PATENT BAR REVIEW OUTLINE : Nonobviousness; §103

Nonobviousness; §103

1. Most common §103 rejection: §103(a)
   1. Prior art under §103
      1. All §102 events MPEP2141.01
      2. Admissions made by the applicant MPEP2129
         1. Labeling drawing as prior art even though the subject is not prior art
         2. Written admission during prosecution even when later recanted
         3. Jepson-type claim’s preamble: implied prior art, but may be overcome
   2. Factual inquiries to determine the obviousness of the subject matter as a whole.  The four Graham factors are: MPEP2141
      1. Determine the scope and content of the prior art
      2. Ascertain the differences between the prior art and the current claim
      3. Resolve the level of PHOSITA in the pertinent art
      4. Evaluate secondary considerations – objective indicia of unobviousness
         1. Commercial success
         2. Long felt but unresolved needs
         3. Recognition of problem solved
         4. Failure of others to solve the problem
         5. Competitor’s prompt copying
         6. Licensing of patent to industry
         7. Teaching away from prior art
         8. Unexpected results
         9. Disbelief and incredulity of others
   3. Typical §103 rejections
      1. Combining references: claim is rejected under §103 over Reference A in view of Reference B
      2. Modifying a reference: claim is rejected under §103 over Reference A because it is well known in the art and therefore obvious to make the modification recited in the claim.
         1. Examiner asserts “well known” or “common knowledge” in the art: applicant may challenge and examiner must respond with reference for support
         2. Examiner asserts personal knowledge: applicant may challenge and examiner must respond with affidavit for support
   4. Prima facie obviousness; MPEP2142
      1. Purpose for establishing prima facie upon §103 rejection: to protect against using hindsight when the applicant discloses his invention; only facts from prior art may be used (no hindsight).
      2. Prima facie obviousness is established when: PHOSITA combine or modify prior art teachings to produce current invention, with 3 criteria  listed in the following MPEP2143
         1. First, there must be suggestion or motivation in the prior art itself or in PHOSITA’s knowledge to modify or combine MPEP2142.01
            1. Mere “can be modified or combined” won’t do; must have motivation
            2. Combination or modification cannot destroy the intended function, or change the operation principle of the prior art
            3. Combination or modification cannot teach away from prior art
            4. Applicant’s discovery of the problem or the source of the problem may defeat prima facie obviousness.
         2. Second, there must be reasonable expectation of success MPEP2143.02
            1. There must be reasonable, not absolute degree of predictability.
            2. Predictability is evaluated at the time the invention was made (no hindsight).
         3. Finally, all claim limitations must be taught or suggested by the prior art in order to establish prima facie obviousness (basic idea: current claim reads on prior art).  MPEP2143.03
         4. Important: it is not necessary that the prior art suggest the same advantage or result accomplished by the invention (i.e., prior art may have a different motivation)!  Motivation in the prior art to combine and modify may be implicit!
         5. Modified or combined prior art must be analogous to the current invention: same field as current invention, or pertinent to the current problem addressed
         6. Circumstances supporting an obviousness rejection MPEP2144.04
            1. Changing size, shape, or sequence of adding ingredients
            2. Reversing, duplicating, or rearranging parts
            3. Making portable, integral, separable, adjustable or continuous
            4. Omitting an element and its function
         7. To rely on equivalence as a rationale to support a §103 obviousness rejection, the equivalents must be recognized in the prior art, and cannot be based on applicant’s disclosure or the mere fact that the components at issue are equivalents.
      3. Procedure of PTO prima facie obviousness rejection:
         1. Examiner bears the initial burden to factually support the prima facie obviousness rejection.
         2. If the examiner fails to produce a prima facie case, applicant may ignore.
         3. If the examiner succeeds in producing a prima facie case, then the burden shifts to the applicant.
         4. Applicant may counter the prima facie obviousness rejection by submitting additional evidence, such as commercial success, unexpected result, etc. (see Graham factors: objective indicia)
      4. Rebutting a prima facie obviousness rejection: uses secondary, objective indicia; must be based on facts; argument alone will not suffice
         1. Commercial success MPEP716.03: must be due to relevant advantages of the invention and not because of promotion or advertising
            1. Increase market share : strong evidence
            2. Increased sales due to relevant advantages of the invention: increased sales alone is insufficient.
            3. Mere conclusory statements or naked opinions are insufficient.
         2. Evidence of unexpected results as compared with prior art
2. §103(b) rejection: biotechnology process
   1. Never relied on in practice because Federal Circuit overruled it.
   2. A known process that makes novel product(s): the process is patentable under §103(b) but was overruled in court.
   3. A known process that uses novel material(s): the process is patentable under §103(b) but was overruled in court.
3. §103(c) rejection: to foster team/joint invention
   1. For applications filed on or after 1999-11-29 (post-AIPA)
   2. Reference subject matter developed by another, that qualifies as prior art only under §102(e),(f),(g) [secret prior art, interference, derivation] shall not preclude patentability under obviousness rejection if at the time of the invention:
      1. The invention was owned by or assigned to the same entity
      2. Inventors were under joint research agreement and were disclosed as such
4. Noted points
   1. Claim interpretation (for §102 and §103 rejections)
      1. During examination, claims are given their broadest reasonable interpretation in light of the specification, so that they may read on by prior art.  MPEP2111
         1. Reading a claim in light of the specification is not the same as reading the limitations of the specification into the claim.
      2. Claim terminology is interpreted by PHOSITA, unless otherwise defined in specification.  MPEP2111.01
      3. Limitations not recited in a claim must not be imported into a claim, unless in a mean-plus-function claim.
      4. Preamble is generally not limiting, unless
         1. In a Jepson-type claim
         2. Essential to understanding the claim
         3. Argued during prosecution to distinguish from prior art
   2. Emphasis: It is not necessary that the prior art
      1. Suggest the same advantage or result as accomplished by the current invention.  MPEP2144
      2. Expressly suggest the modification or combination; implicit suggestion is allowed.  MPEP2144.01
   3. Non-enabling reference may qualify as §103(a) prior art, but non-enabling reference may not qualify as §102 prior art: obviousness (§103) and anticipation (§102) are different issues.