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MPEP 2143.01(VI) November 26, 2008

Posted by Brian Schar in Patent prosecution, USPTO.

MPEP 2143.01 tells you exactly how to overcome a 103 rejection, setting out a number of different reasons that an applicant can use to rebut an alleged prima facie case of obviousness set forth by the Examiner. A post below discusses MPEP 2143.01(V), which requires that a proposed modification of a prior art invention cannot render that invention “unsatisfactory for its intended purpose.” This is a powerful tool for addressing an obviousness rejection, because Examiners often simply pick out claim elements in the prior art without considering how those elements would or could work together for an intended purpose, or any purpose at all.

Another powerful tool is MPEP 2143.01(VI), which cautions Examiners that “[i]f the proposed modification or combination of the prior art would change the principle of operation of the prior art invention being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious.” Summarizing In re Ratti, 270 F.2d 810 (CCPA 1959), this section of the MPEP provides an example of an oil seal that included a “bore engaging portion” having resilient fingers inserted in a resilient sealing member. In re Ratti itself specifies that a shaft is located in the bore. The primary reference disclosed a rigid bore engaging portion “reinforced by a cylindrical sheet metal casing.” The primary reference “taught the device required rigidity for operation, whereas the claimed invention required resiliency.” Turning to In re Raffi itself, the secondary references taught resilient gaskets and the like in a variety of arts. Combining such resilient gaskets with the rigid sealing member of the primary reference “would require a substantial reconstruction and redesign of the elements shown in [the primary reference] as well as a change in the basic principle under which the [primary reference] construction was designed to operate,” according to MPEP 2143(VI). That is, if the primary reference describes a claim element having a particular limitation, and the secondary reference or references describe the same claim element having the opposite limitation, or a different limitation, the principle of operation of the primary reference would have to be changed in order to combine the references, in violation of MPEP 2143(VI).

Like its sibling MPEP 2143.01(V), MPEP 2143.01(VI) is particularly useful in dealing with cafeteria-style pick-and-choose rejections. An Office Action may reject a claim that includes element A on the grounds that the primary reference discloses an element similar to A and a secondary reference discloses element A as claimed, and the primary reference could be modified according to the secondary reference. However, the Examiner likely did not consider how the two references could be physically combined. If the proposed combination of the references would cause a change in the principle of operation of element A, the rejection is improper and no prima facie case of obviousness has been made. This argument obviously will be more successful the more different that element A is between the references; the situation as in In re Ratti where element A is exactly the opposite in the secondary reference as in the primary reference exemplifies that.

An Office Action also may reject a claim that claims the combination A+B under a primary reference on the grounds that the primary reference describes element A and the secondary reference describes element B. The incorporation of element B into the particular device or method of the primary reference also may change the principle of operation of that primary reference in violation of MPEP 2143.01(VI). As the number of references and their unrelatedness increases, the greater the chances that the proposed modification of the primary reference requires a change to its principle of operation.

If one is inclined to submit a declaration from one skilled in the art in response to an obviousness rejection, this may be a useful situation in which to do so.

Next up: MPEP 2143.01(IV).


1. Khoi - May 6, 2011

Brian – thanks for the tip. One thing that I try to stay away from in my practice is not to have a declaration unless absolutely necessary (e.g., an irrational examiner) because this opens up your declarant to a deposition later. And in my situation, the declarant became a very hostile witness a few years down the road. He became very fertile material for the other side too.

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