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MPEP 2143.01(II) October 13, 2009

Posted by Brian Schar in Federal Circuit, General, Patent prosecution, USPTO.

MPEP 2143.01(II) directs that, “where the teachings of the prior art conflict, the Examiner must weigh the suggestive power of each reference.” 

This section of the MPEP describes a fact situation that does not arise often in practice, in my experience.  In the cited case, In re Young, 927 F.2d 588 (Fed. Cir. 1991), the application was rejected as obvious over a patent to Carlisle.  The applicant, Young, claimed a particular spacing of air guns in water to generate a seismic pulse.  According the USPTO and the Federal Circuit, Carlisle disclosed the same spacing for chemical explosives in order to generate a seismic pulse in water. 

Young challenged the Carlisle patent, based on a later-published article published in a peer-reviewed journal by Knudsen.  Young claimed that the experiments conducted by Knudsen discredited the usefulness of the particular spacing of Carlisle, thereby teaching away from the use of Carlisle.  The Federal Circuit held that it didn’t matter whether Knudsen contradicted Carlisle; Carlisle was still relevant “for what it disclosed in relation to the claimed invention.”  Nevertheless, “[t]he Board must consider all disclosures of the prior art…to the extent that the references are, as here, in analogous fields of endeavor and thus would have been considered by a person of ordinary skill in the field of the invention. The Board, in weighing the suggestive power of each reference, must consider the degree to which one reference might accurately discredit another.”  (emphasis added)

Turning to the substantive content of Knudsen and Carlisle, the Federal Circuit held that “Knudsen is not so credible or persuasive of a contrary teaching that it would have deterred the skilled artisan from using the teachings of Carlisle.”  The conditions of the experiments of Knudsen were different enough from the content of Carlisle, and “did not accurately test Carlisle.”  As a result, a skilled artisan would have dismissed Knudsen, not Carlisle.  And with that, the applicant’s hopes were dashed against the unforgiving shoals of 35 USC §103.

The key takeaway from In re Young that didn’t make it into the MPEP is the “credible and persuasive” test.  If you attempt to rebut a first reference with a second reference that purportedly discredits the first, you have to be sure that the second reference is “credible and persuasive.”  If so, that second reference might be sufficient to overcome the first reference. 

Even so, one has to be careful with this argument.  In this fact pattern, what you’re really arguing is that the first reference is relevant to the claims, but that a second reference would have discouraged people from utilizing the teachings of that first reference.  That argument essentially admits that the obviousness rejection would have been valid, but for the uncertainty introduced by the second reference.  For that reason – the essential admission of the relevance of the first reference – the Federal Circuit set the bar pretty high with the “credible and persuasive” test.  Even if you are successful, this argument opens the door for the Examiner to reject the claims under 102 instead, based on inherency. 

Nevertheless, MPEP 2143.01(II) may be useful in a new and/or unpredictable art where there is significant controversy about a particular aspect of the claims.  One or more references that contradict a cited reference may be produced to show that one of ordinary skill in the art would not have blinded followed the cited reference, but instead would have been just as likely to reject that cited reference and head down another path to the invention. 

Next up, I will finish out my intermittent series on MPEP 2143.01 with a discussion of MPEP 2143.01(I).


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