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MPEP 2143.01(IV) March 13, 2009

Posted by Brian Schar in Patent prosecution, USPTO.
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MPEP 2143 states, at its very beginning, that “[t]he key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious,” citing KSR.  MPEP 2143.01(IV) says, in effect, “and we really mean it!”

MPEP 2143.01(IV) is short, clear and useful.  A mere statement that “the claimed invention would have been ‘well within the ordinary skill of the art at the time the claimed invention was made’ … is not sufficient (emphasis added here) to establish a prima facie case of obviousness without some objective reason to combine the teaching of the references.”

Nonetheless, many (not a majority, to be sure, but a significant minority) of Office Actions that I receive provide no “objective reason to combine the teaching of the references,” and simply refer to the combination as being “well within the ordinary skill of the art.”  In response, I generally traverse the obviousness rejection, cut and paste MPEP 2143.01(IV) into the Response to Office Action, and point out that in the absence of any “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness,” the rejected claims are allowable in accordance with MPEP 2143.01(IV).  In response, you will either receive a notice of allowance, a different obviousness rejection, or some actual rationale supporting the previous obviousness rejection (which is the most likely outcome).  In that case, you are better off than before, because you have something more concrete to appeal.  Unless, of course, the Examiner is in fact correct.  Even in that situation, you’re still better off than before, because the nature of the rejection is clearer and you stand a better chance of amending the claim to overcome the rejection.

Some Examiners will provide a rationale that there is a particular problem to be solved, so that solving the problem by combining the cited references is obvious.  But that rationale is not only circular, but misses the point of KSR and MPEP 2143.01(IV).  Stating that finding a solution to a problem is obvious is not the same as “articulat[ing] reasoning with some rational underpinning” as to why the particular cited references would be combined to solve that problem.   For example, world hunger is a problem.  But generalized “world hunger” is not a valid rationale to combine references to find that a new blight-resistant genetically-engineered food crop is obvious.

MPEP 2143.01(IV) is also a good argument against articulated reasoning with irrational underpinning.  For example, one could receive an obviousness rejection on the grounds that two pieces of art could be combined to form a device with a particular characteristic.  However, that characteristic would render the claimed invention nonfunctional.  So, in addition to arguing MPEP 2143(V) and (VI), one could and probably should argue under MPEP 2143.01(IV) that the reasoning had no “rational underpinning.”

MPEP 2143.01(IV) is often overlooked, but shouldn’t be.  It is a first line of defense against poorly-written and poorly-considered obviousness rejections.

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Comments»

1. SamInEurope - April 3, 2009

Brian,

Great blog title! I have written similar rebuttals pointing out circular reasoning in an office action’s 103 rejection.

Another common rejection I see is, “it is obvious to combine X with Y because X would have the added features of Y,” which of course is a mere truism and is not articulated reasoning with some rational underpinning.


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