Responding to Obviousness Rejections in Light of the USPTO’s New Guidance
“The overall point to keep in mind is that there should be some reasoned basis in evidence for whatever is being alleged under the new guidance.”
The United States Patent and Trademark Office (USPTO) recently released new guidance to patent examiners on making obviousness rejections. The guidance focuses on post-KSR precedential jurisprudence from the U.S. Court of Appeals for the Federal Circuit. Some of the guidance is fairly mundane, some of it is not. For a general overview of the guidance itself, click here.
The purpose of this article is to propose a few responses one might use to counter rejections that apply certain problematic aspects of the new guidance. It is not exhaustive and I cannot predict what trends we might actually see in the future, but I submit the below based on a few things I see as potentially becoming issues.
Remember First Principles
Initially, note that the guidance begins by stating:
“This updated guidance serves as a reminder for USPTO personnel of the flexible approach to obviousness that is required under KSR and Federal Circuit precedent….This guidance does not constitute substantive rulemaking and hence does not have the force and effect of law…Rejections will continue to be based on the substantive law, and it is these rejections that are appealable [emphasis added].”
Therefore, the first important thing to keep in mind is that if you get an obviousness rejection based on the new guidance, pull the examiner back to first principles. And do not hesitate to cite the law itself, because, after all, obviousness is a legal determination.
Making Sense of ‘Common Sense’
With this backdrop, you might get an examiner who seizes on this part of the guidance:
“[T]he Supreme Court instructed the Federal Circuit that persons having ordinary skill in the art (PHOSITAs) also have common sense, which may be used to glean suggestions from the prior art that go beyond the primary purpose for which that prior art was produced….Thus, the Supreme Court taught that a proper understanding of the prior art extends to all that the art reasonably suggests, and is not limited to its articulated teachings regarding how to solve the particular technological problem with which the art was primarily concerned [emphasis added].”
Should you get this thrown at you, keep in mind that the Federal Circuit decisions discussed in the guidance all had some evidentiary basis for their holdings about what the skilled artisan would understand. Not the examiner themselves, but the actual skilled artisan at the time of the patent’s priority date, no less.
You might then see if you can work in this post-KSR precedential case from the Federal Circuit:
“‘[C]ommon sense and common knowledge have their proper place in the obviousness inquiry,’ at least ‘if explained with sufficient reasoning.’… ‘But,’ we cautioned, ‘there are at least three caveats to note in applying ‘common sense’ in an obviousness analysis.’…‘First, common sense is typically invoked to provide a known motivation to combine, not to supply a missing claim limitation.’…Second, we have invoked common sense to fill in a missing limitation only when ‘the limitation in question was unusually simple and the technology particularly straightforward.’…‘Third, our cases repeatedly warn that references to ‘common sense’ – whether to supply a motivation to combine or a missing limitation – cannot be used as a wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the prior art references specified.’”
DSS Technology Management, Inc. V. Apple Inc., 885 F.3d 1367, 1375 (Fed. Cir. 2018).
While this applied to “common sense,” it can also be applicable to other findings the examiner makes about missing elements/motivation to combine that are not accompanied by evidence.
‘Ordinary Creativity’
Picking up that theme, you might also get an examiner that relies on the following from a little later in the guidance: “Consistent with KSR and subsequent Federal Circuit case law, when evaluating the prior art from the perspective of a PHOSITA, Office personnel must take that person’s ‘ordinary creativity’ into account.”
But the Federal Circuit also cautioned in DSS Technology Management that invocation of “ordinary creativity” can be “no different from the reference to ‘common sense’…Here, the Board relied on a gap-filler – ‘ordinary creativity’ instead of ‘common sense’ – to supply a missing claim limitation….In cases in which ‘common sense’ is used to supply a missing limitation, as distinct from a motivation to combine,…our search for a reasoned basis for resort to common sense must be searching.’….The Board’s reliance on ‘ordinary creativity’ calls for the same ‘searching” inquiry.’” Id. at 1374-1375.
So when “common sense” or “ordinary creativity” are used to fill in a missing limitation, there should still be a “searching inquiry” and some evidentiary basis for why the skilled artisan would have found something to be common sense or a matter of ordinary creativity. Same for motivation to combine.
Particularly for motivation to combine, here’s another short cite to a post-KSR case that proves a point in the face of vague allusions to “common sense” or “ordinary creativity”: “The presence or absence of a motivation to combine references in an obviousness determination is a pure question of fact.” Novartis AG v. Torrent Pharm. Ltd., 853 F.3d 1316, 1327 (Fed. Cir. 2017).
Insist on the Evidence
As one last suggestion, if you get an allegation of inherency in an obviousness rejection, remember that the bar for inherent disclosure even for obviousness post-KSR is still quite high:
“While ‘[w]e have recognized that inherency may supply a missing claim limitation in an obviousness analysis,’…we have emphasized that ‘the limitation at issue necessarily must be present’ in order to be inherently disclosed by the reference…(emphasis by the Federal Circuit).”
Southwire Co. v. Cerro Wire LLC, 870 F.3d 1306, 1301-1311 (Fed. Cir. 2017).
The overall point to keep in mind is that there should be some reasoned basis in evidence for whatever is being alleged under the new guidance. Insisting on that as a starting point for any rejection will hopefully undermine many of the ways in which the new guidance could be abused.
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Author: gustavofrazao
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John M. Rogitz
As Managing Attorney at Rogitz & Associates, John M. Rogitz manages the firm’s day-to-day operations and many of the firm’s clients. He is a registered patent attorney specializing in patent […see more]
