Inspiring Arguments to Overcome Design Choice Rejections in the Mechanical Arts

mechanica gear assembly

“Effective ways to overcome obviousness rejections in the domain of ‘Thermal & Combustion Technology, Motive & Fluid Power Systems’ – AU 3740”

mechanica gear assembly

Mechanical and electromechanical inventions often receive obviousness rejections due to their very nature. These inventions commonly use well-known components. The inventive spark usually comes from combining them in new ways or using them to perform novel functions.

Design choice” is one rationale available to examiners when rejecting an application under § 103. Examiners might be tempted to use the design choice rationale because it seems broadly applicable. But when examiners rely on design choice, they pen themselves into a specific legal test. Understanding these requirements can help applicants develop effective strategies for getting past design choice rejections.

Keep reading to discover three examples of how this rejection has been successfully overcome:

Find the “Why” of the Invention

Office action responses to obviousness rejections typically rely on facts. One of the most important facts for responding to an obviousness rejection is the reason for the invention.

The design choice rationale only applies where the claimed limitation performs the same function and solves the same problem as the prior art. In contrast, if the claimed device performs a purpose not served by the prior art device, the examiner cannot rely on the design choice rationale as a basis for rejection.

This strategy was used in prosecuting U.S. Patent Application Serial No. 15/275,446 for a fuel flow detection method for a spark-ignition engine.

The closest prior art found by the examiner disclosed a fuel flow meter for a diesel engine. Examiner Solis issued an obviousness rejection, stating that it was a matter of design choice to apply the teachings of the diesel fuel flow meter to a spark-ignition fuel flow meter.

Attorney Michael Fluhler argued that the “design choice” rationale was not applicable in this case:

[T]he Office Action’s reliance on so-called design choice is entirely inappropriate as the pending application describes advantages associated therewith, e.g., “more accurate air-fuel ratio information” and “an accurate fuel flow can be obtained without causing an error, even when there is a change in fuel composition” (paragraph 17). (See Ex Parte Rohrer, Appeal No. 2009-001292, February 5, 2010, stating that “[i]f the recitation provides some advantage or serves some purpose, then using ‘design choice’ as grounds of rejection is inappropriate” (citing Ex parte Clapp, 227 USPQ 972, 973 (BPAI 1985).

Importantly, the applicant did not need to argue that the method for achieving these advantages was patentable. Rather, the applicant overcame the “design choice” rationale simply by pointing out that the invention achieved these advantages over the prior art.

Reasoning is a Must-Have

In every obviousness rejection, KSR v. Teleflex requires the examiner to provide some rationale to connect the prior art to the claimed invention. This may take the form of a teaching, suggestion, or motivation found in the prior art. KSR also opened the door to other rationales based on scientific, engineering, or business knowledge.

KSR explicitly ruled out speculation by the examiner. Specifically, examiners cannot rely on “conclusory statements” to support an obviousness rejection. Instead, the examiner must provide “articulated reasoning with some rational underpinning” to support the rejection.

Cantor Colburn attorney, David Fox, successfully argued this point in prosecuting an application claiming a screw compressor having a oil separator and water chilling unit. The application had been rejected based on Examiner Trieu’s contention that because the two kinds of oil separators described in the invention were known, combining the oil separators was merely a matter of design choice.

In response, the applicant pointed out that the examiner failed to provide any reasoning to support the rejection.

In the present case, the Office Action fails to provide a convincing line of reasoning as to why one of ordinary skill in the art would have found the claimed feature to have been obvious. The Office Action attempts to shift the burden to Applicant to indicate how the two different oil separators are used for a particular purpose or solve a problem. Applicant notes that this specification refers to several advantages of using a cyclone separator and a filter-type oil separator. The specification details at least a size advantage and separation advantages, as described in the specification. As such, claim 1 is not a mere “design choice” but rather is non-obvious in view of Yamazaki.

Significantly, this argument does not depend on the specific facts of the case. Rather, it can be applied wherever an examiner rejects a claim without providing the reasoning that connects the prior art to the claimed invention. Without this reasoning, applicants cannot respond and the BPAI and the courts cannot review the examiner’s work. The strategy proved effective, and the application went on to issue as U.S. Patent No. 10,288,068,

Similarly, in the application for the fuel flow detection method discussed above, the examiner rejected the claims based on the examiner’s belief that a prior art fuel flow sensing method used in a diesel engine was “obviously” adaptable to a spark-ignition engine. In response, the applicant pointed out that the examiner’s opinion that the method was adaptable to a different kind of engine did not provide “evidentiary support and sound scientific and technical reasoning” to support the rejection.

Here as well, by insisting on explicit reasoning beyond the examiner’s intuitive sense of the invention and prior art, the applicant was able to prompt the examiner to withdraw the rejection.

Put the Ball in the Examiner’s Court

The previous two cases suggest that an effective strategy for dealing with an obviousness rejection based on the “design choice” rationale is to identify any shortcomings in the examiner’s process. In cases, where design choice has been superficially applied, the examiner may well find that they do not have enough support to persist in the rejection.

This strategy was successfully employed by attorney, Jessica Flores,  in prosecuting an application related to a gearbox for an internal combustion engine that varied the compression ratio of the engine in response to an actuator.

This application was rejected based on a gearbox with some, but not all, of the claimed features. Examiner Grant then shifted the burden to the applicant, stating that the applicant failed to state whether the invention “solves any stated problem or is for any particular purpose.” The examiner concluded that “it appears that the invention would perform equally well with optimized values of the aforementioned five design features.”

The applicant responded by outlining multiple places in the specification where the claimed features provided an advantage or function not found in the prior art. The applicant put the ball back in the examiner’s court by pointing out that the examiner had failed to support the “design choice” rationale, and additionally relied “improperly on hindsight, using Applicant’s own specification to arrive at the claimed invention. See M.P.E.P. 2142.”  The applicant ultimately challenged the examiner to make a prima facie case of obviousness without relying on the rationale. Instead of looking for support, the examiner withdrew the rejection and the application went on to issue as U.S. Patent No. 10,400,667.

Insist on Substance

If there is one takeaway from these cases, it is to make sure your examiner has fulfilled the legal test to apply the design choice rationale. If the examiner has failed to show that the invention provides no new benefits or functions, or to provide a convincing line of reasoning for the combination of prior art features, you can respond by pointing out the deficiency.

This shifts the burden back to the examiner to present a prima facie case of obviousness. Without the design choice rationale, the examiner might withdraw the rejection and allow the case to issue.


These cases were found using the Arguminer software, a powerful engine that puts the Patent Office’s database at your fingertips, and allows you to search for granular details like rejection type and outcome.

To learn more about the Arguminer software, contact IP Toolworks to schedule a demo.

Inspiring Arguments to Overcome Design Choice Rejections on Chemical Apparatus Inventions

“AU 1770 - Chemical Apparatus, Separation and Purification, Liquid and Gas Contact Apparatus”

Group Art Unit 1770 handles applications for chemical apparatus. As such, this unit typically deals with claims regarding mechanical devices whose functions and outputs are chemical.

Examiners use a fairly simple logic process when rejecting mechanical and chemical cases for obviousness: if every mechanical part (or chemical component) of a device is already known, combining them is simply a matter of design choice.

Making a case of obviousness prima facie, however, requires more. Here are some inspiring arguments for overcoming design choice rejections from the chemical apparatus unit:

Be on the Lookout for Impermissible Hindsight

“Impermissible hindsight” is a go-to phrase patent lawyers use to rebut obviousness rejections. But what is the proper use of an “impermissible hindsight” argument?

You might argue “impermissible hindsight” in response to a design choice rejection if, for example, the examiner has claimed obviousness based on two prior but hitherto-unrelated art references (A & B). If Reference A shows parts X and Y while Reference B indicates that part Z produces desirable effect Q and your application claims that parts X, Y, and Z together produce desirable effect R (analogous to but distinct from Q), the examiner may reject your application, claiming that assembling parts X, Y, and Z in order to produce  is simply a matter of design choice.

However, in arriving at this conclusion, the examiner has overlooked a key component of obviousness: If your client’s application is the only reference explaining that X, Y, and Z produce R and the examiner’s only rationale comes from your specification the rejection presumes impermissible hindsight.

This argument worked effectively in overcoming an obviousness rejection on an application for a fuel processor producing a mixture of propylene glycol and water. The fuel processor included an alternating stack of evaporator plates and hot gas plates configured so that the unheated side of each hot gas plate always shields the heated side from facing an evaporator surface.

Examiner Young rejected the claim as obvious based on a reference showing a fuel processor with stacked plates. She asserted that the specific configuration of alternating plates was simply a matter of design choice.

Attorney Frank Digiglio, from the law firm Scully Scott Murphy & Presser PC, pointed out that the examiner had found no reference which disclosed or suggested the desirability of the arrangement of plates taught in the claimed invention.

 U.S. Patent No. 10,926,239

Applicant respectfully submits that employing hindsight using Applicant’s disclosure as a blueprint to reconstruct the claimed invention from the teachings of the prior art is impermissible under the law. Grain Processing Corp. v. American Maize-Products Co., 840 F.2d 902, 907 (Fed. Cir. 1988); see also W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1552, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 854 (1984) (“To imbue one of ordinary skill in the art with knowledge of the invention when no prior art reference or references of record convey or suggest that knowledge, is to fall victim to the insidious effect of a hindsight syndrome wherein that which only the inventor taught is used against its teacher”). Thus, Applicant submits that the Examiner has failed to establish two design choices…

Gore is particularly helpful when arguing against hindsight. As the court stated in Gore, “[i]t is difficult but necessary that the decisionmaker forget what he or she has been taught … about the claimed invention and cast the mind back to the time the invention was made (often as here many years), to occupy the mind of one skilled in the art who is presented only with the references, and who is normally guided by the then-accepted wisdom in the art.”

In this case, the examiner had found no reference conveying the desirability or equivalent functionality of configuring the plates as claimed. The applicant was able to overcome the rejection by pointing out that the examiner had inappropriately used the applicant’s own teachings against them, and the application went on to issue as  U.S. Patent No. 10,926,239

The takeaway from this case is that, while there may be something fundamentally human about understanding actions of the past through the lens of the present, examiners have a special responsibility to keep this hindsight in check when evaluating an invention’s obviousness. You can help move prosecution in a positive direction by pointing out when “impermissible hindsight” has crept into the examiners’ design choice rejections.

Design Choices Must be Choices Made Among Equals

Another requirement for design choice rejections is that the prior art and the claimed elements must perform equivalent functions and produce equivalent results. In other words, when the examiner asserts “design choice,” the choice between the prior art and the claimed invention must be nothing more than a substitution.

This makes sense. If two assemblies are known to perform the same function and to produce the same results, changing one for the other may be considered an obvious choice. However, many rejections skip this step, broadening obviousness beyond its intended scope.

Attorney Scott Baum, one of 3M’s in-house patent lawyers, used this argument in overcoming an obviousness rejection when he secured U.S. Patent No. 9,962,629. This invention was a degassing module for removing entrained or dissolved gasses from a high-pressure liquid. The module included an outer housing, an inner shell, and a shim between the housing and the shell between two seals.

Examiner Patel found two references that together described a housing, a shell, and a pair of seals as claimed. Although neither reference included incorporating a support shim, the examiner concluded that one of ordinary skill in the art might add a shim between the housing seal and the shell seal as a simple matter of design choice.

In response, the applicant argued that the examiner had failed to meet the standard for a design choice rejection. To begin with, much like our previous example, the examiner had exercised impermissible hindsight in interpreting the prior art’s proximity to the claimed invention: 

The Office asserts that Taylor and Boye are analogous inventions and that it would be obvious at the time of the invention to modify Taylor with the teachings of Boyle to provide at least one support shim between the housing and the shell to provide a sealing arrangement between the housing and the shell. … The Office’s error is Boyle does not disclose a support shim as alleged by the Office. Only by reading and understanding the Applicant’s problem and using impermissible hindsight can the office equate the inner sealing ring of Boye to Applicant’s claimed support shim.

This led to the second oversight by the Office: the prior art did not show a feature that performed an equivalent function or produced an equivalent result.

Applicants have discovered the source of a problem and seek to eliminate movement of the inner housing near the seal by use of a support shim. This prevents the shell potting interface from delaminating under high pressure. Boyle seeks to allow the inner housing to deflect and does not want a support shim to limit deflection so Boye uses an O-ring that slides on the surface of a collar to form the seal. … Thus, one of skill in the art would not substitute the inferior sealing method of Boyle designed for moving surfaces into Taylor whose cartridge sealing surfaces are not designed to move. … [I]n In re Gal, 980 F.2d 717, 719 (Fed Cir 1992), the CAFC has ruled that where the structure cited in the claim (shim) and the function it performs (limiting deflection and reducing stress concentration in the shell/potting interface) is different from the structure in the prior art (a sealing surface) and the function it performs (sealing with a mating O-ring) then rejecting the claim as a matter of design choice is not a sufficient rationale to substantiate obviousness.

In re Gal is very helpful in fighting design choice rejections. It clearly sets out the requirement that the alternative found by the examiner in the prior art provide a structure and function equivalent to the claimed elements. If it does not, it cannot be considered interchangeable with the claimed invention.

KSR’s Rationale Requirement to Overcome Obviousness

When the U.S. Supreme Court decided KSR Int’l Co. v. Teleflex Inc., many patent practitioners viewed it as negative for inventors. However, KSR does have helpful language that patent prosecutors can use to overcome design choice rejections.

Under KSR, the examiner must provide an explicit analysis of “an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Although KSR expanded the potential sources of this “apparent reason” beyond the teachings, suggestions, and motivations in the prior art, the decision made clear that the examiner must still identify and explain the reason to support a prima facie case of obviousness.

While prosecuting an application directed to an air cleaner, patent attorney, Franco Serafini, from Themis Law, successfully argued this point. The application taught a device for removing airborne pollutants using a configuration of front and rear filters, combined with ionizer and collector grids suspended in a frame, by isolating members, for the purpose of reducing sound and coronal discharge generated by the grids. U.S. Patent No. 10,518,272

Examiner Jones rejected the claims based on two Japanese publications that showed ionizing air cleaners with ionizers and collectors in a frame. The examiner then asserted that suspending the grids within the frame was merely a design choice.

The applicant responded, first by emphasizing the functional difference between the separate and isolated grids described in the claimed invention and the molded frames, integral with grids, taught in the prior art. Because the applicant had provided for these differences in function, it was left to the examiner to offer rationale as to why someone would modify the frame molded around the grids in the references to suspend the grids as claimed. The response then turned to KSR to emphasize that the requirement that the examiner rationale as to why someone would modify the frame molded around the grids in the references to suspend the grids as claimed

In Maeda, the PTAB stated “Per se rules for determining obviousness are disfavored. In re Ochiai, 71 F.3d 1565  1571 (Fed. Cir. 1995). […] We discourage examiners from relying on ‘design choice’ because it is generally a mere conclusion, which is no substitute for obviousness reasoning based on factual evidence. Nonetheless, ‘design choice’ may be appropriate where the applicant fails to set forth any reasons why the differences between the claimed invention and the prior art would result in a different function or give unexpected results. See In re Chu, 66 F.3d 292, 298-99 (Fed. Cir. 1995).” Here, the Office Action has provided no rational underpinning to support the allegation of design choice, as required by KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (cited in Maeda), nor any factual evidence. Moreover, as discussed above, Applicant has set forth reasons why using an elastic insulating material would provide a different function than in the prior art (reducing audible noise).

The takeaway from this case is that you can use KSR to push examiners to explain the rationale behind their rejection. There is a good chance the examiners may find that their logic does not stand up to scrutiny when written down, prompting them to allow the case.

Design Choice in Art Unit 1770

It is not surprising to see design choice given as grounds for an obviousness rejection in art unit 1770. Mechanical inventions often use conventional structures. But by focusing on the legal requirements for a design choice rejection, including equivalence in function and an explicit reason for the combination or modification, you you have a strong shot at overcoming these rejections.

These are just a few of the ways you can respond to an obviousness rejection based on the “design choice” rationale.

These cases were retrieved using Arguminer, a tool for finding specific issues for specific types of cases, art units, or examiners. You can find cases to help you prepare your next response using the Arguminer software. Contact IP Toolworks  for a demo of this powerful product.

Disclaimer – “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”

Don’t trust the MPEP, Exhibit 2144.04(VI)(C): Rearrangement of Parts

The position that you should cite to the MPEP rather than case law is widespread among patent prosecutors. For example, in A Case for Citing to the Manual of Patent Examining Procedure, Patentably Defined argued that from a practical perspective, you were more likely to make headway with MPEP citations rather than relying on case law. He may be right, but it’s important to recognize that the MPEP is a tool (moreover a tool designed with examiners, not prosecutors in mind, as I’ve discussed previously). It’s important to keep in mind that using the MPEP to get a desired result is different from trusting the MPEP as an accurate guide to the law.

As an example of the pitfalls of trusting the MPEP, consider MPEP 2144.04(VI)(C). That section is part of the MPEP’s treatment of legal precedent as a supporting rationale for obviousness, and purports to specifically address the obviousness of a “rearrangement of parts.” In practice this section is often treated as a substitute for providing a reasoned explanation for why a particular configuration of parts would have been obvious at the time an invention was made. Indeed, the first case cited in that section – In re Japikse, 181 F.2d 1019 (CCPA 1950) – has become something of a panacea, allowing an examiner to treat claims as prima facie obvious as long as the claim’s components are found individually in the prior art.

            The problem with MPEP 2144.04(VI)(C) is that the proposition a “rearrangement of parts” can be treated as obvious as a matter of legal precedent is simply wrong. Instead, to establish a prima facie case of obviousness based on a combination of elements in the prior art, the law requires a motivation to select the references and to combine them in the particular claimed manner to reach the claimed invention” Eli Lilly v. Zenith Goldline Pharm., 471 F.3d 1369, 1380 (Fed. Cir. 2006) (emphasis added). Further Japikse, rather than being properly citable to establish that it is obvious to obtain a claimed invention by rearranging elements, should never be cited by anyone, ever, for any proposition related to obviousness. This is because, in addition to being inconsistent with cases like Eli Lilly, Japikse predates the 1952 patent act when obviousness (as opposed to the superseded standard “lack of invention”) was introduced into the law. The date on that case should be/should have been a red flag that the proposition it was being cited for may not be good law. However, when the MPEP is treated as a source of truth rather than a tool which can be applied as needed, red flags can fall by the wayside, and ludicrously incorrect propositions can take the place of established principles of obviousness.

            All this isn’t to say that the arguments in favor of the MPEP are invalid. For example, as noted in the Patentably Defined article, it’s safer and faster for an Examiner to allow a case based on an argument supported by the MPEP than to do so based on external caselaw cited by an attorney, and so staying within he bounds of the MPEP can have some concrete benefits. However, it is important to recognize that the bounds of the MPEP are not coextensive with the limits of the law, and if a patent prosecutor treats the MPEP as gospel, he or she may inadvertently turning their back on a path which could get their client to a better outcome in the end.


Disclaimer – “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”

Why Innovative Features Don’t Overcome the Prior Art

Having an examiner treat a feature which is absent from the cited art as insufficient to establish patentability can be a serious setback during patent prosecution. If the applicant amends the claim to address whatever issue was raised by the examiner (e.g., adding concreteness to claim language which the examiner stated didn’t actually require the feature due to the broadest reasonable interpretation rule), the result is that they will have spent a rejection/response cycle (and maybe even an RCE) to get where they would have been originally if the feature had simply been compared to the prior art. Alternatively, if the applicant stands firm and argues that the examiner was wrong to treat the feature as insufficient to establish patentability, they are setting themselves up for an appeal of what may have been an easy allowance if whatever reason the examiner gave for treating the feature as insufficient had been addressed or avoided. In either case, dealing with arguments about why a feature which isn’t part of the prior art should or shouldn’t be sufficient for patentability increases costs, delays prosecution, and may also reduce the ultimate scope of protection as a result of amendment or argument-based estoppels.

To determine how to anticipate and avoid these issues, I did a study identifying the reasons examiners used most often when arguing that features which are absent from the cited art aren’t sufficient to establish patentability. In this study, I examined recent (i.e., from 2019-2022) obviousness rejections from the database which powers IP Toolworks’ Arguminer software. I used natural language processing and clustering software to identify keywords and n-grams that were cited repeatedly by examiners in their rejections. I then manually correlated the most common keywords, n-grams and citations with specific doctrines used to treat features as insufficient to establish patentability, such as intended use or nonfunctional descriptive material. Finally, I applied these correlations on a technology center by technology center basis, so that the study could identify whether, and how, the doctrines by examiners differed between types of innovation.  

The study showed that drafting claims to reduce the risk that a feature which is absent from the prior art will be treated as insufficient to establish patentability requires a flexible approach which accounts for different doctrines which are likely to be applied during examination of different inventions. For example, while the most common argument overall for why a feature which was absent from the cited art wasn’t sufficient to establish patentability was that the feature was merely a recitation of intended use. However, for chemical inventions, the most common reason for treating a feature which was absent from the cited art as insufficient to establish patentability was that it was simply a matter of routine optimization. Similarly, while the argument that a limitation should not be given patentable weight because it recited nonfunctional descriptive material wasn’t in the top ten arguments overall, it was the third most commonly used argument for inventions in technology center 3600 (Transportation, Electronic Commerce, Construction, Agriculture, Licensing and Review). The most common doctrines used to treat features that are absent from the cited art as insufficient to establish patentability, and how those differed from technology center to technology center, are shown below:


Technology Center

Top Argument

Second Argument

Third Argument

1600 (Biotechnology and Organic)

Routine Optimization

Intended Use

Obvious to Try

1700 (Chemical and Materials Engineering)

Intended Use

Routine Optimization

Known Suitability for Purpose

2100 (Computer Architecture Software and Information Security)

Broadest Reasonable Interpretation

Intended Use

Obvious to Try

2400 (Computer Networks, Multiplex, Cable and Cryptography/Security)

Broadest Reasonable Interpretation

Intended Use

Obvious to Try

2600 (Communications)

Broadest Reasonable Interpretation

Intended Use

Obvious to Try

2800 (Semiconductors, Electrical and Optical Systems and Components)

Intended Use

Routine Optimization

Mere Change of Shape

3600 (Transportation, Electronic Commerce, Construction, Agriculture, Licensing and Review)

Intended Use

Broadest Reasonable Interpretation

Nonfunctional Descriptive Material

3700 (Mechanical Engineering, Manufacturing and Products)

Intended Use

Mere Change of Shape

Obvious to Try


Ultimately, there is no magic bullet to ensure that a feature (assuming it is absent from the cited art) will be sufficient to establish non-obviousness. However, by using data showing both common practices that are broadly applicable across the patent office, as well as idiosyncrasies associated with how the patent office treats particular types of invention, it is possible to identify doctrines which are most likely to be cited in a particular case, so that the claims for that case can be drafted to anticipate those objections and avoid them before they even come up.


Disclaimer – “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”

Getting Out of Autodrive: Arguments to Overcome “Automatic Means to Replace Manual Activity” in Obviousness Rejections

On its surface, the rationale behind “automatic means to replace manual activity” rejections seems to make sense. Simply replacing work done by hand with the same work performed by a machine hardly constitutes a new invention. However, automation is seldom so simple, and in this complexity lies the prospect of patentability. The question is, how do you demonstrate that your client’s invention is more than mere automation?

Keep reading to discover three arguments that have proven successful in overcoming § 103 rejections citing automatic means for replacing manual activity:

First Things First

The elements that underlie an automatic means rejection are straightforward: a manual activity, an automatic means, and a replacement of one for the other. In order to properly present an automatic means rejection, the examiner must be able to point to the manual activity from the prior art that forms its basis. If, however, the manual activity the examiner is alluding to does not exist in the prior art, the claimed activity may be patentable, whether it is performed manually or automated.

For example, suppose your client has an improved manufacturing process. The process uses sensors of varying voltages to monitor an assembly machine. The sensors measure vibration, pressure, and other characteristics. The information from these sensors provides a cheaper assembly process and extends the life of the assembly machine. If these parameters had never before been measured and used to monitor the manufacturing process, they would be patentable, irrespective of whether the sensors were adjusted automatically or required manual intervention. As such, an automatic means rejection would be improper. An examiner cannot recite automatic means for replacing a manual activity if the manual activity being automated does not exist in the prior art.

This was exactly the issue raised by attorney Mark Crockett, from Luedeka Neely Group PC,  while prosecuting an application claiming a sensor interface that connected sensors to an automatic monitoring system. Examiner Norman rejected the application, explaining that the invention merely replaced a manual activity with automatic means of accomplishing the same task.

In response, the applicant argued:

The Office Action invokes In re Venner (120 USPQ 192) to assert that “providing automatic means to replace manual activity which accomplished the same result involves only routine skill in the art.” First, it should be noted that In re Venner does not establish a per se rule regarding obviousness of replacing manual activity with automated means. The Office Action must still show prior art evidence of the “manual activity” that is being automated. In this case, the Office Action does not point to any manual switches connected to positive, negative, and neutral supply voltages in the prior art power supply that are being replaced by the claimed software-controllable switches.

The examiner acknowledged the argument, stating that “the prior art does not teach or suggest the sensor power and conditioning interface, as amended,” and the application went on to issue as U.S. Patent No. 10,175,148.

This case reminds patent practitioners to start at the beginning of the analysis. Ask whether the examiner has in fact found a manual activity within the prior art analogous to the claimed invention. If the examiner has skipped this step, an automatic means rejection is improper.

Improvement Does Not Necessarily Mean Replacement

Replacement of one element for another is requisite to the “automatic means to replace manual activity” rejection. Although no case specifically discusses what replacement means, one can infer that in order for the automatic means to replace the manual activity, it must perform the same functions and solve the same problem.

Consider a scenario in which the automated version of the activity in question performs additional functions or provides solutions not achievable using the manual process. Would the claimed invention still be considered a simple case of replacement? This situation is indeed likely, as automation brings many benefits, including:

  • Speed
  • Efficiency
  • Productivity
  • Accuracy

If any of the above improvements apply to the claimed implementation, it is logically rendered as something more; in other words, a patentable invention.

This argument was presented during the prosecution of an application involving machinery that prepares food using closed ingredient containers. The machine automatically cuts pouches and adds ingredients from the pouches to a recipe without human intervention.

Examiner Triggs rejected the claims asserting that automatically cutting and dispensing ingredients is merely the automation of a manual task. In response, attorney Silvia Salvadori, from Silvia Salvadori P.C.,  argued that:

[T]he presence of the hoppers with a cutting device inside, formed by toothed cutting blades angularly adjustable with teeth facing towards the hopper mouth, allows the preparation of recipes with an efficiency which could not be achieved by any manual operation. … As discussed above, the presence of the cutting blades angularly adjustable and with teeth facing the hopper mouth could not be exchanged by a human operator with the same reasonable expectation of success.

This argument overcame the rejection, and the patent issued as U.S. Patent No. 9,718,040.

This case teaches that replacement usually means that the invention performs the same structures, functions, and results as the manual activity cited as prior art. If your client’s invention adds new functionalities and outcomes, you can argue that it improves on the manual activity rather than replacing it.

Automatic Means is Merely Automation

The automatic means provided by the invention usually replace a human with a machine. When the machine performs something a human cannot do, you can argue that your client has not provided automatic means. Instead, the client has changed the function of the device and created a new invention.

Attorney Jay Franklin, from the law firm, Davis & Bujold,  presented this argument while prosecuting an application for a roller mill with an opening that automatically adjusts based on the pressure sensed in a grinding space and an aspiration space.

The purpose of this invention is to keep dust, like flour, from getting sucked into the mill’s aspiration space when the air pressure changes. For example, if an inspection door is opened, the mill automatically adjusts itself to stop the pressure change from pushing dust from the grinding space into the aspiration space.

Examiner Katcoff rejected the claims under § 103 using the automatic means rationale. In response, the applicant successfully argued that the examiner had misconstrued the claimed invention’s relation to the prior art:

This rejection appears to be based on a misunderstanding of the differences between the present invention and Kasada et al. ‘963. It appears from the present office action that the Examiner considered the essential difference between the present invention and Kasada et al. ‘963 to reside in the automation of the manual process already disclosed in Kasada et al. ‘963. However, this is not correct.

The application went on to issue as  U.S. Patent No. 10,946,385

Because the prior art did not show manually adjusting the roller mill opening to prevent dust movement, the invention could not represent automation of a manual activity. Moreover, the use of sensors to detect a pressure change presents an activity beyond the capacity of human actors. The invention was not mere automation, but a completely new concept, with no manual counterpart.

No Patent Holder Wants Unsupported Rejections

If automated means were always unpatentable, the patent system would have a built-in bias against robotics, control systems, driverless cars, autonomous drones, and many other emerging technologies. This cannot be the case.

Some aspects of these technologies might not be patentable under the automatic means rationale. For example, replacing a mechanical coupling with a computer-controlled servo in a car throttle probably replaces a manual activity with an automated means and should be rejected.

When you receive an “automatic means” rejection, it is helpful to keep in mind that you can guide examiners into supporting their rejections by clarifying your invention’s relationship to the manual activity identified in the prior art on more concrete terms. An unsupported rejection does not help anyone. You and your client are left wondering how to respond and the examiner faces reversal if you appeal. Supported rejections create a more robust process for all parties by producing better claims and stronger file histories.

Automatic controls are not per se unpatentable. By examining each element of the automated means rationale, you and the examiners will reach better outcomes.
These are just a few of the ways you can respond to an obviousness rejection based on the “automatic means” rationale. These cases were retrieved using the Arguminer software, a tool for finding specific issues for specific types of cases, art units, or examiners. You can find cases to help you prepare your next response using the Arguminer software. Contact IP Toolworks for a demo of this powerful product.

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Disclaimer – “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”

More than “Just the Facts”: Exploiting Legal Arguments to Your Advantage in Obviousness Rejections

Obviousness rejections enter into the uncanny territory between objective fact and subjective interpretation, contributing to their status as the bane of most patent attorneys’ existence.  On the one hand, prior art is what it is. You cannot fundamentally change the invention or what came before. Too much modification of the claims risks obfuscating the invention and weakening the protection that your client can obtain. On the other hand, there is something supremely subjective about the selection and interpretation of relevant prior art. Arguing for or against obviousness often necessitates speculation on the motivation or lack of motivation of prior art inventions.  As a result, an examiner can persist in the rejection by focusing on facts that favor obviousness and downplaying your facts.

What’s more, crafting responses to § 103 rejections is labor intensive, requiring prosecutors both to engage in a deep discussion of the invention and to comb through prior art. But you have another tool in your toolbox to overcome § 103 rejections. In addition to arguing the features of the invention, you can exploit legal errors or weaknesses in the examiner’s construction of the rejection. Many of the tests for obviousness arise directly from caselaw. As a result, examiners must meet certain legal requirements to satisfy these tests.

By focusing attention on areas where the examiner has failed to provide sufficient legal support for the rejection, you rely less on factual arguments. This allows you to create repeatable arguments that do not depend on the specific invention at issue. These arguments can be reused whenever an examiner misuses these legal concepts.

Here is an overview of some common ways examiners make unsupported obviousness rejections, and how you can use legal arguments to attack them.

Not Everything is a Design Choice: Differences in Function Can Overcome Obviousness Rejections

It is hardly surprising that “design choice” is one of the most common phrases used by examiners in obviousness rejections. It is a simple, understandable phrase that captures an examiner’s intuitive sense that the inventor did nothing more than replace a prior art feature with a known equivalent.

However, it is important to keep in mind that “design choice” is a legal term and not merely a turn of phrase. Federal Circuit precedent sets out the important principle that “design choice” is not a catch-all for use by examiners. Instead, it is a specific legal test that can only be applied by examiners when a specific set of facts exists. To reject a claim based on “design choice,” an examiner must show that the claimed feature was a known substitute for the corresponding element in the prior art and that the new element performs the same function as the old element within the context of the invention.

This principle was used skillfully by Corning Optical IP attorney, Kapil Banakar, to overcome an obviousness rejection on an application for a fiber optic cable. In this case, the examiner asserted that prior art teaching reinforcing a splice with covers and adhesive materials rendered obvious the overcoated splice claimed in the application. The examiner asserted that the overcoat was an obvious design choice in view of the prior art.

In response, Mr. Banakar pointed out that the examiner had misused the design choice test. Specifically, a rejection of an obvious design choice requires that the prior art and the claimed feature provide the same function. As explained in the office action response:

Design choice applies when old elements in the prior art perform the same function as the now claimed structures. See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (use of claimed feature solves no stated problem and presents no unexpected result and “would be an obvious matter of design choice within the skill of the art”). However, when the claimed structure performs differently from the prior art a finding of obvious design choice is precluded. In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992) (finding of obvious design choice precluded when claimed structure and the function it performs are different from the prior art). See In re Chu, 66 F.3d 292, 298-99 (Fed. Cir. 1995) (“design choice” is appropriate where the applicant fails to set forth any reasons why the differences between the claimed invention and the prior art would result in a different function).

In this case, the overcoated splice provided a fiber optic cable with greater density because the overcoated splice had a smaller diameter than a conventional splice. The examiner subsequently withdrew the rejection and the patent issued as U.S. Patent No. 10,976,492.

The takeaway from this case is that you can overcome a design choice rejection simply by pointing out the functional differences between features claimed in your client’s application and those in the prior art.

Automation is Patentable: Differences in Configuration Undercut Obviousness Rejections

Automation is one of the pillars of invention. Without automation, you would have a choke control on your car and need to turn on your air conditioner every time your office gets hot.  Yet, some examiners would have you believe that automation is not patentable. The phrase “automatic means to replace manual activity” populates many rejections in the computer, manufacturing, and automatic controls art units. However, while “automatic means” provides a catchy phrase, it also describes a legal standard that examiners sometimes overlook when making this rejection.

In re Rundell, a case from 1931, laid the groundwork for the “automatic means” rejection. This case is cited in In re Venner, which the MPEP uses as the exemplary “automatic means” rejection. Rundell affirmed a rejection of an automated bunch concentrator for making cigars. But the Rundell court was careful to include two limitations on its decision that continue to limit the use of the “automatic means” rejection. These limitations still exist today.

First, the court noted that the details of the automated mechanism were not included in the claims. Presumably, if the parts of the automated mechanism were recited in the claims, the court could have decided the case differently. See also Ex parte Bagnall, et al. (Appeal 2009-013429) (unfortunately, this decision is non-precedential but it illustrates the limitations of these rejections).

Second, the court noted that the safety function of the automated mechanism was not claimed or argued in the appeal. This is an odd statement from a court. Courts rarely talk about what was not argued unless they think it would have made a difference. As such, one can infer that the court could have reached a different outcome if the applicant had:

  • Claimed the safety device
  • Argued that the automated mechanism was safer than the manual one

This argument was put to effective use by lead IBM patent attorney, Nathan Rau, in overcoming an obviousness rejection on an application for a configurable door panel. In this case, the examiner rejected claims for a computer door panel with a spring and spacing mechanism that adjusts the angle of the door. The rejection asserted that the spring and spacing mechanism merely provided an automated or mechanical means to replace the manual activity of rotating the door.

In response, the applicant argued that an examiner can only use an “automated means” rejection when the claimed invention uses the same configuration of parts as the prior art.

[T]he Office Action asserts that this feature of claim 1 would be an obvious design choice and that “providing a mechanical or automatic means to replace manual activity which has accomplished the same results involves only routine in the art.” [I]n In re Venner, the claims at issue simply automated a prior practice, activating the prior arts already existing pressure release valve. In Venner, the only thing that was new was automating the activation of the pressure release valve. All of the components of Venner could be found in the prior art performing their intended functions in the same way with no change in their arrangement. In contrast to Venner, claim 1 recites a very specific structure and arrangement of the components. … [T]he Office Action has failed to show that this feature of claim 1 performs an already known function based on the same arrangement. Further, the Applicant notes that the arrangement of the features of claim 1 must also be found in the cited references. Even if the Office maintains that this feature of claim 1 is providing a mechanical effect, the Office still must consider the claimed arrangement of the components that permit the particular function to occur. The Applicant submits that the arrangement provided in the claim improves the corresponding functional aspects of the device.

The examiner withdrew the obviousness rejection and allowed the patent to be issued as U.S. Patent No. 10,362,716.

The takeaway from this case is that examiners meet a legal standard to use the “automatic means” basis for rejecting claims. The examiner must show that the invention uses the same configuration of parts, performing the same function as the manual device. If you show a different arrangement or function beyond simple automation, you undercut the examiner’s basis for the rejection.

Even Notoriously Well-Known Facts Require Support: Examiners are Constrained in Taking Official Notice

One of the most frustrating rejections to receive is one in which an examiner contends that claims are rendered obvious in view of information that is considered common knowledge in the art. Here you are dealing with official notice, meaning that the examiner has taken notice of facts not on the record. However, as slippery as citing common knowledge against your claimed invention may sound, there are legal procedures in place that constrain the manner in which examiners are permitted to introduce outside evidence. Keeping these limitations in mind as you prepare your response can make this one of the easiest legal errors to challenge. 

To begin with, the MPEP counsels that for examiners to take official notice of a fact, the fact must be capable of “instant and unquestionable demonstration of being well-known.” Some examples given in which notice can potentially be taken include:

  • Scientific facts, such as the fact that heat adjustment causes a change in temperature
  • Business facts, such as the desirability of making something “faster, cheaper, better, or stronger”

Beyond this, official notice without documentary support is permissible only in certain rare circumstances and particularly limited when issuing final rejections. The examiner is required to provide a clear and unmistakable technical line of reasoning for why official notice was taken in these situations. Moreover, if the applicant challenges the propriety of the way in which official notice was taken, it falls upon the examiner to support their finding with adequate evidence. The examiner may even be required to provide an affidavit or declaration if relying on personal knowledge to support their finding of what is known in the art. See 37 CFR 1.104 (d)(2).

One example of a successful argument that an examiner lacked legal support for his use of official notice was made by patent attorney, John Guerra, in a response to an obviousness rejection on an application for a contactless reception device and reception method:

Applicant respectfully maintains that the application of Official Notice in the outstanding Final Office Action is improper. The legal standard for applying Official Notice under MPEP § 2144.03 is rigorous. With respect to Official Notice, MPEP § 2144.03 states that “such rejections should be judiciously applied.” “It is never appropriate to rely solely on ‘common knowledge’ in the art without evidentiary support in the record, as the principal evidence upon which a rejection was based.” MPEP § 2144.03, emphasis added, citing Zurko, 258 F.3d at 1385, 59 USPQ2d at 1697. Contrary to the MPEP, in this case, the Final Office Action uses Official Notice as the principal evidence to reach a conclusion of obviousness.

The examiner withdrew the rejection and the application went on to issue as U.S. Patent No. 10,615,644.

The takeaway from this case is that the MPEP and caselaw place the burden on examiners to support their application of official notice. Examiners are responsible for providing documentary evidence when challenged, and allegedly well-known facts without this support can never serve as the primary grounds for a rejection.

Pushing Back on Obviousness Rejections

Obviousness rejections centered on phrases like “design choice,” “obvious to try,” “automated means to replace manual tasks,” “notoriously well known in the art,” and “common knowledge” can be among the most aggravating to argue on. Examiners sometimes introduce these terms as a placeholder with which to express a sense that the invention is not patentable in view of prior art, when in fact the grounds for rejection have not been fully articulated or supported. Because each of these phrases came from a case that imposed limits on its use, you can help bring the examiner to a clearer mutual understanding by drawing attention to the legal foundations for the grounds of rejection.  This focus on legal arguments may very well reduce friction, putting you on track for an issued patent, as the above examples illustrate.

These arguments were found using Arguminer. Visit IP Toolworks to learn more about using Arguminer to find proven arguments for your office action responses.

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Disclaimer – “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”