Responding to Obviousness Rejections in Light of the USPTO’s New Guidance

America Patent and Trademark Workplace (USPTO) just lately launched new guidance to patent examiners on making obviousness rejections. The steerage focuses on post-KSR precedential jurisprudence from the U.S. Courtroom of Appeals for the Federal Circuit. Among the steerage is pretty mundane, a few of it’s not. For a common overview of the steerage itself, click here.

The aim of this text is to suggest a number of responses one may use to counter rejections that apply sure problematic facets of the brand new steerage. It’s not exhaustive and I can not predict what developments we would truly see sooner or later, however I submit the under primarily based on a number of issues I see as probably changing into points.

Keep in mind First Rules

Initially, be aware that the steerage begins by stating:

“This up to date steerage serves as a reminder for USPTO personnel of the versatile strategy to obviousness that’s required beneath KSR and Federal Circuit precedent….This steerage doesn’t represent substantive rulemaking and therefore doesn’t have the power and impact of legislation…Rejections will proceed to be primarily based on the substantive legislation, and it’s these rejections which can be appealable [emphasis added].”

Due to this fact, the primary essential factor to bear in mind is that should you get an obviousness rejection primarily based on the brand new steerage, pull the examiner again to first ideas. And don’t hesitate to quote the legislation itself, as a result of, in any case, obviousness is a authorized willpower.

Making Sense of ‘Widespread Sense’

With this backdrop, you may get an examiner who seizes on this a part of the steerage:

“[T]he Supreme Courtroom instructed the Federal Circuit that individuals having abnormal ability within the artwork (PHOSITAs) even have frequent sense, which can be used to glean solutions from the prior artwork that transcend the first objective for which that prior artwork was produced….Thus, the Supreme Courtroom taught {that a} correct understanding of the prior artwork extends to all that the artwork fairly suggests, and isn’t restricted to its articulated teachings relating to the best way to resolve the actual technological drawback with which the artwork was primarily involved [emphasis added].”

Must you get this thrown at you, take into account that the Federal Circuit selections mentioned within the steerage all had some evidentiary foundation for his or her holdings about what the expert artisan would perceive. Not the examiner themselves, however the precise expert artisan on the time of the patent’s precedence date, no much less.

You may then see should you can work on this post-KSR precedential case from the Federal Circuit:

“‘[C]ommon sense and customary information have their correct place within the obviousness inquiry,’ a minimum of ‘if defined with adequate reasoning.’… ‘However,’ we cautioned, ‘there are a minimum of three caveats to notice in making use of ‘frequent sense’ in an obviousness evaluation.’…‘First, frequent sense is often invoked to offer a recognized motivation to mix, to not provide a lacking declare limitation.’…Second, we now have invoked frequent sense to fill in a lacking limitation solely when ‘the limitation in query was unusually easy and the expertise notably simple.’…‘Third, our instances repeatedly warn that references to ‘frequent sense’ – whether or not to provide a motivation to mix or a lacking limitation – can’t be used as a wholesale substitute for reasoned evaluation and evidentiary assist, particularly when coping with a limitation lacking from the prior artwork references specified.’”

DSS Technology Management, Inc. V. Apple Inc., 885 F.3d 1367, 1375 (Fed. Cir. 2018).

Whereas this utilized to “frequent sense,” it may also be relevant to different findings the examiner makes about lacking parts/motivation to mix that aren’t accompanied by proof.

‘Abnormal Creativity’

Choosing up that theme, you may additionally get an examiner that depends on the next from a bit of later within the steerage: “According to KSR and subsequent Federal Circuit case legislation, when evaluating the prior artwork from the angle of a PHOSITA, Workplace personnel should take that individual’s ‘abnormal creativity’ into consideration.”

However the Federal Circuit additionally cautioned in DSS Expertise Administration that invocation of “abnormal creativity” could be “no totally different from the reference to ‘frequent sense’…Right here, the Board relied on a gap-filler – ‘abnormal creativity’ as an alternative of ‘frequent sense’ – to provide a lacking declare limitation….In instances through which ‘frequent sense’ is used to provide a lacking limitation, as distinct from a motivation to mix,…our seek for a reasoned foundation for resort to frequent sense have to be looking out.’….The Board’s reliance on ‘abnormal creativity’ calls for a similar ‘looking out” inquiry.’” Id. at 1374-1375.

So when “frequent sense” or “abnormal creativity” are used to fill in a lacking limitation, there ought to nonetheless be a “looking out inquiry” and a few evidentiary foundation for why the expert artisan would have discovered one thing to be frequent sense or a matter of abnormal creativity. Identical for motivation to mix.

Significantly for motivation to mix, right here’s one other quick cite to a post-KSR case that proves a degree within the face of obscure allusions to “frequent sense” or “abnormal creativity”: “The presence or absence of a motivation to mix references in an obviousness willpower is a pure query of reality.” Novartis AG v. Torrent Pharm. Ltd., 853 F.3d 1316, 1327 (Fed. Cir. 2017).

Insist on the Proof

As one final suggestion, should you get an allegation of inherency in an obviousness rejection, keep in mind that the bar for inherent disclosure even for obviousness post-KSR remains to be fairly excessive:

“Whereas ‘[w]e have acknowledged that inherency may provide a lacking declare limitation in an obviousness evaluation,’…we now have emphasised that ‘the limitation at difficulty essentially have to be current’ with a view 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 general level to bear in mind is that there ought to be some reasoned foundation in proof for no matter is being alleged beneath the brand new steerage. Insisting on that as a place to begin for any rejection will hopefully undermine most of the methods through which the brand new steerage might be abused.

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Writer: gustavofrazao
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