How To Respond To § 103 Obviousness Rejections Using The “All Elements Test” In View Of Recent Revisions To Section 2143.03 Of The Manual Of Patent Examining Procedure

May 5, 2008

in Examples of Responses,Prosecution Strategy

A while back, in response to my post on citing to the Manual of Patent Examining Procedure, reader Michael Hull of Miller, Matthias & Hull asked an astute question (thank you!) about whether section 2143 of the Manual of Patent Examining Procedure (MPEP) would be rewritten in response to KSR. Well, for those who may not be aware, this section has indeed been rewritten. One of the more noteworthy revisions is the removal of the so-called “all elements test” from section 2143.03, which requires the teaching or suggestion of every claim feature by an asserted combination/modification.

The specific changes to section 2143.03 are indicated below:

2143.03 All Claim Limitations Must Be Taught or SuggestedConsidered

To establish prima facie obviousness of a claimed invention, all the claim features must be taught or suggested by the prior art. In re Royka, 490 F.2d 981, 180 USPQ 580 (CCPA 1974). All words in a claim must be considered in judging the patentability of that claim against the prior art.” In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970). If an independent claim is nonobvious under 35 U.S.C. 103, then any claim depending therefrom is nonobvious. In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988).

It remains to be seen if this particular modification will have any significant effect on prosecution (except to lengthen it and possibly result in more appeals). Based on the following, however, I submit that the all elements test is still good law and should remain in a prosecutor’s arsenal. Consider the following:

  1. The MPEP is not law. The Federal Circuit has repeatedly affirmed that the MPEP does not have the force of law. Rather, it is evidence the USPTO’s interpretation of statutes and regulations. Molins PLC v. Textron, Inc., 48 F.3d 1172, 1180 (Fed. Cir. 1995).
  2. The USPTO is bound by Federal Circuit precedent. This is blackletter law. 35 U.S.C. § 2(b) authorizes the Commissioner of the USPTO to establish regulations not inconsistent with law for the conduct of proceedings before the USPTO. Also, it is for this reason that the Federal Circuit has jurisdiction over appeals from decisions by the Board. See 35 U.S.C. § 141.
  3. KSR did not overrule In re Royka, 490 F.2d 981, 180 USPQ 580 (CCPA 1974). The KSR decision did not address the issue of the all elements test because all of the elements were present in the asserted combination. Instead, it was the propriety of the asserted combination that was at issue. I addressed KSR and some of its effects in an earlier post here. Thus, In re Royka is still good law.
  4. New, revised section 2143.03 is not incorrect, just incomplete. Section 2143.03 instructs Examiners to consider each claim feature. This is not an incorrect statement of the law regarding 35 U.S.C. § 103. However, it is also correct that, in addition to consideration, In re Royka still requires that each claim feature must be present (i.e., taught or suggested) by an asserted combination.

Coming up – Examples of ways to assert the all elements test in view of the revision to section 2143.03.

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© 2008, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

{ 9 comments… read them below or add one }

anon May 5, 2008 at 3:06 pm

I bet Royka was deleted from the MPEP because of Leapfrog v. Fisher-Price (Fed. Cir. 2007), where the omission of a claim limitation (a reader) in the prior art references didn’t preclude a finding of obviousness.

Babel Boy May 15, 2008 at 6:02 pm

Michael, this point is insidious and really needs to be aired. Thanks. There has also been some discussion of it over at PatObv where New Attorney raised the issue on Feb14.08.

I believe one of the difficulties with all 103 issues is the failure to recognize a 3-way distinction between steps/elements v. limitations v. functions. I call this a S/ELF analysis.

MPEP 2141 now says that all claimed LIMITATIONS need not be present in the cited PA. MPEP does not say, nor did KSR, that all of the STEPS/ELEMENTS need not be met by the PA. Note, KSR was not about elements, it was about limitations. The elements were all known; the manner of combining, which is a limitation, was at issue.

If the examiner cites art in a 103 rejection that does not disclose each of the claimed steps/elements (or an obvious substitute), it’s a bad rejection. It is not prima facie. I call this the All Elements Rule II to distinguish from the infringement all elements rule.

In contrast, the claimed limitations need not be expressly disclosed in the cited PA, they can be added on the grounds that they would be obvious to an PHOSITA-head. I mean, this was what Graham was all about.

IOW, claim limitations are subject to being inserted into the PA by the examiner as obvious. But if the examiner does that, he must provide an explanation. Moreover, the examiner cannot supply elements/steps that are missing from the PA. [I admit I am struggling to cite case law to support this last proposition. Please anybody help if you can.]

This is the basis for a single-reference 103 rejection — one reference that discloses all of the claim elements but not all of the limitations will not work for a 102 rejection, because 102 requires both claimed steps/elements AND claimed limitations to be disclosed in a single reference. But the same reference might work for a 103 rejection if the missing claimed LIMITATION is supplied by the examiner as being obvious.

Like you, Mr. Hull, and New Attorney have already noted, pre-KSR MPEP 2141 said clearly all claimed elements must be present in the 103 PA. But I do not now see in the post-KSR MPEP (or in KSR itself) a statement that all elements must be present in the 103 references. Nor do I see the contrary statement that all elements need not be present in the PA in a 103 rejection.

However, 103 itself says the subject matter as a whole must be met by the PA, and I take that to mean each and every element and step.

Interestingly, KSR was about limitations but does not have a single word about claim limitations. I think the justices, like many examiners and practitioners, don’t appreciate that there may be legal distinctions between elements/steps and limitations for the purposes of 103 analysis. I believe a S/ELF analysis is very helpful in drafting claims and evaluating rejections.

Finally, anon is absolutely right. Royka has been removed from the MPEP, a discussion of Leapfrog is found at 2143.01 of the lastest version of MPEP.

Recall that buried in the new rules package now before the CAFC was a regulation that would have given the MPEP the authority of law in rejections. What a chilling thought. . .

Sorry this is so long.

Itzhak Yogev May 18, 2008 at 3:17 pm

MPEP changed considerably, apparantly in the last few days. It now includes all KSR, and some of 2143 was taken out. Babel Boy, what is the difference between limitation and element? If the claim reads “a device having an element” isn’t it a limitation??

Babel Boy May 20, 2008 at 4:49 pm

Itzhak

In an article of manufacture context, an element would be a physical component; grammatically, a noun. A limitation would be an adjective or adjective phrase modifying the element. “A wheel, said wheel comprising a metal rim and a plurality of spokes.” “Rim” and “spokes” are elements, “metal” and “plurality” are limitations.

“Wherein” phrases are almost always limitations even if they include structure because they modify other structure. “. . .wherein the spokes have brass collars” would be a limitation.

It is clear that every single element AND limitation must be met by a single reference in a 102 rejection. My point is, and it is by no means widely accepted, that every element (or an equivalent) must be met by the references in a 103 rejection, but the examiner has “103 latitude” to add claimed limitations that are not expressly disclosed by any cited reference, if those limitations are obvious to a PHOSITA-head.

Christopher Paul Mitchell (Chris) May 22, 2008 at 6:52 pm

Babel Boy – can you point to a single case recognizing a distinction between a limitaiton and an element (or a feature, or whatever other term practitioners may use use (e.g., “feature”))?

–Chris

Babel Boy May 23, 2008 at 5:56 pm

Chris,

You are bang-on, buddy. Not even the big cases make the distinction. In fact I cannot cite a case on obviousness where an element was at issue. They all seem to be decided on limitations.

In Graham there is a section heading: “Obviousness of the Differences.” I think we all tend to lose touch with what it is that must be obvious. It’s the difference between the claim and the art. If the art lacks an element, it very hard to conclude that there is no difference. But gradations and significance of differences in limitations in claims and art can always be argued.

What was at issue in Graham? Not the plow shank or the spring clamp. It was the position of a bolt relative to a hinge plate. Bolts and hinge plates are elements, but it was the placement — the limitation — that was held obvious. Although the case was entirely about limitations, the USSCt did not mention “limitation” once.

In Calamar, the sister case reported contemporaneously with Graham, the issue was also entirely about limitations — the positions of a rib seal and over-cap on a sprayer. Here, the USSCt explicitly pointed out that these were obvious limitations.

In the original obviousness case, Hotchkiss v. Greenwood, 1850, the issue was using porcelain instead of wood to make a doorknob. Choice of material of manufacture would be a limitation. No new elements were at issue. [The dissent raised the issue of how the knob was attached as a point of novelty.]

How about KSR? No elements at issue. What was at issue was the position of the sensor of the pedal movement.

I don’t know of any cases in which an element is argued as being obvious or non-obvious over existing art. I don’t know of any cases making a distinction. Judges, examiners, and prosecutors lump elements, limitations, and functions all together. I think this is a major defect in our case law and sloppy analysis.

Christopher Paul Mitchell (Chris) May 26, 2008 at 2:16 am

Babel Boy – thank you for your well articulated response. I now fully appreciate the distinctions noted. However, I remain curious as to their source. That is, while these categories are logical, I am curious as to the breadth of their recognition, not just in America, but the world over.

Also, I remain curious as to their applicability in the software arts: My thought is that most claim “elements” in software cases are in fact “limitations.” That is, I wonder if a software claim “element” could ever exist. If the answer is no, then that suggests to me that the distinctions may have limited applicability (e.g., perhaps only in the mechanical arts).

Again, thank you for your response.

–Chris

Babel Boy May 26, 2008 at 4:22 pm

Chris

Exactly. If the S/ware is claimed as a method, then the analysis is what is a step and what is a limitation of the step. To reject the claim, the examiner has to find each step in the art and the totality of the steps obvious.

But if the S/ware is claimed as “. . .media containing instructions executable by a computer, said instructions including . . .” then you’re right, it’s all limitations, which are subjective and open to off-the-cuff obviousness rejections by examiners and courts.

confused SCOTUS November 18, 2008 at 8:46 am

Actually, there is ample case law that suggests limitation and element can (and often are) used synonymously or at least in the sense that there is no meaningful difference between the two. See for example famous Festo 1999, “The claim 1 ‘limitation’ or ‘element’ at issue in the Carroll patent is stated as follows…” The important thing to remember is simply “what are the differences between the claimed invention and the prior art”, whether the differences are components or parts, or modifications or descriptions of those components or parts.

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