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Dealing with In re Keller and In re Merck November 11, 2010

Posted by Brian Schar in General.

Having had occasion to deal with a cut-and-paste 103 rejection under In re Keller and In re Merck, I thought that I would myself cut and paste here a short response that I have developed for addressing those cases, in the hope that it may be useful to others.

“The MPEP states that a rejection under 35 U.S.C. §103 requires “[a] finding that the prior art included each element claimed…with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference.”  (MPEP 2143(A)).  That is, where a limitation X is present in a claim, and multiple references A, B and C are combined to form the set A+B+C, the claim limitation X must be present in at least one of the individual references for it to be present in the set of combined references.  That is, a limitation that is not present in any one of the references A, B or C cannot be present in the combination A+B+C.  Pointing out that such a limitation is not present in all of the cited references is not “attacking references individually.” 

The cited cases stand for other propositions.  In re Merck simply states that a reference cannot be “read…in isolation.” In re Merck, 800 F.2d 1091, 1097 (Fed. Cir. 1986).  In re Keller holds that an affidavit concerning only one prior art reference is not sufficient to overcome obviousness rejection as to three separate references.  In re Keller, 642 F.2d 413, 422-23, 427 (CCPA 1981).  Neither of these holdings is relevant to establishing that none of the cited references include a claim limitation.  Indeed, the logic of the Examiner’s Answer is so overbroad that it would prevent any argument against a prima facie finding of obviousness by the Patent Office, improperly converting the prima facie finding to a de jure conclusion.”

I also commend the reader to the Patent Prospector’s excellent blog post that provides a much deeper analysis of the erroneous application of In re Keller by the USPTO.


1. palooka - November 23, 2010

Thanks for the post. I may borrow that response in the future. Of course, it’s going to sail right over the head of the examiner, but the APJ’s may get a kick out of it.

2. Clay Faries - February 8, 2012

To me Keller is more problematic when the Applicant is essentially arguing a feature A+B. The Applicant likes to think of the combined characteristics A+B as a single feature, at least for the reason the cited references do not individually disclose A+B.

The Examiner cites a primary reference for A, and a secondary reference for B, and gives a cursory reason it is obvious to incorporate B with A in view of the references.

The Applicant argues that the primary reference does not disclose A+B, and that the secondary reference does not disclose A+B. Therefore, the combination does not disclose all of the claim elements, and thus the Examiner has not established a prima facia case of obviousness.

A question with regard to presenting claim features and evaluating the existence of claim features in a reference is what is the meaningful level of specificity and parsing. A claim element may have more than one feature. A feature may have more than one characteristic.

3. Brian Schar - February 9, 2012

Clay, I don’t disagree in general. However, the inquiry comes down to the meaning of a claim element to one of ordinary skill in the art, and the broadest reasonable interpretation of that claim element in light of the specification. For example, consider the claim element “widget” that has a common meaning to those skilled in the art, and where the specification provides written description consistent with that common meaning. If the Examiner then tries to combine two elements in the prior art to say that they collectively are a widget, when such a combination is different from the common meaning and the disclosure in the specification, that combination is broader than the broadest reasonable interpretation. “Features” and “characteristics” don’t appear in Title 35 or section 37 of the CFR.

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