One of the most difficult hurdles to overcome in the prosecution of a patent application is an Office Action based upon a 35 U.S.C. § 103 rejection, which is known as a “103 rejection” or “obvious rejection”. In a 103 rejection, an Examining Attorney at the United States Patent Office (referred to in this article as the “Patent Office”) can combine multiple components of prior art to reject a patent application as “obvious”. Stated differently, an Examining Attorney can argue that an invention disclosed in a patent application is obvious based upon the combination of multiple components of patents, patent publications, or other public disclosures that were publicly known prior to the date a patent application was filed. As a patent attorney, one of my jobs is to respond to and overcome 103 rejections in order to obtain patent protection for inventions.
As a patent attorney, I, Derek Fahey, examine 103 rejections to look for flaws in the USPTO Examining Attorneys’ arguments. The Federal Circuit, the United States Court of Appeals dedicated to hearing appeals for patent cases, in Cutsforth, Inc. v. MotivePower, Inc., No. 2015-1316, 2016 WL 279984, (Fed. Cir. Jan. 22, 2016), provided additional case law that patent attorneys will use to respond to 103 rejections.
In Cutsforth, Inc. v. MotivePower, Inc., the patent-at-issue was for a brush used in electrical circuits for electrical motors and generators. In a proceeding known as an inter partes review, the Patent Trial and Appeal Board (“Board”) found that the claims of the patent-at-issue were unpatentable as “obvious” for three main reasons. First, the Board found that it would have been “obvious to modify elements” of existing prior art. Second, the Board found that the placement of certain components used in the patent-at-issue was “a design choice and is obvious”. Third, the Board found that a “person of ordinary skill in the art could modify and relocate” an element of the prior art to arrive at a component of the patent-at-issue. The patent holder disagreed and appealed to the Federal Circuit for review.
On appeal, the Federal Circuit found that the Board failed to provide adequate reasoning. First, the Federal Circuit reasoned that a decision based upon “obviousness” “must explain why a person of ordinary skill in the art would find it obvious” to make the modifications. Second, the Federal Circuit reasoned that simply stating that a particular placement of an element is a “design choice” alone without explanation is not an adequate explanation. Third, the Federal Circuit found that there must be an articulated reason why a person of ordinary skill in the art would make a specific design choice.
The reasoning of Cutsforth, Inc. v. MotivePower, Inc., can be used when responding to 103 rejections. Additionally, other arguments used when responding to 103 rejections include: that the Examining Attorney failed to identify a reason to combine prior art elements; that the combination of prior art is nonobvious where the prior art teaches away from the claimed combination; and the possible options for solving a problem were not known or finite therefore the solution nonobvious. It is the job of a patent attorney to overcome a 103 rejection by analyzing an office action to pick apart a USPTO Examining Attorney’s arguments.
The patent attorneys at The Plus IP Firm help businesses and inventors protect their ideas, concepts and creations with patents, trademarks and copyrights. The patent attorneys at The Plus IP Firm have helped numerous clients respond to and overcome Office Actions based upon 103 rejections. To schedule a free consultation, click HERE. For more information about Derek Fahey, this article’s author, click HERE.
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