federal register - U.S. Government Printing Office

6220 Federal Register / Vol. 62, No. 28 / Tuesday, February 11, 1997 / Noticesby others. 53 It may also includeevidence of the state of the art, the levelof skill in the art, and the beliefs ofthose skilled in the art. 54Consideration of rebuttal evidenceand arguments requires Office personnelto weigh the proffered evidence andarguments. Office personnel shouldavoid giving evidence no weight, exceptin rare circumstances. 55 However, to beentitled to substantial weight theapplicant should establish a nexusbetween the rebuttal evidence and theclaimed invention, 56 i.e., objectiveevidence of nonobviousness must beattributable to the claimed invention. 57Additionally, the evidence must bereasonably commensurate in scope withthe claimed invention. 58 However, anexemplary showing may be sufficient toestablish a reasonable correlationbetween the showing and the entirescope of the claim, when viewed by askilled artisan. 59 On the other hand,evidence of an unexpected propertymay not be sufficient regardless of thescope of the showing. 60 Accordingly,each case should be evaluatedindividually based on the totality of thecircumstances.Office personnel should not evaluaterebuttal evidence for its ‘‘knockdown’’value against the prima facie cases 61 orsummarily dismiss it as not compellingor insufficient. If the evidence isdeemed insufficient to rebut the primafacie case of obviousness, Officepersonnel should specifically set forththe facts and reasoning that justify thisconclusion.III. Reconsider All Evidence andClearly Communicate Findings andConclusionsA determination under 35 U.S.C. 103should rest on all the evidence andshould not be influenced by any earlierconclusion. 62 Thus, once the applicanthas presented rebuttal evidence, Officepersonnel should reconsider any initialobviousness determination in view ofthe entire record. 63 All the proposedrejections and their bases should bereviewed to confirm their correctness.Only then should any rejection beimposed in an Office action. The Officeaction should clearly communicate theOffice’s findings and conclusions,articulating how the conclusions aresupported by the findings.Where applicable, the findings shouldclearly articulate which portions of thereference support any rejection. Explicitfindings on motivation or suggestion toselect the claimed invention should alsobe articulated in order to support a 35U.S.C. 103 ground of rejection. 64Conclusory statements of similarity ormotivation, without any articulatedrationale or evidentiary support, do notconstitute sufficient factual findings.VI. Footnotes1. When evaluating the scope of a claim,every limitation in the claim must beconsidered. E.g., In re Ochiai, 71 F.3d 1565,1572, 37 USPQ2d 1127, 1133 (Fed. Cir.1995). However, the claimed invention maynot be dissected into discrete elements to beanalyzed in isolation, but must be consideredas a whole. E.g., W.L. Gore & Assoc., Inc. v.Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ303, 309 (Fed. Cir. 1983), cert. denied, 469U.S. 851 (1984); Jones v. Hardy, 727 F.2d1524, 1530, 220 USPQ 1021, 1026 (Fed. Cir.1983) (‘‘treating the advantage as theinvention disregards the statutoryrequirement that the invention be viewed ‘asa whole’ ’’).2. Both claimed and unclaimed aspects ofthe invention should be searched if there isa reasonable expectation that the unclaimedaspects may be later claimed.3. ‘‘The section 103 requirement ofunobviousness is no different in chemicalcases than with respect to other categories ofpatentable inventions.’’ In re Papesch, 315F.2d 381, 385, 137 USPQ 43, 47 (CCPA 1963).4. E.g., In re Dillon, 919 F.2d 688, 692–93,16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (inbanc), cert. denied, 500 U.S. 904 (1991).5. E.g., In re Brouwer, 77 F.3d 422, 425, 37USPQ2d 1663, 1666 (Fed. Cir. 1996); In reOchiai, 71 F.3d 1565, 1572, 37 USPQ2d 1127,1133 (Fed. Cir. 1995); In re Baird, 16 F.3d380, 382, 29 USPQ2d 1550, 1552 (Fed. Cir.1994).6. In re Baird, 16 F.3d 380, 382, 29USPQ2d 1550, 1552 (Fed. Cir. 1994) (‘‘Thefact that a claimed compound may beencompassed by a disclosed generic formuladoes not by itself render that compoundobvious.’’); In re Jones, 958 F.2d 347, 350, 21USPQ2d 1941, 1943 (Fed. Cir. 1992) (FederalCircuit has ‘‘decline[d] to extract from Merck(& Co. v. Biocraft Laboratories Inc., 874 F.2d804, 10 USPQ2d 1843 (Fed. Cir. 1989)) therule that * * * regardless of how broad, adisclosure of a chemical genus rendersobvious any species that happens to fallwithin it.’’). See also In re Deuel, 51 F.3d1552, 1559, 34 USPQ2d 1210, 1215 (Fed. Cir.1995).7. E.g., In re Bell, 991 F.2d 781, 783, 26USPQ2d 1529, 1531 (Fed. Cir. 1993) (‘‘ThePTO bears the burden of establishing a caseof prima facie obviousness.’’); In re Rijckaert,9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956(Fed. Cir. 1993); In re Oetiker, 977 F.2d 1443,1445, 24 USPQ2d 1443, 1444 (Fed. Cir.1992).Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966), requires that to make out a caseof obviousness, one must: (1) Determine thescope and contents of the prior art; (2)ascertain the differences between the priorart and the claims in issue; (3) determine thelevel of skill in the pertinent art; and (4)evaluate any evidence of secondaryconsiderations.8. E.g., Bell, 991 F.2d at 783–84, 26USPQ2d at 1531; Rijckaert, 9 F.3d at 1532,28 USPQ2d at 1956; Oetiker, 977 F.2d at1445, 24 USPQ2d at 1444.9. Id.10. E.g., In re Brouwer, 77 F.3d 422, 425,37 USPQ2d 1663, 1666 (Fed. Cir. 1996)(‘‘[T]he mere possibility that one of the estersor the active methylene group-containingcompounds * * * could be modified orreplaced such that its use would lead to thespecific sulfoalkylated resin recited in claim8 does not make the process recited in claim8 obvious ‘unless the prior art suggested thedesirability of [such a] modification’ orreplacement.’’) (quoting In re Gordon, 733F.2d 900, 902, 221 USPQ 1125, 1127 (Fed.Cir. 1984); In re Vaeck, 947 F.2d 488, 493, 20USPQ2d 1438, 1442 (Fed. Cir. 1991) (‘‘[A]proper analysis under section 103 requires,inter alia, consideration of * * * whether theprior art would have suggested to those ofordinary skill in the art that they shouldmake the claimed composition or device, orcarry out the claimed process.’’).11. The prior art disclosure may beexpress, implicit, or inherent. Regardless ofthe type of disclosure, the prior art mustprovide some motivation to one of ordinaryskill in the art to make the claimed inventionin order to support a conclusion ofobviousness. E.g., Vaeck, 947 F.2d at 493, 20USPQ2d at 1442 (A proper obviousnessanalysis requires consideration of ‘‘whetherthe prior art would also have revealed thatin so making or carrying out (the claimedinvention), those of ordinary skill wouldhave a reasonable expectation of success.’’);In re Dow Chemical Co., 837 F.2d 469, 473,5 USPQ2d 1529, 1531 (Fed. Cir. 1988) (‘‘Theconsistent criterion for determination ofobviousness is whether the prior art wouldhave suggested to one of ordinary skill in theart that this process should be carried outand would have a reasonable likelihood ofsuccess, viewed in the light of the priorart.’’); Hodosh v. Block Drug Co., 786 F.2d1136, 1143 n. 5, 229 USPQ 182, 187 n. 5(Fed. Cir.), cert. denied, 479 U.S. 827 (1986).12. When evidence of secondaryconsiderations such as unexpected results isinitially before the Office, for example, in thespecification, that evidence should beconsidered in deciding whether there is aprima facie case of obviousness. Thedetermination as to whether a prima facieexists should be made on the full recordbefore the Office at the time of thedetermination.13. Graham v. John Deere, 383 U.S. 1, 17,148 USPQ 459, 467 (1966). Accord, e.g., Inre Paulsen, 30 F.3d 1475, 1482, 31 USPQ2d1671, 1676 (Fed. Cir. 1994).14. E.g., Panduit Corp. v. Dennison Mfg.Co., 810 F.2d 1561, 1568, 1 USPQ2d 1593,1597 (Fed. Cir.) (‘‘Before answering Graham’s‘content’ inquiry, it must be known whethera patent or publication is in the prior artunder 35 U.S.C. § 102.’’), cert. denied, 481U.S. 1052 (1987).15. In re Oetiker, 977 F.2d 1443, 1447, 24USPQ2d 1443, 1445 (Fed. Cir. 1992). Accord,e.g., In re Clay, 966 F.2d 656, 658–59, 23USPQ2d 1058, 1060 (Fed. Cir. 1992).16. In Stratoflex, Inc. v. Aeroquip Corp.,713 F.2d 1530, 1537, 218 USPQ 871, 877(Fed. Cir. 1983), the Court noted that ‘‘thequestion under 35 U.S.C. 103 is not whetherthe differences [between the claimedinvention and the prior art] would have beenobvious’’ but ‘‘whether the claimed invention