[Patentpractice] In re Japikse and "criticality of the claimed limitation"

Tue Mar 25 14:26:20 UTC 2025

I agree. It’s a pretty weak rejection.

First, I’d argue all claim limitations must be taught.

“To establish obviousness of a claimed invention, all the claim limitations must be taught or suggested by the prior art.  In re Royka, 490 F.2d 981, 180 U.S.P.Q. 580 (CCPA 1974).  Additionally, when judging the patentability of a claim against the prior art, all elements in the claim must be considered.  In re Wilson, 424 F.2d 1382, 1385, 165 U.S.P.Q. 494, 496 (CCPA 1970).”

Second, I’d throw in hindsight and cite KSR using a variation of the following language:

…lacks any rational underpinning and is strongly indicative of impermissible hindsight reconstruction.  “Rejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. 398, 82 USPQ2d at 1396 quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).

It’s doubtful In re Japikse amounts to articulated reasoning, unless the arrangement was strictly a design choice without any improvement, assuming this is the cited section:

C.    Rearrangement of Parts
In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice).

My two cents

Scott C. Sample

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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Krista S. Jacobsen via Patentpractice
Sent: Tuesday, March 25, 2025 9:02 AM
To: For advice. <patentpractice at oppedahl-lists.com>
Cc: Krista S. Jacobsen <krista at jacobseniplaw.com>
Subject: [Patentpractice] In re Japikse and "criticality of the claimed limitation"

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I have an office action in which claims have been rejected under 103. For several of the claims, the examiner could not find in the applied references exactly what is recited in the claims, but she rejected the claims anyway, stating only that the recited configuration would have been obvious “since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.” Then she adds, “Please note that in the instant application, the Applicant has not disclosed any criticality for the claimed limitation.”

I am trying to figure out how best to respond to the examiner’s citation to a CCPA decision from 1950 (!!!) and the apparent assertion that “criticality” of limitations must be disclosed.

My first thought is that these rejections amount to improper hand-waving.

Second, I am unaware of any requirement for an application to disclose “criticality for the claimed limitation” in order for a claim to be patentable over a combination of references. MPEP 2144.04 says this about “criticality”: "If the applicant has demonstrated the criticality of a specific limitation, it would not be appropriate to rely solely on the rationale used by the court to support an obviousness rejection.” The examiner appears to have recast this statement as: “If the applicant has NOT demonstrated the criticality of a specific limitation, it WOULD be appropriate to rely solely on the rationale used by the court to support an obviousness rejection.” Then she sticks in a reference to In re Japikse and deems it obvious. I do not think that makes for a proper 103 rejection.

Third, the examiner’s rationale seems to seek to improperly shift the USPTO’s burden. The applicant is not required to prove that an invention is nonobvious (apparently by disclosing “criticality for the claimed limitation” in the application). Instead, the USPTO is required to allow the claim unless the examiner can show that the claimed invention IS obvious.

I would appreciate any thoughts from the brain trust, especially if you have received and responded to similar rejections. Thanks in advance.

Best regards,
Krista

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Krista S. Jacobsen
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Jacobsen IP Law
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