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MPEP 2143.01(III) May 7, 2009

Posted by Brian Schar in Patent prosecution, USPTO.
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MPEP 2143.01(III) states that “[t]he mere fact that references can be combined or modified does not render the resultant combination obvious unless the results would have been predictable to one of ordinary skill in the art.”  (emphasis in original). 

In my practice, I don’t find this section of the MPEP particularly helpful in overcoming obviousness rejections.  Neither the examiner nor the attorney really know what “one of ordinary skill in the art” is.  Even if the examiner and the attorney could agree on some definition such as “a mechanical engineer with a bachelor’s degree and 5 years of experience,” that still doesn’t help determine whether such a person would find the results of a combination predictable. 

This portion of the MPEP would be helpful in declaration practice, if you submit a declaration from an expert in regard to nonobviousness of a claim; that expert would likely be a person of extra skill in the art but who could opine about the level of ordinary skill.  But if you’re going to the trouble of obtaining and filing a declaration, you already know that. 

 Unless you want to obtain a declaration, you are probably better off looking to other parts of MPEP 2143.01 to overcome an obviousness rejection.

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