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 – Part II

May 27, 2008

in §§102 and 103 Rejections,Examples of Responses,Practice Suggestions,Prosecution Strategy

In an earlier post, I discussed reasons why it is preferable to rely on the MPEP for authority during prosecution. An exception to this guideline is when the MPEP is either incorrect or incomplete, which I suggest is the case with newly revised Section 2143.03.

So what is an Applicant to do when the MPEP is incomplete? My suggestion, anecdotally seconded by many readers of this blog, is to cite decisions of the Board of Patent Appeals and Interferences (BPAI). Fortunately, the BPAI still enforces the all elements test.

For example, a January 2008 BPAI decision entitled In re Wada and Murphy (pdf) reversed a § 103 rejection because the Examiner did not explain where or how cited art taught or suggested all of the features of a claimed invention (thank you Yancey Hunter!). Of particular interest is the following BPAI articulation of applicable law:

When determining whether a claim is obvious, an examiner must make “a searching comparison of the claimed invention – including all its limitations – with the teaching of the prior art.” In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995) (emphasis added). Thus, “obviousness requires a suggestion of all limitations in a claim.” CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)). Moreover, as the Supreme Court recently stated, “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (emphasis added)).

Authority such as this is difficult for an Examiner to dismiss.

Example of a Brief Legal Summary

The following is an example of a brief discussion of the current state of the “all elements test” that might be usable to advise an Examiner that the Office cannot simply ignore a claim feature in an obviousness determination. Presume that independent claim 1 has been rejected under § 103 as unpatentable over an asserted combination of two patents to Smith and Jones but that a specified feature has not been specifically addressed by the Office.

For any of these reasons, the aforementioned feature of independent claim 1 cannot reasonable be said to be present in the asserted combination.

The failure of an asserted combination to teach or suggest each and every feature of a claim remains fatal to an obviousness rejection under 35 U.S.C. § 103, despite any recent revision to the Manual of Patent Examining Procedure (MPEP).

Section 2143.03 of the MPEP requires the “consideration” of every claim feature in an obviousness determination. To render claim 1 unpatentable, however, the Office must do more than merely “consider” each and every feature for this claim. Instead, the asserted combination of the patents to Smith and Jones must also teach or suggest each and every claim feature. See In re Royka, 490 F.2d 981, 180 USPQ 580 (CCPA 1974) (emphasis added) (to establish prima facie obviousness of a claimed invention, all the claim features must be taught or suggested by the prior art). Indeed, as the Board of Patent Appeal and Interferences has recently confirmed, a proper obviousness determination requires that an Examiner make “a searching comparison of the claimed invention – including all its limitations – with the teaching of the prior art.” See In re Wada and Murphy, Appeal 2007-3733, citing In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995) (emphasis in original). Further, the necessary presence of all claim features is axiomatic, since the Supreme Court has long held that obviousness is a question of law based on underlying factual inquiries, including … ascertaining the differences between the claimed invention and the prior art. Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966) (emphasis added). Indeed, Applicant submits that this is why Section 904 of the MPEP instructs Examiners to conduct an art search that covers “the invention as described and claimed.” (emphasis added). Lastly, Applicant respectfully directs attention to MPEP § 2143, the instructions of which buttress the conclusion that obviousness requires at least a suggestion of all of the features of a claim, since the Supreme Court in KSR Int’l v. Teleflex Inc. stated that “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).

In sum, it remains well-settled law that obviousness requires at least a suggestion of all of the features in a claim. See In re Wada and Murphy, citing CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) and In re Royka, 490 F.2d 981, 985 (CCPA 1974)).

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© 2008, Michael E. Kondoudis

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

{ 4 comments… read them below or add one }

Babel Boy June 5, 2008 at 2:51 pm

This line of posts is one of the most interesting and helpful on the entire IP blogosphere.

The use of the tag “All Elements Rule” might be confusing because there is another, more widely used all elements rule — in order to infringe the infringing device must meet all of the elements of the infringed claim.

All Elements Rule II? All S/ELF Rule? (Steps/Elements, Limitations, and Functions)

confused SCOTUS November 18, 2008 at 8:29 am

This is yet another reason NOT to cite the MPEP, in addition to the ones I identified in my comment to your previous post. Citing the MPEP, especially ad nauseam, is merely a way to fluff up a response, and many clients, especially foreign clients, are well-aware of this. And why the heck cite the MPEP, if you have to confirm whether each and every cite you make is actually a correct disposition of the law in the first place? Save your client’s time/money and the possibility of jeopardizes your client’s patent right, and simply do not cite the MPEP.

mike November 18, 2008 at 9:24 pm

confused SCOTUS,

Thank you for your comment. I think you might want to revisit my original post on why one should consider citing to the MPEP. I suggest that citations should only be used when they are necessary and then only judicially. No one on this blog has ever advocated citing the MPEP “Ad nauseam.”

Feigin, Patent Attorney November 12, 2009 at 5:29 pm

This is great! This BPAI case is really interesting in light of KSR, but hey, I like it! I plan to use info from this article quite a bit! Thanks!

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