[Patentpractice] Rejection under “102 or 103”

[James E. Lake]

There are several options for replying, depending on the details of the rejection, which are not included in the question. Possible influential cases are list below when dealing with a single reference 103. You will need to do your own cite checking for any negative history.

The obviousness inquiry may need to include consideration of whether some teaching, suggestion, or motivation in the art existed to combine references, though the obviousness inquiry should not be narrowly limited to such consideration. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007). In re Kotzab, 217 F.3d 1365, 1369 (Fed. Cir. 2000), states that extreme caution must be exercised in determining the knowledge of those of ordinary skill at the time of invention, guided only by the prior art, especially in cases where the invention may be easily understood. Otherwise, one may fall victim to basing rejection upon knowledge gleaned only from the Patentee’s own disclosure. Id. Even though every element of an invention may be found in the prior art, “identification in the prior art of each individual part claimed is insufficient to defeat patentability of the whole claimed invention.” Id. at 1370. Instead, obviousness based upon combining elements might require some suggestion or motivation “of the desirability of making the specific combination that was made by the applicant,” even when relying upon a single reference. Id.

“Whether a rejection is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference, there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.” In re Stepan Co., 868 F.3d 1342, 1346 n.1 (Fed. Cir. 2017).

James Lake

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Jeff Lindsay via Patentpractice
Sent: Sunday, February 11, 2024 6:28 AM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Jeff Lindsay <jeff at jefflindsay.com>
Subject: Re: [Patentpractice] Rejection under “102 or 103”


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I like David’s recommendation on checking the constraints for use of form letters. For information on the 7.27 form letter, see the form letters section of MPEP: https://www.uspto.gov/web/offices/pac/mpep/mpep-9095-Form-Paragraph-Chapter.html.

Jeff Lindsay
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+1 920-257-7347





On Feb 11, 2024, at 5:59 AM, David Boundy via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>> wrote:

This isn't a well-framed question.  We have neither the written explanation nor access to the examiner's past neural state.   We can't answer what the examiner's mental state might have been months ago. We don't know whether the alternative § 103 covers the weak spot in the § 102 or whether the § 103 brings in something else entirely.

Doctrine of Equivalents is only for infringement, never for unpatentability/invalidity.

You don't tell us whether this is based on Form Paragraph ¶ 7.27 of some other construct.  An examiner is only permitted to use ¶ 7.27 in specified circumstances, and each requires a specific showing so you know what's going on.  Look up  Form Paragraph ¶ 7.27 the MPEP Index to see all the places it's discussed and see what that gives you.

Where the reference teaches multiple distinct embodiments, and the examiner is trying to assemble a Frankenstein's monster out of incompatible parts, then even within a single reference, the examiner still has to show "motivation to combine."

Depending on the examiner's rationale, Jeff's and Judith's approach could be correct -- if you show a missing element for § 102 then that same element is missing for § 103.

But without a well-framed question we can't help you.

On Sat, Feb 10, 2024 at 9:44 PM Stanley H. Kremen via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>> wrote:
Colleagues:

Examiner rejects claim as anticipated by single prior art reference in under 35 USC 102 or obvious over the same reference under 35 USC 103.

The 102 rejection is understandable, and it can be overcome by showing that the single reference does not teach every element of the claim.

However, how do we deal with the obviousness rejection? There is only a single reference. There is no explanation of the basis for 103. Is it the examiner relying on the Doctrine of Equivalence?

Stan Kremen

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