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:
- 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).
- 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.
- 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.
- 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.
© 2008, Michael E. Kondoudis
The Law Office of Michael E. Kondoudis
DC Patent Attorney