Patent It Yourself - PDF Archive

ChaPter 13 | GETTING the Pto to DELIVER | 383
Using a 102/103 Approach
You must use a 102/103 approach even if your claim was
rejected on Section 102 alone. This 102/103 approach is
useful if you don’t understand the examiner’s reasoning.
That is, rather than try to figure out what the examiner
was trying to say, or questioning the examiner, simply
put forth a detailed, cogent 102/103 argument. This will
usually win the day, or at worst, reframe the issues in your
favor.
I can’t emphasize enough that you should discuss how
your invention, as claimed, distinguishes over—that is, has
novel physical features not shown in—the reference, not
how the reference differs from your invention, and not, at
this stage, why your invention is better than the reference.
Remember that under Section 112, a means plus a function
is considered a physical recitation.
The following jingle may help you remember this
important rule:
“Never argue what’s not in your claim
You’ll miss the mark and may lose the game.”
Also be logical in your arguments. For example, if you’re
claiming B and a reference shows A and B, don’t argue
that A is no good. Also, don’t argue that a reference should
be taken lightly—that is, it’s a “paper patent,” because its
invention was never put into commercial use—unless you’re
absolutely sure of your facts and the reference isn’t a dead
ringer for your invention.
d. Refute Any Improper Combination of References
If a combination of several references has been cited
against your claim, first state why the combination cannot
properly be made and then discuss your distinctions under
Section 103. MPEP Sections 2142 and 2143 require that, in
order for two references to be combined in a rejection, the
examiner must establish a prima facie (at first sight) case
for unobviousness. Below are relevant excerpts from MPEP
2142:
“The legal concept of prima facie obviousness is a
procedural tool of examination which applies broadly
to all arts. It allocates who has the burden of going
forward with production of evidence in each step of the
examination process.”
To reach a proper determination under 35 USC Section
103, the examiner must step backward in time and into the
shoes worn by the hypothetical “person of ordinary skill in
the art” when the invention was unknown and just before it
was made. In view of all factual information, the examiner
must then make a determination whether the claimed
invention “as a whole” would have been obvious at that
time to that person. Knowledge of applicant’s disclosure
must be put aside in reaching this determination, yet kept
in mind in order to determine the “differences,” conduct
the search, and evaluate the “subject matter as a whole” of
the invention. The tendency to resort to “hindsight” based
upon applicant’s disclosure is often difficult to avoid due
to the very nature of the examination process. However,
impermissible hindsight must be avoided and the legal
conclusion must be reached on the basis of the facts gleaned
from the prior art.
“The key to supporting any rejection under 35 U.S.C. 103
is the clear articulation of the reason(s) why the claimed
invention would have been obvious. The Supreme Court
in KSR International Co. v. Teleflex Inc., 550 U.S. 39,
82USPQ2d 1385, 1396 (2007) noted that the analysis
supporting a rejection under 35 U.S.C. 103 should
be made explicit. The Federal Circuit has stated that
‘rejections on obviousness cannot be sustained with
mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.’
“The teaching or suggestion to make the claimed
combination and the reasonable expectation of success
must both be found in the prior art, and in applicant’s
disclosure.”
If you feel that the examiner has not set forth a prima
facie case, make your case tactfully. For example, “Applicant
submits that the rejection of claim 1 on Jones and Smith
does not set forth a prima facie case of obviousness, as
required by MPEP 2142. This section requires that there
must be a clear articulation of the reason(s) why the claimed
invention would have been obvious. Applicant submits
that the rejection does not meet this requirement because
the rejection gives a mere conclusory statement that the
combination would be obvious. Note that neither Smith nor
Jones suggests such a combination, and one skilled in the art
would have no reason to make such a combination. That is,
the fact that Smith shows a specific lever does not suggest that
his lever can be used with Jones’s pedal mechanism, especially
since Jones shows his own workable lever. Further the
references are from a different field than that of applicant’s
invention [explain why] and/or they are not directed to
solving the same problem as applicant’s invention solves
[explain why].