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.”

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