Responding to Obviousness Rejections in Light of the USPTO’s New Guidance

“The overall point to keep in mind is that there should be some reasoned basis in evidence for whatever is being alleged under the new guidance.”

obviousnessThe United States Patent and Trademark Office (USPTO) recently released new guidance to patent examiners on making obviousness rejections. The guidance focuses on post-KSR precedential jurisprudence from the U.S. Court of Appeals for the Federal Circuit. Some of the guidance is fairly mundane, some of it is not. For a general overview of the guidance itself, click here.

The purpose of this article is to propose a few responses one might use to counter rejections that apply certain problematic aspects of the new guidance. It is not exhaustive and I cannot predict what trends we might actually see in the future, but I submit the below based on a few things I see as potentially becoming issues.

Remember First Principles

Initially, note that the guidance begins by stating:

“This updated guidance serves as a reminder for USPTO personnel of the flexible approach to obviousness that is required under KSR and Federal Circuit precedent….This guidance does not constitute substantive rulemaking and hence does not have the force and effect of law…Rejections will continue to be based on the substantive law, and it is these rejections that are appealable [emphasis added].”

Therefore, the first important thing to keep in mind is that if you get an obviousness rejection based on the new guidance, pull the examiner back to first principles. And do not hesitate to cite the law itself, because, after all, obviousness is a legal determination.

Making Sense of ‘Common Sense’

With this backdrop, you might get an examiner who seizes on this part of the guidance:

“[T]he Supreme Court instructed the Federal Circuit that persons having ordinary skill in the art (PHOSITAs) also have common sense, which may be used to glean suggestions from the prior art that go beyond the primary purpose for which that prior art was produced….Thus, the Supreme Court taught that a proper understanding of the prior art extends to all that the art reasonably suggests, and is not limited to its articulated teachings regarding how to solve the particular technological problem with which the art was primarily concerned [emphasis added].”

Should you get this thrown at you, keep in mind that the Federal Circuit decisions discussed in the guidance all had some evidentiary basis for their holdings about what the skilled artisan would understand. Not the examiner themselves, but the actual skilled artisan at the time of the patent’s priority date, no less.

You might then see if you can work in this post-KSR precedential case from the Federal Circuit:

“‘[C]ommon sense and common knowledge have their proper place in the obviousness inquiry,’ at least ‘if explained with sufficient reasoning.’… ‘But,’ we cautioned, ‘there are at least three caveats to note in applying ‘common sense’ in an obviousness analysis.’…‘First, common sense is typically invoked to provide a known motivation to combine, not to supply a missing claim limitation.’…Second, we have invoked common sense to fill in a missing limitation only when ‘the limitation in question was unusually simple and the technology particularly straightforward.’…‘Third, our cases repeatedly warn that references to ‘common sense’ – whether to supply a motivation to combine or a missing limitation – cannot be used as a wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the prior art references specified.’”

DSS Technology Management, Inc. V. Apple Inc., 885 F.3d 1367, 1375 (Fed. Cir. 2018).

While this applied to “common sense,” it can also be applicable to other findings the examiner makes about missing elements/motivation to combine that are not accompanied by evidence.

‘Ordinary Creativity’

Picking up that theme, you might also get an examiner that relies on the following from a little later in the guidance: “Consistent with KSR and subsequent Federal Circuit case law, when evaluating the prior art from the perspective of a PHOSITA, Office personnel must take that person’s ‘ordinary creativity’ into account.”

But the Federal Circuit also cautioned in DSS Technology Management that invocation of “ordinary creativity” can be “no different from the reference to ‘common sense’…Here, the Board relied on a gap-filler – ‘ordinary creativity’ instead of ‘common sense’ – to supply a missing claim limitation….In cases in which ‘common sense’ is used to supply a missing limitation, as distinct from a motivation to combine,…our search for a reasoned basis for resort to common sense must be searching.’….The Board’s reliance on ‘ordinary creativity’ calls for the same ‘searching” inquiry.’” Id. at 1374-1375.

So when “common sense” or “ordinary creativity” are used to fill in a missing limitation, there should still be a “searching inquiry” and some evidentiary basis for why the skilled artisan would have found something to be common sense or a matter of ordinary creativity. Same for motivation to combine.

Particularly for motivation to combine, here’s another short cite to a post-KSR case that proves a point in the face of vague allusions to “common sense” or “ordinary creativity”: “The presence or absence of a motivation to combine references in an obviousness determination is a pure question of fact.” Novartis AG v. Torrent Pharm. Ltd., 853 F.3d 1316, 1327 (Fed. Cir. 2017).

Insist on the Evidence

As one last suggestion, if you get an allegation of inherency in an obviousness rejection, remember that the bar for inherent disclosure even for obviousness post-KSR is still quite high:

“While ‘[w]e have recognized that inherency may supply a missing claim limitation in an obviousness analysis,’…we have emphasized that ‘the limitation at issue necessarily must be present’ in order to be inherently disclosed by the reference…(emphasis by the Federal Circuit).”

Southwire Co. v. Cerro Wire LLC, 870 F.3d 1306, 1301-1311 (Fed. Cir. 2017).

The overall point to keep in mind is that there should be some reasoned basis in evidence for whatever is being alleged under the new guidance. Insisting on that as a starting point for any rejection will hopefully undermine many of the ways in which the new guidance could be abused.

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Join the Discussion

13 comments so far.

  • [Avatar for Greg Aharonian]
    Greg Aharonian
    March 17, 2024 11:07 pm

    To Anon (and others) who commented: “We (the royal we of Practitioners) have been somewhat lax … “. No, you are potentially committing malpractice by not availing yourselves of all of the laws that benefit your client. I am thinking of 42 USC 1983.

    All patent applicants, all of your clients who pay you tons of money, have a Constitutional Due Process Public Notice “right, privilege” to have foundational statutory terms (those that are proper terms have been Legislatively enacted, those in violation of the Constitution for being Judicially legislated). For way toooooo long, the patent bar has ignored this Constitutional right/privilege of their clients. Patent applicants must NOT be deprived, must not suffer the deprivation, of this Constitutional right/privilege.

    35 USC 103’s “obvious” is fatally vague because it is not defined in statute nor he 1952 Legislative history. Fatally vague. This cannot be cured by a Judicial decision (mere, predictable, routine, commonsensical) because foundational statutory terms cannot be judicially legislated. Nor can an Administrative agency define a foundational term (unless authorized by Congress), because it is not a legislature. (And worse, in our case, the USPTO hasn’t even bothered to try, probably wise unless they bring in semiotic experts). This leaves your clients deprived, in a state of deprivation, as to guidance as to what “obvious” means for you and your client to draft claims that are not “obvious”. Deprived.

    All, I say, all of your clients are subject to the “deprivation” of “rights” in this matter, the right of Due Process Public Notice, reasonable guidance, as to how the USPTO has defined “obvious”, in general, or somewhat technology specific, as applied to your client’s patent application. Your clients are being deprived, i.e., suffering a deprivation.

    Which gives you patent lawyers tremendous power to act on behalf of this deprived state of your clients.

    And yes, my excessive literary use of “deprived” and “deprivation” is specific, as a segue to the tremendous power that the patent bar has to stop this treason:

    42 USC 1983: “Every person [e.g., USPTO Primary Examiner, Group Director, Quality Control person] under any color of any statute [e.g, 35 USC 103] …. who subjects any citizen of the USA [e.g., a patent applicant, a patent lawyer (you all suffer from the exposure to malpractice charges without guidance as well) ] … to the DEPRIVATION OF ANY RIGHTS, …., shall be liable to the party injured [e.g., patent applicants, patent lawyers] in an action of law, suit in equity ….

    So every patent law firm, faced with semantically nonsensical 103 rejection, should first demand in an Office Action, that the Office define “obvious” in general or in the context of the applicant’s technology area. if the Office refuses to do so, at its expense (you guys have profited too much in recent decades to no offer some pro bono), law firms should file lawsuits under 42 USC 1983 on behalf of themselves and their clients. The same for “abstract”.

    After a few of these lawsuits are filed, with the backing of the patent bar, the USPTO will go running to Congress asking for a definition of “obvious”, as they and the courts should have done years ago. This is a tremendous power that the patent bar possesses to defend their clients deprived rights.

    And you have a vital interest in doing so, because right now all of you are potentially committing malpractice by drafting “non-obvious” patent claims without knowing what “obvious” means, and potentially committing malpractice by not availing yourselves of 42 USC 1983.

    And these lawsuits must be filed, as this ‘obvious tyranny” is undermining US national economy security by denying many inventors a patent for their legitimate inventions. It gives “aid and comfort” to our “enemies”, who get free access to the technology of published abandoned patent applications. We need patents filed and published, to progress the Arts and Sciences – the Constitution demands it. If applicants are reluctant to file and be published, that undermines this Constitutional imperative.

    So patent law firms, start filing 42 USC 1983 lawsuits, or shut down your patent prosecution practices. You can’t have marble lobbies without marble guts.

  • [Avatar for George]
    March 17, 2024 01:32 am

    Thanks for posting my comments, errors and all! Sorry for having to pound on lawyers so much. They’re not ALL bad!!! lol

  • [Avatar for George]
    March 16, 2024 04:19 pm

    @ Greg Aharonian

    Yeah, Greg, but what if, soon, AI could also make lawyers & ‘human’ examiners ‘obsolete’ and finally allow ANYONE to write up a ‘valid’ and ‘easily enforceable’ application for patent (including even a poor person or one of simply ordinary means) and do so in a LOGICALLY CONSISTENT, BLIND, FULLY SEARCHED and COMPLETELY VETTED way, including by searching all of the ‘entire world’s’ knowledge – in multiple languages – in MINUTES not months & years? How about that? Wouldn’t you like that? I sure would! I’m fed up with how things are still being done with regard to IP, in the 21st century! They’re still being done like 100 years ago (thanks to lawyers intentionally making the system that way – to their immense financial advantage – not that of inventors). And, even better, a constantly improving AI (under human & Congressional supervision) could do ‘everything’ and then issue a ‘valid’ and ‘easily enforceable’ patent TO ANYONE deserving one, in under a week, for maybe < $200 (even if a 'single' such patent could bankrupt a company like Apple or IBM)! Wouldn't THAT be great and more in keeping with what the Founders intended when they wrote the Constitution?! That when it came to a person's inventions and patents, American justice would 'blindly' protect them too and not simply those with the deepest pockets, who could afford to 'buy IP justice'? Couldn't Ai now help us to get back to that 'original intent' of patents in the Constitution? Maybe there should be a big lawsuit to answer that very important and critical question now? Maybe combine that with the question of how to BEST use AI, to give everyone the same rights again – not just the rich?

    Wouldn't AI also allow leveling the playing field again and truly let 'any' American who deserves to, potentially become rich and famous, like in the 'old days'? ANY American, no matter where they start out from, if they work hard enough and are creative enough and 'really deserve' to become rich & famous for something useful they bring to society, rather than just having to be born wealthy (as more & more things are now)? Wouldn't THAT make America much more 'equitable' again, and reduce the divide between rich & poor and also allow many more 'innovative revolutions' to start and then create millions of new jobs (that existing companies rarely create anymore)?

    That seems to have worked great for at least the first 100 years of patent history! Isn't that what DIRECTLY gave birth to the first industrial revolution in America – ordinary inventors with great ideas (but not necessarily the money for lawyers, patent fees and the filing of at least 20-100 applications to protect ONE great new idea). Now we just have a handful of giant 'monopolies' controlling everything – including our U.S. patent office! Isn't that true folks? Doesn't that just SUCK and desperately need to be replaced with something a LOT easier and a lot cheaper too?! Yes it does!!! Bring on the AI, and let it reduce the number of lawyers out there with infinite job security! Let THEM become 'wealthy' inventors, instead! LOL!

  • [Avatar for George]
    March 16, 2024 03:34 pm

    TODAY the USPTO is allowed to say ANYTHING is ‘obvious’ – if they want to! That’s because examiners & their supervisors can’t be held accountable for ANYTHING they say or do, and can’t even be fired if they screw things up for an applicant! There is absolutely no accountability there (or at any government agency), regardless of what they do. Even Congress seems ‘afraid’ of the PTO and hates to have to criticize them in any way, except maybe ‘around the edges’ (since they liked and almost unanimously passed the AIA)! Instead of being the ‘the boss of them’, it’s now the other way around! Why?

    Right now Examiners (even rookies) are allowed to ‘trash’ even ‘breakthrough’ inventions that could be worth billions to the U.S. economy and in so doing cheat and defraud their inventors out of those millions or billions. Sure seems like there should be ‘a law’ against that, don’t you? Indeed I’m convinced they now have a NEW ‘secret policy’ of doing just that, if an invention comes across to them as seeming ‘too good’, ‘too broad’ or ‘too valuable’ that it could seriously ‘impact’ existing large corporations and monopolies and cost them money – just like with their PREVIOUSLY DENIED ‘super-secret’ SAWS program that they ‘surreptitiously’ ran for 20 years, without anyone knowing it (including Congress) and before FINALLY being found out and ‘forced’ to stop it, after passage of the AIA (otherwise, for sure, they’d still be using it to suppress some ‘troublesome’ inventions)!

    But, in think they’ve got a new one now, that’s even worse and they won’t admit that one either! It’s the easiest way to stall or prevent a patent from issuing they don’t want to be forced to issue, even under by law! That’s because there’s no one there to ‘police’ them or even uncover what’s really going on there! Even Congress seems afraid of them and won’t question what they’re doing and instead of Congress being their boss and watchdogs, it’s the other way around now & the USPTO bosses Congress around and easily intimidates them. It’s actually pretty sad and disgusting the power they have to even disregard the nation’s statutes and even our constitutionally guaranteed patent rights that were ‘originally’ meant to be fair, equitable and ‘blind’ as to WHO was applying for a patent and how much money they might have in their pockets when doing it. There was a time when even a very poor person could get a patent that could even made them suddenly rich! Not anymore! Now it’s ‘all about’ the money you ALREADY have (for paying lawyers & the PTO) and ‘power’ you have for causing problems for the PTO and their ‘best customers’ and that’s not right under our Constitution.

  • [Avatar for Craig Shinners]
    Craig Shinners
    March 16, 2024 12:32 pm

    It has been my experience that examiners (for the most part) do a pretty good job if the specification clearly points out the invention and explains how the claimed invention differs from relevant prior art. Far too many applications are confusingly written and do not even define important claims terms. Some applications are no more than a reworked marketing brochure that tells what the invention could be without describing the “how”. So here is one suggestion – let the examiners do their job but require them to use what is disclosed in the prior art to make a legal determination as to whether the invention is both new and non-obvious…If the terms in the claims are not described in clear and concise terms in the specification, if the specification lacks enablement for failure to describe completely and fully explain the claimed invention, then reject the claims under 112. There really should be no need for the Court or PTAB or the examiners to go around attaching artificial labels to a claim such as “mere” combination or “predictable” or resorting to “creative justification” for a claim rejection without a substantive basis. So, yeah, Greg got it right.

  • [Avatar for Greg Aharonian]
    Greg Aharonian
    March 16, 2024 10:46 am

    Any “common sense” rejection or policy should be vigorously attacked by the patent bar. “Common sense” is shorthand for “Any reasoning that doesn’t require …… a flash of genius”. Which Congress rejected in law in 1952, with the second sentence of 103, as NEVER being grounds to reject for being obvious. “Common sense” joins “mere”, “predictable”, “routine” and every other judicially legislated attempt to define the fatally vague “obvious” that lacks guidance.

    Most examiners have insufficient background in the field of technology of the patents they are examining to know what is “common sense” in that field, especially as the USPTO does not provide guidelines to the examiners as how to measure “common sense” (or routineness or predictability) in a field of technology.

    For the 30 years I have been involved with patent law, the three most important statutory (legislative or judicial) terms remain completely undefined: “abstract”, “obvious” and “enabled” (most software patents are not enabled). Combine all of the court decisions and PTO guidelines on “abstract” and “obvious”, and they are completely contradictory. Even CAFC judges complain about the incoherency of 101 in their decisions.

    Resolving this scientific semantic issue is beyond the skills of the courts, and of the USPTO. None of them are trained in the semantics of science and engineering. There is only one solution. Congress must turn to the experts on the semantics of science and engineering (NSF, ACM, IEE, etc.) to bring 35 USC more in line with the obligations of Due Process Public Notice. You all have failed for 30+ years, yet you refuse to turn to experts.

    Consider “abstract” and software. There are entire conferences on software abstractions, where all of the terms are pretty well defined. It is an important concept in software, one that software engineers have well developed in the last 30 years (and even built tools to measure software “abstractness”). Yet none of their work is relied upon by the courts and the USPTO. Patent law judges and USPTO officials never read their writings, never attend their conferences, never talk to them.

    And at least for design patents (and any utility patent that is much an issue of a design improvement), there are well-established mathematical definitions of what is and isn’t “obvious”. Because this is an important issue for engineers as well, so they came up definitions and tools so they could better solve problems. With such mathematics, the USPTO could pretty much automate design patent examination (hint: everyone would have to submit 3D models of their design), to determine quite quickly which new design is “obvious” or not. The USPTO could issue same-day-as-application First Office Actions.

    And here is another “obvious” issue no one is discussing. Is it obvious for one skilled in the art to use, as a “common sense” tool, an AI automated design program? If a computer can completely design/invent something without human intervention, is that something an “obvious” invention, since the inventor did nothing more than use “common sense” to routinely input a few commands into the AI design program? If so, increasingly, most inventions are obvious as the power of AI tools increases. So who cares whether or not an AI program can be listed as an inventor.

    The real issue is if AI programs make more and more inventions obvious. The insanity of 35 USC 103 (which you all profit greatly from) is that the first sentence of 103 makes anything AI-inventable to be unpatentable, while the second sentence of 35 USC 103 makes anything AI-inventable to be patentable. The statute is completely unConstitutionally vague.

    And sadly, this AI-obvious issue is not in the new USPTO obviousness guidelines.

    As a representative of those inventors of us spending tons of money to overcome unconstitutional 103 rejections, either fight for our Constitutional rights as officers of the court with ethical responsibilities to your clients, or go get another job.

    P.S. And as a request to the Editors of IPWatchDog, isn’t about time after all of these years to have someone write a lengthy piece for IPWatchDog on the caselaw of Due Process Public Notice guidance required for civil laws? It is the most serious cancer at the heart of the patent system, and yet silence.

  • [Avatar for Anon]
    March 15, 2024 08:01 pm

    Note that this is the second recent effort from Mr. Aharonian to instigate a discussion on this point:

    We (the royal we of Practitioners) have been somewhat lax – and likely cowed – in holding Justices’ feet to the fire as to ultra vires actions.

  • [Avatar for Pro Say]
    Pro Say
    March 15, 2024 02:57 pm

    Greg gets it 100% correct — yet again.

    The problem, of course, is that the odds of prevailing with such sound logic arguments against the PTO and the courts are close to nil.

    Just as it is with eligibility.

    If and until such time that 101 / 103 logic prevails, however, if we want to obtain allowances for ourselves / clients (clients won’t long pay for not obtaining patents), we are all left with having to operate in this alternative 101 / 103 universe,

    Illogical though it be.

  • [Avatar for Scoot]
    March 15, 2024 02:09 pm

    Some practitioners already doggedly refuse to accept any finding of obviousness that isn’t supplemented with a unicorn documented published before the effective filing date of the invention saying “XYZ limitation was common sense”.

    How does an examiner find evidentiary support for a matter of common sense? Especially in patents, which “preferably omit what is well known in the art”? (In re Buchner).

  • [Avatar for Greg Aharonian]
    Greg Aharonian
    March 15, 2024 10:45 am

    You say that the Supreme Court instructs that “common sense” is an applicable tool in obviousness determination. What does that mean in areas of technology that no one on the Supreme Court understands? For over 50 years, the Supreme Court has randomly tossed one word after another to define the completely undefined “obvious”, without the Constitutional Authority to do so.

    Prior to 1952, their word was “mere”. Then there was “predictable” in KSR. Now the word is “common sense”. They are throwing darts at a thesaurus to try to define “obvious”. Which they have no Constitutional authority to do so. Fundamental statutory terms can only be defined by the Legislature, not the Judiciary. Judiciary can review a definition, but it can’t write the definition. That is solely the domain of the Legislature.

    Worse, it does not matter what term the Supreme Court uses to define “obvious”,nor the USPTO, because Congress made it quite clear that in the second sentence of 35 USC 103 (which the patent bar refuses to acknowledge): “Patentability shall not be negated by the manner in which the invention was made.” That is the LAW of the land. So Congress is saying that if your invention was made with “common sense”, it is still deserving of a patent. Which means it is an Administrative abuse for the USPTO to reject a patent for “common sense” because it violates the LAW – the second sentence of the LAW of 35 USC 103 – which for the most part are not discussed in the PTO’s new guidelines (yet another Administrative abuse).

    35 USC 103 is a horribly written law. The first sentence with “obvious” is fatally vague (because “obvious” is not defined in Statute and not defined in the Legislative History from 1952). And the second sentence mostly is a complete contradiction of the first sentence.

    So a legitimate Office Action Response is to ask the Examiner to withdraw any obvious argument in light of the second sentence of 103, and to provide a definition of “obvious” in the context of the technology of the invention, as that definition is obligatory Due Process Public Notice that a patent applicant is Constitutionally entitled to have. And if not, ask the Examiner to withdraw the obviousness rejection. And if they don’t, that is an Administrative abuse.

    Yes, this could temporarily shutdown application of 103. But it is time to heal the damage caused by the Due Process problems caused by the completely vague language of 35 USC 103 written in 1952. Patent applicants have lost billions of dollars fighting these unconstitutional rejections. Thousands of companies have been severely damaged by not getting patents for their legitimate inventions. At least in the interim, make the mostly objective Secondary Considerations of Graham the primary considerations. For example, if an invention could have been made anytime in the last 10/20/30 years (an objective test with a prior art search), and wasn’t, it is not obvious.

    It is time the patent bar championed all of the Constitutional rights of their clients. 35 USC 103 is an unconstitutionally vague contradiction. This must be discussed in the USPTO guidelines, and must be publicly discussed by the patent bar. The censorship of Due Process Public Notice requirements of the Constitution, as applied to fatally vague patent law terms (“obvious”, “enabled”, etc.), betrays the Constitution.

  • [Avatar for yenrab]
    March 15, 2024 10:40 am

    Why not just stop using terms that nobody can agree on what they actually mean? “Common sense” (with or without the quote marks) has no particular bounds that can be measured in terms of human intellect. “Ordinary Creativity” is a pair of words that contradict each other. If it’s ordinary it’s not creative, and vice versa. Any suggestions for a word or term to replace “obvious” or “predictable” might be helpful!

  • [Avatar for B]
    March 15, 2024 09:41 am

    @ MD “But the Examiner has no expert to call upon. So how do they put together persuasive “evidence”. Can you give examples, please?”

    You can refer to general rules often. Working on IPRs lately I find experts are in very strong agreement with the rules outlines in MPEP 2143(I).

  • [Avatar for Max Drei]
    Max Drei
    March 15, 2024 06:48 am

    Reading this from outside the jurisdiction, and imagining myself to be a USPTO Examiner, I have no idea what (other than the testimony of a technical expert or a killer cite from a prior-published standard textbook in the art) might constitute persuasive:

    “evidentiary basis for why the skilled artisan would have found something to be common sense or a matter of ordinary creativity. ”

    But the Examiner has no expert to call upon. So how do they put together persuasive “evidence”. Can you give examples, please?