Patentably Defined

© 2009, Michael E. Kondoudis

Based on the number of requests I have received since my first post on enablement, I know that many of you have been waiting for this follow up.  The following are a few examples employing the principles I discussed in my earlier post.  A word of caution, as is the case with most technical (non-art) rejections, enablement rejections are usually highly fact specific.  Consequently, there are almost an infinite number of ways to respond to any single enablement rejection.  The following are examples of two basic responses.  

Examples Of Responses To Enablement Rejections

Example 1 - Failure to Make Out A Prima Facie Case – No Analysis of Wands Factors.

The Office Action rejected claim 2 for allegedly failing to satisfy the enablement requirement of the first paragraph of 35 U.S.C. § 112.  This rejection is respectfully traversed.

Applicant respectfully submits that the Office has, by only providing a mere conclusion of nonenablement, failed to satisfy its burden to articulate a prima facie case.  And, without adequate notice of the basis of this rejection, the burden to rebut with evidence and/or argument has not yet shifted to Applicant.

The MPEP repeatedly warns that the Office bears always an initial burden of establishing a prima facie case when making an enablement rejection. (See, e.g., MPEP §§ 706.03, 2164.04).  A prima facie case of nonenablement is only satisfied when the Office establishes a reasonable basis as to why the scope of protection provided by a claim is not adequately enabled by the disclosure. (MPEP § 2164.04)(emphasis added).  This requires that the Office make specific findings of fact, supported by evidence, and then draw conclusions based on those findings of fact.  (MPEP § 2164.04).  This requires, at a minimum, discussion of those Wands factors, reasons, and evidence that lead the Examiner to conclude that the specification fails to teach how to make and use the claimed invention without undue experimentation, or that the scope of any enablement provided to one skilled in the art is not commensurate with the scope of protection sought by the claims.  (Id.).  Simply put, mere conclusory statements are insufficient to support an enablement rejection and must be based on evidence, not mere opinion.  (MPEP § 2164.05).

It is also well settled that the burden to respond only shifts to an Applicant after the Office has established a prima face case, which requires that the Office: (1) weigh all the evidence; and (2) establish a reasonable basis to question the enablement provided for the claimed invention.   (MPEP § 2164.05).

A review of the Office Action reveals only the mere conclusion that “there is no enabling disclosure of an incipient component”.  (Office Action, page 3).  Missing, for example, is any discussion of even a single Wands factor or any indication that any evidence has been weighed, as the MPEP expressly requires.  (MPEP § 2164.01(a)).  Indeed, the rejection is devoid of any evidence or technical reasons as to why the disclosure fails to enable the claimed invention.   Rather, the provided “reason” is a mere conclusion, which the MPEP expressly warns is insufficient to support this rejection. (MPEP §§ 706.03, 2164.05).

The Office’s failure to meet its burden to articulate a “reasonable basis” challenging the enablement of claim 2 alone is fatal to this rejection since Applicant is under no burden to rebut it. (MPEP §§ 706.03, 2164.05). For this reason, this rejection is traversed.

Accordingly, Applicant respectfully requests favorable reconsideration and withdrawal of the rejection of claim 2 under the first paragraph of 35 U.S.C. § 112.

In the event that the Office maintains this rejection, Applicant respectfully requests, in accordance with the principles of compact prosecution, that the Office fully develop the reasons for this rejection by articulating, on the record, those factors, reasons, and evidence that lead it to conclude that the specification fails to teach how to make and use the claimed invention without undue experimentation, or that the scope of any enablement provided to one skilled in the art is not commensurate with the scope of protection sought by the claims.  (See MPEP § 2164.04)(emphasis in original).

Example 2 - A Substantive Response

Claim 1 stands rejected under the first paragraph of 35 U.S.C. § 112 as allegedly not being enabled.  Specifically, the Office Action rejected this claim because of the recitation of an outer terminal that restricts an upper movement of a movable portion of a support structure.  (Office Action, page 2).  This contention is respectfully traversed for at least the following reasons.

The enablement requirement of § 112 is satisfied when an application describes a claimed invention in a manner that permits one of ordinary skill to practice it, without undue experimentation. (MPEP § 2164.01).   Thus, the mere fact that experimentation might be required is insufficient to support an enablement rejection.  Further, even complex experimentation is not necessarily undue.  (MPEP § 2164.01).

Applicant respectfully submits that no experimentation is required to make and use the invention of claim 1.  Nonetheless, even if experimentation might be required, it would not be undue.  In this regard, it is important to be mindful that the question of enablement is one of predictability in view of what is known in the art.  Consequently, the amount of guidance or direction needed to satisfy the enablement requirement is inversely related to the amount of knowledge in the state of the art as well as the predictability in the art.  (MPEP § 2164.03).

The specific question of whether experimentation is “undue” is determined based on the following eight Wands factors:

1. Breadth of the claims;
2. Nature of the invention;
3. State of the prior art;
4. Level of ordinary skill in the art;
5. Predictability of the art;
6. Amount of direction provided in the specification;
7. Any working examples; and
8. Quantity of experimentation needed relative to the disclosure.

(MPEP § 2164.01(a), citing In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)).  Further, a proper analysis of whether any experimentation is undue requires an analysis of all of the pertinent Wands factors.  (MPEP § 2164.01(a))(emphasis added).  It is improper to conclude that a disclosure is not enabling based on an analysis of only one of the above factors while ignoring one or more of the others.  (Id.).

Claim 1 is directed to a novel semiconductor substrate.  It is submitted that the level of ordinary skill in the relevant art, the scope of which is not addressed in the Office Action, is relatively high.  In addition, Applicant’s FIGS. 1-3 illustrate an example of the invention of claim 1.  Further, Applicant describes a method of manufacturing the substrate of claim 1, a fact evidenced by the Restriction Requirement imposed by the Office Action mailed on 02/15/2008.  As a result, at least the following Wands factors weigh in favor of enablement:

• the state of the prior art;
• the level of ordinary skill in the art; and
• the presence of working examples.

These are not the only Wands factors weighing in favor of enablement, however.

Attention is respectfully directed to page 12, lines 13-24 of the present application, which in conjunction with FIG. 1(B), explains:

When it is not necessary to seal the movable structure 15 in a closed space, the first sealing portion 20 may be formed of a plurality of first sealing portions 20a arranged in a comb shape with gaps as shown in FIG. 2(B). In this case, each of the first sealing portions 20a has a mountain shape having slopes. Each of the first sealing portions 20a individually seals a set of the outer terminal 17, the wiring portion 17a connected to the outer terminal 17, and the electrode pad 18 connected to the wiring portion 17a. As shown in FIG. 1(B), the outer terminal 17 has a height E such that the movable structure 15 is adjustable in the arrow direction A to measure specific acceleration upon mounting.

(Emphasis added).  Thus, Applicant explains that the height of the outer terminal permits vertical adjustment of the movable structure (the A direction in FIG. 1(B)).  This at least implies restricting movement.  Consequently, the following Wands factors also favor enablement:

• such as quantity of experimentation needed relative to the disclosure; and
• the amount of direction provided in the specification also favor enablement.

In view of the foregoing, Applicant respectfully submits that ordinarily skilled artisans would be able to make and use the claimed invention, despite any experimentation that might be required.  Applicant further submits that this conclusion is buttressed by the amount of knowledge in the state of the art as well as the predictability of the art, as well as the majority of Wands factors that weigh in favor of enablement.  Therefore, the present application adequately enables the claimed invention.

Applicant thus respectfully requests favorable reconsideration and withdrawal of the rejection under 35 U.S.C. § 112.

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

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© 2009, Michael E. Kondoudis

This post is the first of a two-part series on the enablement requirement. This first installment discusses some of the fundamentals of the requirement, relevant law, and the standards for compliance. The second installment will provide examples of responses to enablement rejections.

The Basis for the Enablement Requirement

The enablement requirement arises from the first paragraph of 35 U.S.C. § 112, which states in relevant part:

[t]he specification shall contain a written description of the invention, and the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same . . .

The purpose of the enablement requirement is to ensure that patented inventions are communicated to the public in a meaningful way.

Fundamentals of the Enablement Requirement

1.    The USPTO’s guidelines for examination of patent applications for compliance with the enablement requirement are found in Section 2164 of the MPEP. This should be an Applicant’s primary resource for authority when articulating responses to enablement rejections.

2.      All questions of enablement are evaluated against claimed subject matter. (MPEP 2164.08).

3.     The test for enablement is whether one of ordinary skill would need to engage in undue experimentation to practice the claimed invention. (MPEP 2164.01).

4.    Whether experimentation is “undue” is determined based on the following eight Wands factors:

1. Breadth of the claims;
2. Nature of the invention;
3. State of the prior art;
4. Level of ordinary skill in the art;
5. Predictability of the art;
6. Amount of direction provided in the specification;
7. Any working examples; and
8. Quantity of experimentation needed relative to the disclosure.

(MPEP 2164.01(a), citing In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)).

5.  A proper analysis of whether any experimentation is undue requires an analysis of all of the Wands factors.  (MPEP 2164.01(a)).  It is improper to conclude that a disclosure is not enabling based on an analysis of only one of the above factors while ignoring one or more of the others.  (Id.).

6.  The amount of guidance or direction needed to satisfy the enablement requirement is inversely related to the amount of knowledge in the state of the art as well as the predictability in the art. (MPEP 2164.03).  Thus, the question of enablement is one of predictability in view of what is known in the art.

Additional Points

1.  The fact that experimentation may be complex does not necessarily make it undue, if the art typically engages in such experimentation.  (MPEP 2164.01).

2.   A patent need not teach, and preferably omits, what is well known in the art.  (MPEP 2164.01).  Further, an Applicant need not “enable one of ordinary skill in the art to make and use a perfected, commercially viable embodiment absent a claim limitation to that effect.” (MPEP 2164).

3.  Any part of the specification can support an enabling disclosure, even a background section that discusses, or even disparages, the subject matter disclosed therein. (MPEP 2164.01, citing Callicrate v. Wadsworth Mfg., Inc., 427 F.3d 1361, 77 USPQ2d 1041 (Fed. Cir. 2005)(discussion of problems with a prior art feature does not mean that one of ordinary skill in the art would not know how to make and use this feature)).

4.   The specification need not contain an example if the invention is otherwise disclosed in such manner that one skilled in the art will be able to practice it without undue experimentation.  (MPEP 2164.02).

5.  As long as the specification discloses at least one method for making and using the claimed invention that bears a reasonable correlation to the entire scope of the claim, then the enablement requirement of 35 U.S.C. 112 is satisfied.  (MPEP 2164.01(b)).

6.   Claims must be enabled as of their filing date.  (MPEP 2164.05(a)).

7.    Enablement is judged from the perspective of an ordinarily skilled artisan.  (MPEP 2164.05(b)).

The Office’s Burden

1. It is always incumbent on an Examiner to fully develop the reasons for a technical rejection (enablement, written description, etc.).

• Section 706.03 of the MPEP warns Examiners that “[w]here a major technical rejection is proper (e.g., lack of proper disclosure, undue breadth, utility, etc.) such rejection should be stated with a full development of the reasons rather than by a mere conclusion coupled with some stereotyped expression.” Thus, mere conclusory statements are insufficient to support a rejection under Section 112. Consequently, the Office must arguably provide a reasonable basis to reject a claim for failing to satisfy the enablement requirement, and this requires “a full development” of the reasons for the rejection.

• This obligation to establish a prima facie case is affirmed by the MPEP in its discussions of each requirement of the first paragraph of 35 U.S.C. § 112. (See, e.g., MPEP § 2163 (III)(A) (written description); MPEP § 2164.04 (enablement)).  A prima facie case requires a reasonable basis to challenge the adequacy of the written description. (MPEP § 2164.04).

• In accordance with the principles of compact prosecution, if an enablement rejection is appropriate, the first Office action on the merits should present the best case with all the relevant reasons, issues, and evidence so that all such rejections can be withdrawn if applicant provides appropriate convincing arguments and/or evidence in rebuttal. The principles of compact prosecution also dictate that if an enablement rejection is appropriate and the examiner recognizes limitations that would render the claims enabled, the examiner should note such limitations to applicant as early in the prosecution as possible.  (MPEP 2164.04).

2.   An Examiner should always look for enabled, allowable subject matter and communicate to applicant what that subject matter is at the earliest point possible in the prosecution of the application.  (MPEP 2164.04).  Thus, if a rejection is made based on the view that the enablement is not commensurate in scope with the claim, the examiner should identify the subject matter that is considered to be enabled.  (MPEP 2164.08).

3.  The Examiner’s analysis must consider all the evidence related to each of these factors, and any conclusion of nonenablement must be based on the evidence as a whole.  (MPEP 2164.01(a)).

4.    Only after the Examiner has weighed all the evidence and established a reasonable basis to question the enablement provided for the claimed invention, does the burden fall on applicant to present persuasive arguments, supported by suitable proofs where necessary, that one skilled in the art would be able to make and use the claimed invention using the application as a guide.  (MPEP 2164.05).  The evidence provided by applicant need not be conclusive but merely convincing to one skilled in the art. (Id.).

5. The MPEP instructs Examiners that they must assume compliance with the enablement requirement when an application includes a teaching of how to make and use invention “in terms which correspond in scope to the claims.”  This mandate may be only ignored when there is a basis to doubt the objective truth of the teaching.   (MPEP 2164.04).

So, unless a rejection articulates “evidence or some technical reasoning” that either (i) an enabling teaching does not correspond to the claims or (ii) a reason to doubt the objective truth of such a teaching, the mere presence of a teaching requires that the Office assume that this requirement is satisfied.

Coming Soon in Part II - Examples of Responses to Enablement Rejections

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

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© 2009, Michael E. Kondoudis

This post discusses requests to withdraw finality.  Under the USPTO’s policy of compact prosecution discussed here, a second office action may properly be made final under most circumstances.  The circumstances are set forth in §706.07(a) of the Manual of Patent Examining Procedure (MPEP), entitled Final Rejection, When Proper on Second Action, which states:

Under present practice, second or any subsequent actions on the merits shall be final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims, nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p).

The MPEP, in §706.07(d), also provides a remedy when a final Office Action is issued and the conditions of §706.07(a) have not been satisfied.  That section, entitled Final Rejection, Withdrawal of, Premature, provides:

If, on request by applicant for reconsideration, the primary examiner finds the final rejection to have been premature, he or she should withdraw the finality of the rejection. The finality of the Office action must be withdrawn while the application is still pending. The examiner cannot withdraw the final rejection once the application is abandoned.

The following are a few examples of successful Requests to Withdraw Finality.

—- EXAMPLES —-

This first example was submitted in response to a final Office action that mischaracterized a claim.

REQUEST FOR WITHDRAWAL OF FINALITY

Applicants are in receipt of a final Office Action mailed March 13, 2007, in this application. Applicants respectfully request that the finality of the subject Office Action should be withdrawn because the Office has expressly and erroneously misinterpreted claims and, as a result, has failed to consider the patentability arguments presented in the most recently filed Amendment. Further, the Office’s express, incorrect claim characterization precludes the Office Action from addressing the merits of the argument presented concerning one of the presented independent claims.

In support of this request, Applicants state the following:

1. On December 20, 2006, Applicants filed an Amendment that presented independent claim 15 with the following claim recitation:

a disk protector disposed at an outer edge of the disk damper….

2. In response to the Amendment filed December 20, 2006, the Office mailed a final Office Action on March 13, 2007, which explained that all rejections were maintained because:

Applicant argues the limitations which are not in the claim language” because Applicants only claim “…arranged/disposed along an outer edge of the disk damper…Applicant does not claim “…at an outer edge of the disk damper.”

(Office Action, page 3).

3. The aforementioned statement of paragraph 2 is manifestly incorrect and without basis in fact. Indeed, Applicants’ independent claim 15 expressly recites “at.”

4. Section 707.07(f) of the Manual of Patent Examining Procedure (MPEP) instructs that:

Where the applicant traverses any rejection, the examiner should, if he or she repeats the rejection, take note of the applicant’s argument and answer the substance of it.

5. The Office repeated the rejections of all of the claims. The Office, however, neither “took note” of Applicants’ argument nor “answered the substance” of Applicants’ argument. Thus, the final Office Action is deficient because the Office failed to satisfy the requirements of MPEP § 707.07(f).

6. Also, it is submitted that the outstanding Office Action has taken an improper and unreasonable interpretation of claim terms. And, for this additional reason, Applicants respectfully submit that the outstanding Office Action is improper.

In view of the foregoing, Applicants respectfully request withdrawal of the finality of the outstanding Office Action and further request a new non-final Office Action that addresses the merits of claim 15.

This second example was submitted in response to a final Office action that first rejected features that were previously presented for examination.

REQUEST FOR WITHDRAWAL OF FINALITY

Applicant is in receipt of a final Office Action mailed December 25, 2007, in this application.  Applicant respectfully submits that the finality of the subject Office Action is premature and therefore requests withdrawal of that finality, pursuant to Section 706.07(d) of the Manual of Patent Examining Procedure (MPEP).

Grounds
As grounds for this Request, Applicant states as follows:

1.  The final Office Action rejects independent claim 1 on new grounds.  As the Office itself states, “Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action.”  (Final Office Action, page 6).

2.  The sole amendment to independent claim 1 was made in an Amendment filed October 25, 2008.  In that Amendment, Applicant cancelled original claim 2 and amended independent claim 1 to recite the features of cancelled claim 2.

3.  The features of claim 2 that were added to independent claim 1 were previously presented for examination.  Thus, the added features could have been rejected in an earlier Office action but were not.

4.  Section 706.07(a) of the MPEP specifies the conditions under which the finality of a second or subsequent Office action is proper, providing that:
Under present practice, second or any subsequent actions on the merits shall be final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims nor based on information submitted in an information disclosure statement….

5.  Applicant submits that because the features added to independent claim 1 were presented for examination in the preceding Office Action, the new ground of rejection of claim 1 made in the final Office Action cannot reasonably be said to be either necessitated by a claim amendment or an Information Disclosure Statement.

Conclusion
The conditions set forth in § 706.07(a) of the MPEP have not been satisfied.  Accordingly, for that reason alone, as well as the interests of fairness, the finality of the final Office Action should be withdrawn.

This final example was submitted in response to a final Office action that rejected a claim for the first time.

REQUEST FOR WITHDRAWAL OF FINALITY

Applicant is in receipt of a final Office Action mailed December 25, 2007, in this application.  Applicant respectfully submits that the finality of the subject Office Action is premature and therefore requests withdrawal of that finality, pursuant to Section 706.07(d) of the Manual of Patent Examining Procedure (MPEP).

Grounds For Request
As grounds for this Request, Applicant states as follows:

1.  The final Office Action rejected independent claim 20.

2.  The non-final Office Action that immediately preceded the final Office Action did not reject independent claim 20.

3.  Section 706.07(a) of the MPEP specifies the conditions under which the finality of a second or subsequent Office action is proper, providing that:

Under present practice, second or any subsequent actions on the merits shall be final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims nor based on information submitted in an information disclosure statement….

4.  Applicant submits that the rejection of independent claim 20 is a new ground of rejection.  Also, because Applicant neither amended claim 20 nor filed an IDS between the subject non-final and final Office actions, the conditions required by MPEP § 706.07(a) cannot yet be satisfied.

Conclusion
The conditions set forth in § 706.07(a) of the MPEP have not been satisfied.  Accordingly, for that reason alone, as well as the Office’s policy of compact prosecution, the finality of the final Office Action should be withdrawn.

Two last comments.  First, I prefer to file these Requests as separate, stand alone documents.  Second, each of the examples in this post is based on successful Request.  They are by no means appropriate for every final Office action.  But, when finality is premature, this type of Request can be an effective remedy.

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

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© 2008, Michael E. Kondoudis

This is the second in a two-part series on Official Notice and strategies for responding to rejections based on Official Notice.  In part one of this series, I discussed basic principles of Official Notice.  What follow are a few examples of responses to rejections based on the principles discussed in my earlier post.

Example 1 - An Improper Taking of Official Notice

Applicant respectfully traverses the rejection of independent claim 1 at least because the Office has failed to establish a prima facie case of obviousness.

In rejecting independent claim 1 under 35 U.S.C § 103, the Office Action contends:

It would have been obvious to one having ordinary skill in the art at the time the invention was made to replace the printer of Smith with the plotter of Jones since the Examiner takes Official Notice of the equivalent use in the art and the selection of any of these known equivalents to write information on a plastic card would be within the level of ordinary skill in the art.

Applicant respectfully traverses this attempted use of Official Notice as improper.  Consequently, a necessary element of a prima facie case is absent.

Firstly, it is to be appreciated that the Office Action attempts to officially notice legal conclusions, –namely “the equivalent use in the art and the selection of any of these known equivalents to write information on a plastic card would be within the level of ordinary skill in the art.”  Official Notice, however, is only proper for facts.  (MPEP § 2144.03).  Indeed, Official Notice is only permissible for those few facts that are of a “notorious character” and that are “capable of instant and unquestionable demonstration”.  (MPEP § 2144.03(A)).  It is improper to use Official Notice for conclusions of law.

Secondly, the Office Action relies on Official Notice as the “principal evidence” upon which the rejection of claim 1 is based.  Official Notice cannot be used in this manner.  As Section 2144.03(A) of the MPEP expressly warns, it is never appropriate to rely solely on Official Notice as the principal evidence upon which a rejection was based.  Instead, Official Notice is only appropriate for facts and that serve to “fill in the gaps” in a rejection.  (MPEP § 2144.03(A)).  This is why official notice is to be judicially applied.  (MPEP §  2144.03).  It is unreasonable to conclude that the Office has used Official Notice to “fill in” a gap in this rejection.

Thirdly, the Office attempts to take Official Notice of matter that is not “capable of instant and unquestionable demonstration”, as expressly required by section 2144.03(A) of the MPEP.  Indeed, even assuming arguendo that the equivalence of the subject printer and plotter is a fact, this fact would be neither of notorious character nor instantly and unquestionably demonstrable.  Moreover, courts have long rejected the notion that official notice can be taken on the state of the art.  (See Memorandum to Patent Examining Corps from the Deputy Commissioner for Patent Examining Policy regarding Procedures for Relying on Facts Which are Not of Record as Common Sense or for Taking Official Notice, n.6, citing In re Eynde, 480 F.2d 1364, 1370, 178 USPQ 470, 474 (CCPA 1973)).   Thus, the Office’s attempt to officially notice the level of ordinary skill in the art is improper as a matter of law.

In sum, the Office’s attempts at Official Notice are improper and traversed.  Consequently, there are evidentiary gaps in the rejection of independent claim 1 that are fatal to a prima facie case of obviousness.

Example 2 - An Ambiguous Taking of Official Notice

Lastly, Applicant notes, at page 4 of the Office Action, an apparent attempt to officially notice a fact.  If the Office has intended to take Official Notice, such an attempt is traversed, at least because it is not in compliance with the Office’s own procedures.

Proper use of Official Notice requires compliance with several obligations expressly set forth in the Manual of Patent Examining Procedure.   The Office has failed to meet these obligations.  Specifically, the Office has failed to satisfy its obligations under MPEP § 2144.03.  MPEP § 2144.03 (B), for example, expressly requires the Office to provide specific factual findings predicated on sound technical and scientific reasoning to support taking Official Notice. The MPEP goes on to explain that this means that the Office should present an Applicant with the explicit basis on which Official Notice is based so that the Applicant is able to challenge the assertion in the next reply after the Office action. (MPEP §2144.03(B)).  Naked assertions about what is allegedly known in the art, like those made at page 4 of the Office Action, cannot satisfy these requirements.
In the event that the Office is not attempting to take Official Notice, Applicant respectfully requests confirmation of this fact.

Finally, I recommend reviewing the cited Memorandum to Patent Examining Corps from the Deputy Commissioner for Patent Examining Policy from the first example.  It is a useful summary of the USPTO’s policies and instructions to its Examiners.

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© 2008, Michael E. Kondoudis

Official Notice is a principle in U.S. patent prosecution that authorizes an Examiner to depart from the general requirement to present evidence on the record to support a claim rejection.  By “taking official notice”, an Examiner may rely on facts beyond the record to reject claims.  Official Notice is intended for facts that are common knowledge or capable of unquestionable demonstration.

Background

Federal Courts, pursuant to the Administrative Procedure Act, review USPTO findings of fact under “the substantial evidence” standard, as a result of the Supreme Court’s decision in Dickinson v. Zurko.  This standard obligates the USPTO to provide a record that includes sufficient documentary evidence to enable judicial review.  This obligation, in turn, constrains the USPTO’s reliance on Official Notice to only facts that are “capable of such instant and unquestionable demonstration as to defy dispute.”

Additionally, there is a due process argument that an Applicant is entitled to appropriate notice as to why claims are rejected and why submitted patentability arguments are deemed unpersuasive.

A Memorandum from the Deputy Commissioner for Patent Examination Policy on the Procedures for Taking Official Notice is available here.

A leading decision concerning Official Notice is In re Ahlert, 424 F.2d 1088, 1091, 165 USPQ 418, 420-421, (CCPA 1970) (stating that assertions of technical facts in areas of esoteric technology must always be supported by citation of some reference work and allegations concerning specific knowledge of the prior art, which might be peculiar to a particular art, should also be supported).

General Principles

1.    Section 2144.03 of the Manual of Patent Examining Procedure (MPEP) provides guidelines for relying on Official Notice and personal knowledge.  This should be an Applicant’s primary resource for responding to a use of Official Notice.

2.    Official Notice is permissible only in limited circumstances. For example, use of Official Notice should be rare when an application is under final rejection or action under 37 CFR 1.113. (MPEP § 2144.03(A)).

3.    Official Notice is permissible only for certain types of facts; those that are capable of instant and unquestionable demonstration as being well-known.  Examples of such facts include those that are of common knowledge in the art. (MPEP § 2144.03(A)).

4.    It is never appropriate to rely solely on Official Notice as the principal evidence upon which a rejection was based. Instead, Official Notice is only appropriate for facts that are of “notorious character” and that serve to “fill in the gaps” that might exist in the evidentiary showing to support a particular ground of rejection. (MPEP § 2144.03(A)).

5.  The proper time for taking Official Notice is the first Office Action or as early as possible after a claim feature is presented for examination.  Ex parte Gambogi, 62 USPQ2d 1209 (BPAI, 2001)(unpublished).

6.    An Applicant must timely traverse an assertion of Official Notice or the noticed facts will be deemed to be admitted prior art. (MPEP § 2144.03(C)).  A timely traversal is one presented in the reply to the Office action.

7.    To traverse Official Notice, an Applicant must specifically point out the supposed error(s) in the Examiner’s action, which would include stating why the noticed fact is not considered to be common knowledge or well-known in the art.  So, a general allegation that the claims define a patentable invention without any reference to the examiner’s assertion of official notice would be inadequate.  (MPEP § 2144.03(C)).

The USPTO’s Burden

1.    The Office must provide specific factual findings predicated on sound technical and scientific reasoning to support taking Official Notice. (MPEP §2144.03(B)).

2.    The Office should present an Applicant with the explicit basis on which Official Notice is based so that the Applicant is able to challenge the assertion in the next reply after the Office action. (MPEP §2144.03(B)).

3.    An Examiner may rely on facts within his or her own knowledge to support a rejection.  When relying on personal knowledge, however, the Examiner must provide an affidavit or declaration setting forth specific factual statements and an explanation to support the finding.  (MPEP §2144.03(C)).  Such an affidavit is subject to contradiction or explanation by the affidavits of the Applicant and/or other persons. (See 37 CFR §1.104(d)(2)).

4.    When an Applicant challenges a factual assertion as not properly officially noticed or not properly based upon common knowledge, the Office must support the finding with adequate documentary evidence in the next Office action if the rejection is to be maintained.  (MPEP §2144.03(C)).

Proper Finality After Traversal

If an Examiner adds a document in the next Office action after an Applicant’s rebuttal, and that document is added only as evidence to support the maintenance of a rejection, the addition of a new document does not result in a new ground of rejection.  Accordingly, the Office action may properly be made final. If, however, the Examiner relies on the newly cited document in any other way, and no amendments are made to the claims, the finality of an Office action should be questioned.  See MPEP §2144.03(D).  Remember, a second or any subsequent action on the merits may properly be made final, unless an examiner introduces a new ground of rejection that is not necessitated by a claim amendment or an IDS.  (MPEP §706.07(a)).

Coming Soon - Sample Responses

The Law Office of Michael E. Kondoudis, PC
DC Patent Attorney

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© 2008, Michael E. Kondoudis

Inherency Defined

Inherency is a doctrine in U.S. patent prosecution by which unstated or unillustrated aspects of cited art are treated as if they are expressly disclosed.  The basis for this doctrine is that some things that will, as a matter of scientific fact, always flow from what is disclosed in art. 

This doctrine permits the USPTO to rely on more than just the mere express disclosures of applied art to reject claims under 35 U.S.C. §§102 and 103.

The doctrine of inherency is generally appropriate only in limited circumstances.

General Principles

1.    Subject matter is only inherent when extrinsic evidence makes it clear that the subject matter is necessarily present in (i.e., necessarily flows from) the disclosure of cited art, and that ordinarily skilled artisans would recognize it.  (MPEP 2112).

2.    Ordinarily skilled artisans, however, need not recognize this presence at the time of invention.   (MPEP 2112 (II)).

3.    Inherency cannot be established by mere possibilities or even probabilities.  The fact that a certain result or characteristic may occur or may be present in cited art is not sufficient to establish the inherency of that result or characteristic.  (MPEP 2112 (IV)), citing In re Rijckaert, 9 F.3d 1531, 1534, 28 USPQ2d 1955, 1957 (Fed. Cir. 1993) (reversing a rejection based on inherency because result due to optimization of conditions was not necessarily present in the prior art).

4.    The Patent Office’s guidelines for using inherency are found in Sections 2112 – 2112.02 of the MPEP.  This should be an Applicant’s primary resource for authority when responding to rejections based on inherency.

The Patent Office Always Bears an Initial Burden to Establish Proper Reliance on Inherency

It is always incumbent on an Examiner to develop reasons supporting a reliance on inherency.   (MPEP 2112 (IV)).

To fully develop reasons, the Office must provide reasonable support for invoking inherency.  This reasonable support requires “a basis in fact” (evidence) and/or reasoning tending to show that an allegedly inherent feature necessarily flows from the teachings of the applied art.  (MPEP 2112 (IV), citing Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990) (emphasis in original)).  Only after providing this reasonable support does the burden to rebut a claim rejection based on inherency shift to an Applicant.  (MPEP 2112 (V), 2112.01(I))).

The Office enjoys a few logical presumptions to help it provide reasonable support.  For example, reasonable support is presumed to be present when:

1. a claimed structure is substantially identical to that of applied art;
2. a claimed product is produced by a process substantially identical to that of applied art (identical processes produce identical products);
3. a claimed composition is physically identical to that of applied art (identical compositions must have the same properties).

When these circumstances are established, a prima facie case of anticipation or obviousness is made.  (MPEP 2112.01 (I)).

An Approach for Responding to Rejections Based on Inherency

An Applicant should always first consider whether the Office has met its burden under MPEP 2112 (IV) to provide a reasonable basis justifying a reliance on inherency.  Only after the Office has met this burden is it absolutely necessary to address the ultimate question of whether the evidence or reasoning is correct.  Nonetheless, as a practical matter, it is often advantageous to explain why allegedly inherent subject matter does not necessarily flow from cited art, even when the Office fails to justify its reliance on inherency.

Illustrative Examples

1.  A Failure to Articulate a Prima Facie Case

In rejecting claim 1 under 35 U.S.C § 102, the Office Action concedes that the Smith patent does not expressly or impliedly teach the aforementioned claim feature of a widget.  (Office Action, page 3).  Nonetheless, the Office rejects claim 1, contending that the feature of a widget is inherently taught by Smith.  Applicant respectfully traverses this rejection at least because the Office has not met its burden to fully develop reasons supporting its reliance on the doctrine of inherency.

The Office always bears the initial burden to develop reasons supporting a reliance on inherency.   (MPEP 2112 (IV)).  To satisfy this burden, the Office must identify some basis in fact or articulate some reasoning at least tending to show that allegedly inherent subject matter necessarily (i.e., inevitability) flows from cited art.  Indeed, the MPEP expressly instructs that:

“In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.”  Further, since a basis in fact and technical reasoning is required when inherency is invoked, a failure to provide such evidence or rationale is fatal to the reliance on this doctrine.  This is only logical since evidence “must make clear” that the allegedly inherent subject matter is necessarily present in (i.e., necessarily flows from) the disclosure of cited art.  (MPEP 2112).

A review of page 3 of the Office Action reveals the absence of the required rationale or evidence at least tending to show that the feature of a widget inevitably flows from the disclosures of Smith patent.  Indeed, the Office Action merely asserts that a red widget is inherently present in the Smith patent.  (Office Action, page 3).  This naked assertion, a mere conclusory statement, cannot reasonably be said to be a development of any reason supporting the Office’s reliance on inherency.  Consequently, the Office Action’s reliance on inherency is unsupported and thus improper.

In sum, the Office Action concedes that the Smith patent does not teach the feature of claim 1 of a widget and any reliance on the doctrine of inherency to provide this necessary teaching is improper.

2.  A Substantive Response

In rejecting claim 1, the Office Action concedes that the Smith patent does not expressly or impliedly teach the aforementioned claim feature of a red widget.  (Office Action, page 3).  Nonetheless, the Office rejects claim 1 under 35 U.S.C. § 102, contending that a red widget is inherent from the disclosures of the Smith patent.  This contention is respectfully traversed, at least because express teachings of the Smith patent preclude reliance on the doctrine of inherency, as a matter of law.

It is well settled that subject matter is inherent only when extrinsic evidence makes it clear that the subject matter necessarily (i.e., inevitably) flows from a disclosure of cited art.  (MPEP 2112).  This requirement is a prerequisite to invoking the doctrine of inherency and cannot be avoided.  Consequently, inherency may never be established by mere probabilities or even possibilities and the mere fact that a certain thing may be present (or may result) is always insufficient.  (MPEP 2112).

A review of the Smith patent reveals no less than three separate teachings that the Smith widget cannot be red.  Applicant respectfully submits that these express teachings so heavily weigh against the inevitable presence of a red widget that they preclude reliance on the doctrine of inherency as a matter of law.  Stated another way, the presence of these express teachings means that the subject matter alleged by the Office Action to be inherent can never reasonably be said to necessarily flow from the Smith patent.  Thus, the Office’s current reliance on inherency can never satisfy the standard set forth in MPEP § 2112 for proper reliance on inherency.

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© 2008, Michael E. Kondoudis

Listings of claims are required in most, but not all responses to Office actions.  This post discusses when they are required and why it may be prudent to include them even when they are not.

The Rules
The manner of making amendments in a patent application is governed by 37 CFR. 1.121 entitled “Manner of Making Amendments in Applications”.  Sections (C) and (C) (1) of that rule addresses claim listings, and state:

(c) Claims. … Each amendment document that includes a change to an existing claim, cancellation of an existing claim or addition of a new claim, must include a complete listing of all claims ever presented, including the text of all pending and withdrawn claims, in the application.

(1) Claim listing. All of the claims presented in a claim listing shall be presented in ascending numerical order. Consecutive claims having the same status of “canceled” or “not entered” may be aggregated into one statement (e.g., Claims 1-5 (canceled)). The claim listing shall commence on a separate sheet of the amendment document and the sheet(s) that contain the text of any part of the claims shall not contain any other part of the amendment.

Thus, every filing that includes a change to a claim, a cancellation of an existing claim, or an addition of a new claim, must include a complete listing of all claims ever presented in that application.

A failure to include a listing of the claims when required renders a filing non-compliant.

What about filings in response to an Office action in which no claim changes are made and a listing of the claims is not required (e.g., a Response to a Restriction Requirement of a Request for Reconsideration)?  I have seen such filings prepared both ways; with and without a listing of the claims and I suppose that a case could be made for either approach.  I suggest, however, that it may be a better practice to include a listing of the claims in every response, regardless of whether or not it is required.  Here are a few reasons why.

1. Including a Listing of Claims Makes Examination Easier. When a response does not include a listing of the claims, anyone reviewing the arguments presented will have to refer to at least one other document (e.g., a previous amendment or the original application) to find a listing of the claims.  In other words, omitting a listing requires the reader to sift through the file wrapper to find a listing of the claims.  At a minimum, this is inefficient and inconvenient.  I prefer not putting an Examiner through this trouble.  The Office’s current production quotas are difficult enough for an Examiner to meet.
The bottom line: making the Examiner’s job easier is in everyone’s best interests and can only help improve the quality of examination.  Besides, every Applicant can benefit from some Examiner goodwill.

2.  The USPTO Encourages Inclusion of a Claim Listing In Every Response.
The following is from a frequently asked questions page on the USPTO Website about current amendment practice:

(A10)Q:   May I submit a complete claim listing in a reply when I am not making any changes to the claims, such as responding to a restriction requirement or merely arguing a rejection?A:  Yes. Although a complete claim listing is only required whenever changes are made to any claims, one may be submitted in a reply to an Office action where no changes are being made. It is beneficial to the examiner (and all viewers of the electronic file) to have the most up-to-date set of claims in the most recent paper submitted by the applicant. Note that the claim listing in this situation would not include any claims with markings or any claims with the status identifiers of (new) or (currently amended).

3.  Including a Listing of Claims Promotes Accuracy.
The inclusion of a listing of the claims in every filing makes identifying the most current version of the claims easier for everyone who may pick up the file.   This, in turn, tends to reduce: errors in drafts prepared by support staff; the time needed to review such drafts; and non-compliant amendments.

4.  Including a Listing of Claims Promotes Faster (and Smoother) Review of Work Product.
Including a listing of the claims in every response makes review easier.  And, an easier review tends to be a shorter review.  Shortening the time required for review lessens the overall expense for preparing a filing, especially when the reviewer has a higher billing rate than the practitioner who prepared the filing. Besides, making review easier on the reviewer seems to make that review go a little smoother for the practitioner.

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

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RCE Basics

A Request for Continued Examination (RCE) is a request to continue prosecution of an application.  Essentially, RCE practice can be thought of as a mechanism to buy another full examination of an application without having to refile it.  An application in which an RCE is filed stays with the same Examiner and keeps the same serial number.   RCEs are available for utility and plant applications, but not for design or provisional applications.  RCE practice is governed by 37 CFR 1.114.

The Rules Concerning RCE Practice

37 CFR 1.114 sets forth three requirements/conditions for a proper RCE.

1. Prosecution of the application must be closed.  The prosecution of an application is closed when: a final Office action; a Notice of Allowance; or a Quayle Action has been issued.
2. A “submission” must accompany the RCE.
   
3. The requisite government fee(s) must accompany the RCE.

A “submission” as used in 37 CFR 1.114 includes:

1. an information disclosure statement (IDS);
2. an amendment to a disclosure (i.e., the specification, claims, or drawings);
3. new patentability arguments; or
4. new evidence in support of patentability.

See MPEP 706.07(h)(II).

Some Important Points About RCE Submissions

1.    When any reply to an Office action is outstanding, a submission must meet the requirements of 37 CFR 1.111.  That is, the reply must be “fully responsive” to the last outstanding Office action.  A submission that is not fully responsive renders an RCE deficient and thus improper.

2.    Not every one of the examples set forth in 37 CFR 1.114 will constitute a submission in every circumstance.   Rather, the adequacy of any submission depends on the circumstances in which the RCE is filed.

Example
An IDS filed with an RCE in an application that has been allowed satisfies the submission requirement, since there is no requirement to be fully responsive to any Office action.  That same IDS, however, when filed with an RCE after a final Office action, will not satisfy the submission requirement since it cannot be fully responsive to any Office action.

3.    There is a Pseudo Safe Harbor for Some Submissions that are Not Fully Responsive.
RCEs filed with submissions that are not fully responsive to a last outstanding Office action may sometimes be salvaged, depending on whether the submission was a bona fide attempt to respond to the Office action.

• If the submission is deemed a bona fide attempt to provide a complete reply, the Applicant will be advised of the deficiency and given a new shortened statutory period of one month or thirty days (whichever is longer) to complete the reply.
• If the submission is not deemed a bona fide attempt to provide a complete reply, the RCE will not toll the period for reply and the application will go abandoned after the expiration of the statutory period for reply.

See MPEP 706.07(h)(VI).

4.    A Reply/Request for Reconsideration after a final Office action may satisfy the submission requirement, even when the Reply/Request has been entered and an advisory action indicates that the arguments are not found persuasive.  The fact that the previously submitted arguments were not found persuasive does not preclude them as a submission under 37 CFR 1.114, provided that such arguments are fully responsive.  Consideration of whether any submission is fully responsive to the last outstanding Office action is done without factoring in the “final” status of such outstanding Office action. An Applicant risks a final first Office action, however, so further action would only be prudent.

5.    An appeal brief or reply brief never satisfies the submission requirement.  An RCE that contains a statement that incorporates by reference the arguments in a previously filed appeal brief or reply brief may constitute a submission, however. See MPEP  706.07(h).

6.    An improper RCE in an application under appeal may result in an abandonment or an unwanted allowance. The USPTO treats the filing of an RCE in a case under appeal as a withdrawal of the appeal by the applicant, regardless of whether the RCE includes the appropriate fee or a submission.  Consequently, when an RCE is filed without the appropriate fee or a submission, the application will either be allowed or abandoned, depending on the status of the claims.  If there is at least one allowed claim, the application will pass to issue with the allowed claim(s).  Conversely, if there are no allowed claims, the application will be considered abandoned.   See MPEP  1215.01.

Coming soon - strategic uses of RCEs and submissions

The Law Office of Michael E. Kondoudis, PC
Patent Attorney Washington
www.mekiplaw.com

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This post discusses strategic considerations concerning identifications of support for claim amendments.

New Matter is Prohibited

Section 706.03(o) of the Manual of Patent Examining Procedure (MPEP) addresses rejections based on new matter (matter not supported by the disclosure at the time of filing). This section of the MPEP, citing 35 U.S.C. § 132, articulates the rule that no amendment may introduce new matter into the disclosure of an invention.

The question of what constitutes new matter may sometimes be difficult to resolve. After all, an Applicant may rely on every part of the application as originally filed for support for a claim amendment. Additionally, an Applicant is entitled to rely on any inherent or implied teachings of the specification, drawing(s), and claims, in addition to the express teachings. Still further, because there is no in haec verba requirement, an Applicant is not constrained to the terminology used in the application as filed.

In view of the occasional difficulty in resolving new matter issues, and the objection/rejection an Examiner is instructed to make if there is a question of whether a claim amendment might introduce new matter, it may be prudent to consider including identifications of support for claim amendments to help avoid good faith, but ultimately incorrect, new matter rejections.

Identifying Support For a Claim Amendment May Have Risk

A cautious prosecutor, however, will recognize that every identification of support carries with it some risk. For example, there is a possible risk of error. This is of particular concern since an Applicant is correlating claim features to portions of the disclosure. Also, unless all support is identified, an Applicant risks an implication that only the identified portion(s) of a disclosure support an amendment. Both the argument estoppel of the former example and the implication of the latter can be problematic in litigation.

Because of the issues, it may be worth considering reserving identifications of specific support for situations when doing so will be advantageous to the Applicant.

A Risk/Reward Analysis Is Useful to Minimize Unnecessary Identifications of Support

A prosecutor can provide value to a client by engaging in a risk/reward analysis and, when the analysis weighs in favor of identifying support, doing so strategically. Here, the analysis might be whether the likelihood of an objection/rejection outweighs the risk of potential litigation issues, in view of factors such as whether: an Examiner has a history of questioning support for claim amendments; claim terminology deviates from what was used in the application as filed; and support will be difficult to locate in the originally filed disclosure.

Strategic Examples

1. A Generic Identification
When a risk/reward analysis does not weigh in favor of identifying support, the following paragraph might be used:

Applicant submits that support for these amendments can be found in the disclosure as originally filed, and therefore no new matter has been added.

2. A Specific, Non-Limiting Identification of Support
When a risk/reward analysis weighs in favor of identifying support for a claim amendment, the question becomes “how to do it?” An adequate way might be to state:

Applicant has amended claim 1. Paragraph [0025] of the Specification supports this amendment. Thus, no new matter has been added.

This identification is acceptable; it is efficient and direct. I submit, however, that this statement does little to address some of the risks inherent to identifications of support. Thus, there is room for improvement. Consider the following example:

Applicant has amended claim 1. Support for this amendment may be found at least at, for example, paragraph [0025] of the Specification as originally filed. Thus, no new matter has been added.

I submit that the latter paragraph is an improvement over the former because it is non-limiting. Consequently, it at least arguably avoids the potential litigation issues discussed above. First, the latter paragraph uses the word “may” instead of “is” or “can.” The word “is” conveys certainty. The word “can” expresses the ability to do something. In contrast, according to many authorities, the word “may” indicates only a measure of likelihood or possibility. Thus, “may” is arguably more appropriate, since the specified location is “an example.” Second, the latter paragraph is crafted to state only that paragraph [0025] provides an example of support, which can be beneficial if other, better, or more advantageous support is identified later in prosecution or litigation.

In the end, the way an applicant identifies support is not as important as understanding when it is necessary and the risks involved. These considerations will dictate how and when to identify support for a claim amendment.

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© 2008, Michael E. Kondoudis

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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