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OBVIOUSNESS
REJECTIONS POST KSR
I am concerned that
there will be a significant increase
in the number of examiner rejections
based upon the asserted obviousness
of the invention. The KSR decision
has weakened the ability of the
applicant to rebut those claims
during prosecution. It is no longer
possible to point to the absence of
a suggestion, motivation or teaching
of a combination. Now, suggestion,
motivation and teaching can be
assumed within the common sense of a
person skilled in the art.
(Inherently known to persons skilled
the art?)
I reviewed the MPEP
regarding the ability of an inventor
to give an oath as what knowledge
would be in the possession of the
person skilled in the art. One
relevant section is MPEP 716. This
section pertains to the “catch-all”
category of affidavits or
declarations used to overcome a 37
USC § 103 rejection for
obviousness.
A rejection can be
overcome by a declaration meeting
the requirements of 37 CFR 1.132.
The MPEP does not
provide specific guidance as to the
evidence required to overcome the
examiner’s rejection for
obviousness. Of course at this
stage of the prosecution, it is the
examiner that will make the
determination of the sufficiency of
the declaration.
MPEP 716 provides
some examples of insufficient
declarations:
The Declarant has
never seen the subject matter of the
claims before.
The Declarant merely
states that the claimed subject matter
functions as it was intended to
function.
The declaration
refers only to the invention and not
to the individual claims.
The declaration
states merely that the subject
matter solved a problem that was
long standing in the art. Such a
statement does not provide evidence
that others were working on the
problem and for how long. In
addition, it does not provide
evidence that persons skilled in the
art who were presumably working on
the problem knew of the teachings of
the above cited references, they
would still be unable to solve the
problem.
MPEP 2112 states that
express, implicit and inherent
disclosures of a prior art reference
may be relied upon in the rejection
of claims under 37 USC 103. 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
The inherency of the
teaching is a question of fact. The
possibility of a result is not
sufficient to establish the
inherency of that result. To
establish inherency, the extrinsic
evidence must make clear that the
missing descriptive matter is
necessarily present in the thing
described in the reference, and that
it would be so recognized by persons
of ordinary skill. Inherency,
however, may not be established by
probabilities or possibilities
July 15, 2007 |
