If you were unable to join us in person at IPWatchdog Studios for Patent Prosecution & Portfolio Management Masters™ 2023, a part of the IPWatchdog Masters™ series, register now to watch the broadcast of the Secondary Considerations and the Art of Responding to Obviousness Rejections and The Good, The Bad, and the Ugly: Tips and Strategies for Building a Strong Patent Portfolio panels. These conversations were recorded on June 20, 2023.

While much attention in recent years has been placed on patent eligibility—and rightly so— the truth is obviousness remains the most important threshold for most innovations.

When the Supreme Court issued its decision in KSR v. Teleflex, things substantially changed. Obviousness today is all about predictability of results. Long gone are the days where an obviousness rejection was inappropriate simply because there is no teaching, suggestion, or motivation to combine references.

While worst fears associated with KSR have not materialized, it is still all too easy for examiners to subjectively, and in a rather cavalier way, conclude claims do not pass muster under one of the so-called KSR Rationales. Furthermore, what the MPEP instructs examiners to do with respect to obviousness combinations is not in line with current Federal Circuit precedent. Further still, objective indicia of nonobviousness are often given minimal consideration by decision-makers.

This panel discussion will focus on responding to obviousness rejections and convincing examiners there is more to the claimed invention than the sum of its parts. To accomplish this task, the panel will explore—among other things—the following: (1) Specific requirements examiners must satisfy in order to rely on each of the KSR rationales; (2) The most common obviousness rejections and how to handle them; (3) How best to establish a nexus between objective evidence of nonobviousness (i.e., secondary considerations) and the claimed invention; and (4) Tips for successfully working with patent examiners to convince them to issue patent claims.

Materials:

When Commercial Success Can Prove Non-Obviousness

Patentability: The Nonobviousness Requirement of 35 U.S.C. 103

Reyna Splits from CAFC on Weight of General Industry Skepticism in Obviousness Analysis