Rebutting Obviousness Rejections by way of Anti-Obviousness Case Law

Rebutting Obviousness Rejections by way of Anti-Obviousness Case Law

Tom Brody

The most common strategies for rebutting obviousness rejections are to argue that the prior art fails to disclose all the claim elements and to argue that the examiner did not assert the proper rationale for combining references. An alternate strategy, or a strategy to use in addition, is to demonstrate that one or more relations exist between the primary reference and the secondary reference. These relations are: (1) Non-analogous art; (2) Rendering the prior art unsatisfactory for its intended purpose; (3) Proposed modification cannot change the principle of operation of a reference; (4) Redundant advantage; (5) Advantage provided by the secondary reference not needed by and not relevant to the primary reference; (6) Disparate references; (7) Context differs between cited references, and (8) Teaching away. This article names these relationships the anti-obviousness inquiry, because these relationships are applied only in rebuttal arguments and not in the examiner’s rejections. Rebuttal arguments making use of only the anti-obviousness inquiry (without any other type of argument) are sufficient to overcome obviousness rejections. The analysis herein only includes opinions from PTAB where the examiner’s asserted rationale was not weakened by being merely conclusory, and not weakened by the prior art not disclosing all the claim elements. An issue-spotting guide is provided for detecting conclusory rationales. The obviousness inquiry takes many, many forms with little in the way of a common property, and for this reason the author provides a unified concept of the obviousness inquiry using the family of resemblances concept of Wittgenstein.

99 J. Pat. & Trademark Off. Soc’y 192(2017)

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