d 238 (CCPA 1965).

The examiner cannot “stitch together an obviousness finding from discrete portions of prior art references without considering the references as a whole.”  In re Enhanced Security Research, LLC, 739 F.3d 1347, 1355 (Fed. Cir. 2014).  The examiner cannot take a statement in the reference out of context and give it a meaning it would not have had to a person skilled in the art.  Nor can the examiner take a single aspect of a reference out of context and use it with hindsight to find obviousness.  A prior art reference must be read as a whole; the entire disclosure of the reference must be considered, including its teachings away from the claimed invention.  See, MPEP §2145.

Moreover, references that teach away cannot serve to create a prima facie case of obviousness.  As explained by the Federal Circuit Court of Appeals in Spectralytics Inc. v. Cordis Corp., 649 F.3d 1336, 1343 (Fed. Cir. 2011), “‘teaching away’ does not require that the prior art foresaw the specific invention that was later made, and warned against taking that path.” The court stated: “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference or would be led in a direction divergent from the path that was taken by the applicant.”

Second, the examiner must consider the totality of the prior art.  The person skilled in the art is presumed to have full knowledge of the prior art in the field.  “The question in a section 103 case is what the references would collectively suggest to one of ordinary skill in the art.”  In re Ehrreich, 590 F.2d 902, 908-09 (CCPA 1979).  A claim that is “contrary to the accepted wisdom” at the time the invention was made is “strong evidence of unobviousness.”  In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986).  Moreover, prior art that teaches away is a key factor that must be considered and such references are strong evidence of nonobviousness.  Thus, if the applicant is aware of prior art that teaches away from the claimed invention, which the examiner has not considered, those references should be submitted as evidence of nonobviousness.

Third, the examiner may not use hindsight to reconstruct the claimed invention. It is impermissible to use the claims as a template to select only certain prior art and only certain aspects of that art.  The examiner cannot use the claims as a roadmap or template to work backwards to try to create the claimed invention from the prior art.

The courts are clear on this point.   The “[d]etermination of obviousness cannot be based on the hindsight combination of components selectively culled from the prior art to fit the parameters of the patented invention.”  ATD Corp. v. Lydall , Inc., 159 F.3d 534,546 (Fed. Cir. 1998).  In analyzing obviousness, the examiner may only consider the knowledge of one skilled in the art, the prior art references, and the accepted wisdom in the field at the time.  “One cannot use hindsight reconstruction to pick and choose among isolated disclosures in the prior art to deprecate the claimed invention.”  In re Fine,  837 F.2d 1071,1075 (Fed. Cir. 1988).  It is improper for the examiner to backtrack from the claims to try to find something related in the prior art.  The Federal Circuit has held: “It is impermissible, however, simply to engage in a hindsight reconstruction of the claimed invention, using the applicant’s structure as a template and selecting elements from the references to fill the gaps.”  In re Gorman,  983 F.2d 982, 987 (Fed. Cir. 1991).

Fourth, an obviousness rejection cannot stand if it is based on a proposed modification of the prior art that would cause the prior art to be unsatisfactory or inoperable for its intended purpose.  If that is the case, then there is no motivation to modify the prior art and no basis for the obviousness rejection.  MPEP §2143.01 states that:  “if a proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification.”

Fifth, and similarly, if an obviousness rejection is based on a proposed modification that would change the principle of operation of the prior art, then there is no basis for the rejection.  As stated in MPEP §2143.01, “if the proposed modification … would change the principle of operation of the prior art invention being modified, then the teachings of the reference are not sufficient to render the claims prima facie obvious.”

In responding to an obviousness rejection, the applicant should make as many of these arguments as are applicable and supported.  Even if the examiner is not persuaded, the arguments may be persuasive on appeal.