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Obviousness, technical reasoning and inherency September 25, 2013

Posted by Brian Schar in Patent prosecution, USPTO.
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A recent PTAB case, Ex parte Nishida, provides an excellent illustration of a fundamental mistake made with some regularity by examiners, and also provides a roadmap for correcting that mistake on appeal.

An obviousness rejection requires a finding that the prior art contains all the elements of the claim, across one or more references, and requires technical reasoning for combining those references.  Where the prior art does not include all of the elements of the claim, the examiner can find that one or more of those elements is inherent, but to do so he or she must provide technical reasoning as to how that purportedly inherent element “necessarily flows” from the teachings of the prior art.

In Ex parte Nishida, the Examiner found that the combination of four cited prior art references “fails to explicitly disclose the gaps/trenches to have different depths as recited in claim 1.”  This sentence or a variant thereof signals the fundamental mistake I wrote about above.  Whenever you receive an Office Action that includes the words “fails to explicitly disclose” or similar, your internal Winning Appeal Detector should start beeping or ringing or doing whatever it does.

The Examiner then did what many do when inexperienced, or pressed for time.  He simply stated, without support, that “one of ordinary skill in the art would know that [the claimed] different gap/trench depths would be required.”  However, a bare assertion is not “technical reasoning.”  It is akin to what Examiners deride as “mere attorney argument.”  (When feeling snarky, in particularly egregious cases I’ve characterized unsupported Examiner statements as “mere Examiner argument.”)

The Board saw right through this, and in an admirable bit of succinct clarity held that “the Examiner provides no support for that argument. The Examiner’s mere speculation is not sufficient for establishing a prima facie case of obviousness.”  And with that, the applicant won reversal.

So why do Examiners do this?  In my experience, there is an intersection between inherency, “broadest reasonable interpretation” and technical reasoning.  Because it is challenging, and an uphill battle, to establish inherency as something that “necessarily flows” from the prior art as required by MPEP 2112, sometimes Office Actions will include some inherency-like hand-waving.  I often characterize this as an implicit inherency rejection.  If the claims requires A, B, C, and D, and none of the 4 references cited include D, an Examiner can simply state, as in Nishida, that one of ordinary skill in the art would just know that D is required.  Or, the interpretation of element D will be twisted like a nose of wax so that something in the prior art can be used to read on element D.  Be alert to both of these tactics, and when they come up, take the argument back to what it really is: where an element of the claim isn’t present in the cited art, and the Examiner admits it, he or she bears the burden of making the inherency argument in regard to that element, or at a minimum of setting forth some kind of technical reasoning.  Where neither burden has been met,  you will win.

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