# MPEP § 2145: Consideration of Applicant’s Rebuttal Arguments and Evidence

> Federal · Agency guidance · In force

URL: https://www.frixlaw.com/law-library/statutes/MPEP_S2145

## Section

- **Citation:** MPEP § 2145
- **Heading:** Consideration of Applicant’s Rebuttal Arguments and Evidence
- **Jurisdiction:** Federal
- **Kind:** Agency guidance
- **Status:** In force
- **Text as of:** August 14, 2026
- **Source:** Compiled text
- **Location:** USPTO MPEP / Chapter 2100 - Patentability / MPEP § 2145

## Text

[Editor Note: This MPEP section is applicable regardless of whether an application
is examined under the AIA or under pre-AIA law. For applications subject to the first
inventor to file (FITF) provisions of the AIA, the relevant time is "before the
effective filing date of the claimed invention". For applications subject to
pre-AIA 35 U.S.C.
102
, the relevant time is "at the time of the invention". See
MPEP §
2150
et seq. Many of the court decisions discussed in this
section involved applications or patents subject to
pre-AIA 35 U.S.C. 102
. These court
decisions may be applicable to applications and patents subject to
AIA 35 U.S.C.
102
but the relevant time is before the effective filing date of
the claimed invention and not at the time of the invention.]
If a
prima facie
case of obviousness is established,
the burden shifts to the applicant to come forward with arguments and/or evidence to rebut
the
prima facie
case. See, e.g.,
In re Dillon,
919
F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990)
(en banc).
Applicant may also present rebuttal evidence and arguments prior to an Office action in
anticipation of possible prior art rejections. Examiners should consider all evidence of
obviousness and nonobviousness of record before making a determination under
35 U.S.C.
103
.
Rebuttal evidence and arguments can be presented in the
specification,
In re Soni,
54 F.3d 746, 750, 34 USPQ2d 1684, 1687 (Fed.
Cir. 1995), by way of an affidavit or declaration under
37 CFR 1.132
, e.g.,
Soni,
54 F.3d at 750, 34 USPQ2d at 1687;
In re
Piasecki,
745 F.2d 1468, 1474, 223 USPQ 785, 789-90 (Fed. Cir. 1984), or
otherwise presented during prosecution. See, e.g.,
MPEP §§ 714
to
716
et seq.
However, arguments presented by applicant cannot take the place
of factually supported objective evidence. See, e.g.,
In re Schulze,
346
F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965);
In re De Blauwe,
736 F.2d
699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984)
ecki,
745 F.2d 1468, 1474, 223 USPQ 785, 789-90 (Fed. Cir. 1984), or
otherwise presented during prosecution. See, e.g.,
MPEP §§ 714
to
716
et seq.
However, arguments presented by applicant cannot take the place
of factually supported objective evidence. See, e.g.,
In re Schulze,
346
F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965);
In re De Blauwe,
736 F.2d
699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984).
Office personnel should consider all rebuttal arguments and evidence
presented by applicants. See, e.g.,
Soni,
54 F.3d at 750, 34 USPQ2d at
1687 (error not to consider evidence presented in the specification). C.f.,
In re
Kao,
639 F.3d 1057, 1067, 98 USPQ2d 1799, 1807 (Fed. Cir. 2011) (“[W]hen
secondary considerations are present, though they are not always dispositive, it is error
not to consider them.”);
In re Alton,
76 F.3d 1168, 37 USPQ2d 1578 (Fed.
Cir. 1996) (error not to consider factual evidence submitted to counter a
35 U.S.C. 112
rejection);
In re Beattie,
974 F.2d 1309, 1313, 24 USPQ2d 1040, 1042-43
(Fed. Cir. 1992) (Office personnel should consider declarations from those skilled in the
art praising the claimed invention and opining that the art teaches away from the
invention.);
Piasecki,
745 F.2d at 1472, 223 USPQ at 788 (“[Rebuttal
evidence] may relate to any of the
Graham
factors including the
so-called secondary considerations.”). The Federal Circuit has “emphasized that
consideration of the objective indicia is part of the whole obviousness analysis, not just
an afterthought.”
Leo Pharm. Prod., Ltd. v. Rea,
726 F.3d 1346, 1357,
107 USPQ2d 1943, 1952 (Fed. Cir. 2013) (emphasis in original). Even though court decisions
“have used the ‘prima facie’ and ‘rebuttal’ language [the decisions have] generally have
made clear that a fact finder must consider
all
evidence of obviousness
and nonobviousness before reaching a determination.”
In re Cyclobenzaprine
Hydrochloride Extended- Release Capsule Patent Litig.,
676 F.3d 1063, 1077,
102 USPQ2d 1760, 1772 (Fed. Cir. 2012) (emphasis in the original)
though court decisions
“have used the ‘prima facie’ and ‘rebuttal’ language [the decisions have] generally have
made clear that a fact finder must consider
all
evidence of obviousness
and nonobviousness before reaching a determination.”
In re Cyclobenzaprine
Hydrochloride Extended- Release Capsule Patent Litig.,
676 F.3d 1063, 1077,
102 USPQ2d 1760, 1772 (Fed. Cir. 2012) (emphasis in the original).
Rebuttal evidence may include evidence of “secondary considerations,” such
as “commercial success, long felt but unsolved needs, [and] failure of others.”
Graham v. John Deere Co.,
383 U.S. 1, 148 USPQ 4459, 467. See also,
e.g.,
In re Piasecki,
745 F.2d 1468, 1473, 223 USPQ 785, 788 (Fed. Cir.
1984) (commercial success). Rebuttal evidence may also include evidence that the claimed
invention yields unexpectedly improved properties or properties not present in the prior
art. Rebuttal evidence may consist of a showing that the claimed compound possesses
unexpected properties.
Dillon,
919 F.2d at 692-93, 16 USPQ2d at 1901. A
showing of unexpected results must be based on evidence, not argument or speculation.
In re Mayne,
104 F.3d 1339, 1343-44, 41 USPQ2d 1451, 1455-56 (Fed.
Cir. 1997) (conclusory statements regarding unusually low immune response or unexpected
biological activity that were unsupported by comparative data held insufficient to overcome
prima facie
case of obviousness). Rebuttal evidence may include
evidence that the claimed invention was copied by others. See, e.g.,
In re
GPAC,
57 F.3d 1573, 1580, 35 USPQ2d 1116, 1121 (Fed. Cir. 1995);
Hybritech Inc.
v. Monoclonal Antibodies,
802 F.2d 1367, 1380, 231 USPQ 81, 90 (Fed.
Cir. 1986). It may also include evidence of the state of the art, the level of skill in the
art, and the beliefs of those skilled in the art
ess). Rebuttal evidence may include
evidence that the claimed invention was copied by others. See, e.g.,
In re
GPAC,
57 F.3d 1573, 1580, 35 USPQ2d 1116, 1121 (Fed. Cir. 1995);
Hybritech Inc.
v. Monoclonal Antibodies,
802 F.2d 1367, 1380, 231 USPQ 81, 90 (Fed.
Cir. 1986). It may also include evidence of the state of the art, the level of skill in the
art, and the beliefs of those skilled in the art. See, e.g.,
In re Oelrich,
579 F.2d 86, 91-92, 198 USPQ 210, 214 (CCPA 1978) (Expert opinions regarding the
level of skill in the art were probative of the nonobviousness of the claimed invention.);
Piasecki,
745 F.2d at 1471, 1473-74, 223 USPQ at 790 (Evidence of
nontechnological nature is pertinent to the conclusion of obviousness. The declarations of
those skilled in the art regarding the need for the invention and its reception by the art
were improperly discounted by the Board.);
Beattie,
974 F.2d at 1313, 24
USPQ2d at 1042-43 (Seven declarations provided by music teachers opining that the art
teaches away from the claimed invention must be considered, but were not probative because
they did not contain facts and did not deal with the specific prior art that was the
subject of the rejection.). For example, rebuttal evidence may include a showing that the
prior art fails to disclose or render obvious a method for making the compound, which would
preclude a conclusion of obviousness of the compound. A conclusion of obviousness requires
that the reference(s) relied upon, together with the knowledge of a person skilled in the
art, be enabling in that it put the public in possession of the claimed invention.
In re Hoeksema,
399 F.2d 269, 273, 158 USPQ 596, 600 (CCPA 1968)
(citing
In re Le Grice,
301 F.2d 929, 936, 133 USPQ 365, 372 (CCPA
1962))
eclude a conclusion of obviousness of the compound. A conclusion of obviousness requires
that the reference(s) relied upon, together with the knowledge of a person skilled in the
art, be enabling in that it put the public in possession of the claimed invention.
In re Hoeksema,
399 F.2d 269, 273, 158 USPQ 596, 600 (CCPA 1968)
(citing
In re Le Grice,
301 F.2d 929, 936, 133 USPQ 365, 372 (CCPA
1962)). The
Hoeksema,
court stated:
Thus, upon careful reconsideration it is our view that if the prior
art of record fails to disclose or render obvious a method for making a claimed
compound, at the time the invention was made, it may not be legally concluded that the
compound itself is in the possession of the public. [footnote omitted.] In this context,
we say that the absence of a known or obvious process for making the claimed compounds
overcomes a presumption that the compounds are obvious, based on close relationships
between their structures and those of prior art compounds.
See
Hoeksema
, 399 F.2d at 274, 158 USPQ at 601. The
Hoeksema
court further noted that once a
prima
facie
case of obviousness is made by the USPTO through citation of references,
the burden is on the applicant to produce contrary evidence. In
Hoeksema
, the contrary evidence was that the applied reference did not
disclose or render obvious a process for producing the claimed compounds.
Id.
at 274-75, 158 USPQ at 601. See also
Ashland Oil, Inc.
v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 295, 297, 227 USPQ
657, 666, 667 (Fed. Cir. 1985) (citing
Hoeksema
for the proposition
above);
In re Grose,
592 F.2d 1161, 1168, 201 USPQ 57, 63-64 (CCPA 1979)
("One of the assumptions underlying a prima facie obviousness rejection based upon a
structural relationship between compounds, such as adjacent homologs, is that a method
disclosed for producing one would provide those skilled in the art with a method for
producing the other..
Cir. 1985) (citing
Hoeksema
for the proposition
above);
In re Grose,
592 F.2d 1161, 1168, 201 USPQ 57, 63-64 (CCPA 1979)
("One of the assumptions underlying a prima facie obviousness rejection based upon a
structural relationship between compounds, such as adjacent homologs, is that a method
disclosed for producing one would provide those skilled in the art with a method for
producing the other... Failure of the prior art to disclose or render obvious a method for
making any composition of matter, whether a compound or a mixture of compounds like a
zeolite, precludes a conclusion that the composition would have been obvious.").
Consideration of rebuttal evidence and arguments requires Office personnel
to weigh the proffered evidence and arguments.
Id.;
see also
In
re Alton,
76 F.3d 1168, 1174-75, 37 USPQ2d 1578, 1582-83 (Fed. Cir. 1996).
Office personnel should avoid giving no weight to evidence submitted by applicant, except
in rare circumstances. However, to be entitled to substantial weight, the applicant should
establish a nexus between the rebuttal evidence and the claimed invention, i.e., objective
evidence of nonobviousness must be attributable to the claimed invention. The Federal
Circuit has acknowledged that applicant bears the burden of establishing nexus,
stating:
In the
ex parte
process of examining a patent
application, however, the PTO lacks the means or resources to gather evidence which
supports or refutes the applicant’s assertion that the sales constitute commercial
success.
C.f. Ex parte Remark,
15 USPQ2d 1498, 1503 ([BPAI] 1990)
(evidentiary routine of shifting burdens in civil proceedings inappropriate in
ex parte
prosecution proceedings because examiner has no available
means for adducing evidence). Consequently, the PTO must rely upon the applicant to
provide hard evidence of commercial success.
In re Huang,
100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir.
1996). See also
GPAC,
57 F.3d at 1580, 35 USPQ2d at 1121;
In re
Paulsen,
30 F.3d 1475, 1482, 31 USPQ2d 1671, 1676 (Fed. Cir
ppropriate in
ex parte
prosecution proceedings because examiner has no available
means for adducing evidence). Consequently, the PTO must rely upon the applicant to
provide hard evidence of commercial success.
In re Huang,
100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir.
1996). See also
GPAC,
57 F.3d at 1580, 35 USPQ2d at 1121;
In re
Paulsen,
30 F.3d 1475, 1482, 31 USPQ2d 1671, 1676 (Fed. Cir. 1994) (Evidence
of commercial success of articles not covered by the claims subject to the
35 U.S.C.
103
rejection was not probative of nonobviousness.). Additionally,
the evidence must be reasonably commensurate in scope with the claimed invention. See,
e.g.,
In re Kulling,
897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed.
Cir. 1990);
In re Grasselli,
713 F.2d 731, 743, 218 USPQ 769, 777 (Fed.
Cir. 1983).
In re Soni,
54 F.3d 746, 34 USPQ2d 1684 (Fed. Cir. 1995)
does not change this analysis. In
Soni,
the court declined to consider
the Office’s argument that the evidence of nonobviousness was not commensurate in scope
with the claim because it had not been raised by the examiner.
Id.
54
F.3d at 751, 34 USPQ2d at 1688.
In other words, in order for evidence of secondary
considerations to be accorded substantial weight, there must be a nexus, i.e., a legally
and factually sufficient connection or correspondence between the submitted evidence and
the claimed invention.
Fox Factory, Inc. v. SRAM, LLC,
944 F.3d 1366,
1373, 2019 USPQ2d 483355 (Fed. Cir. 2019), cert. denied, 141 S.Ct. 373 (2020). “A
presumption of nexus requires both that the product embodies the invention and is
coextensive with it.”
Volvo Penta of the Americas, LLC v. Brunswick
Corp.,
81 F.4th 1202,1211-12, 2023 USPQ2d 1000 (Fed. Cir. 2023) (While Volvo
Penta provided insufficient evidence to show a presumption of nexus, they did provide
sufficient evidence to show nexus, independent of the presumption, through evidence of
commercial success and copying due to the unique features of the claimed invention.). See
MPEP §
716.01(b)
vo Penta of the Americas, LLC v. Brunswick
Corp.,
81 F.4th 1202,1211-12, 2023 USPQ2d 1000 (Fed. Cir. 2023) (While Volvo
Penta provided insufficient evidence to show a presumption of nexus, they did provide
sufficient evidence to show nexus, independent of the presumption, through evidence of
commercial success and copying due to the unique features of the claimed invention.). See
MPEP §
716.01(b)
.
When considering whether proffered evidence is commensurate in scope with
the claimed invention, Office personnel should not require the applicant to show
unexpected results over the entire range of properties possessed by a chemical compound or
composition. See, e.g.,
In re Chupp,
816 F.2d 643, 646, 2 USPQ2d 1437,
1439 (Fed. Cir. 1987). Evidence that the compound or composition possesses superior and
unexpected properties in one of a spectrum of common properties can be sufficient to rebut
a
prima facie
case of obviousness.
Id.
For example, a showing of unexpected results for a single member of a
claimed subgenus, or a narrow portion of a claimed range would be sufficient to rebut a
prima facie
case of obviousness if a skilled artisan “could ascertain
a trend in the exemplified data that would allow him to reasonably extend the probative
value thereof.”
In re Clemens,
622 F.2d 1029, 1036, 206 USPQ 289, 296
(CCPA 1980) (Evidence of the nonobviousness of a broad range can be proven by a narrower
range when one skilled in the art could ascertain a trend that would allow him to
reasonably extend the probative value thereof.)
rtisan “could ascertain
a trend in the exemplified data that would allow him to reasonably extend the probative
value thereof.”
In re Clemens,
622 F.2d 1029, 1036, 206 USPQ 289, 296
(CCPA 1980) (Evidence of the nonobviousness of a broad range can be proven by a narrower
range when one skilled in the art could ascertain a trend that would allow him to
reasonably extend the probative value thereof.). But see,
Grasselli,
713
F.2d at 743, 218 USPQ at 778 (evidence of superior properties for sodium containing
composition insufficient to establish the non-obviousness of broad claims for a catalyst
with “an alkali metal” where it was well known in the catalyst art that different alkali
metals were not interchangeable and applicant had shown unexpected results only for sodium
containing materials);
In re Greenfield,
571 F.2d 1185, 1189, 197 USPQ
227, 230 (CCPA 1978) (evidence of superior properties in one species insufficient to
establish the nonobviousness of a subgenus containing hundreds of compounds);
In
re Lindner,
457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972) (one test not
sufficient where there was no adequate basis for concluding the other claimed compounds
would behave the same way). However, an exemplary showing may be sufficient to establish a
reasonable correlation between the showing and the entire scope of the claim, when viewed
by a skilled artisan. See, e.g.,
Chupp,
816 F.2d at 646, 2 USPQ2d at
1439;
Clemens,
622 F.2d at 1036, 206 USPQ at 296. On the other hand,
evidence of an unexpected property may not be sufficient regardless of the scope of the
showing. Usually, a showing of unexpected results is sufficient to overcome a
prima facie
case of obviousness. See, e.g.,
In re
Albrecht,
514 F.2d 1389, 1396, 185 USPQ 585, 590 (CCPA 1975). However, where
the claims are not limited to a particular use, and where the prior art provides other
motivation to select a particular species or subgenus, a showing of a new use alone may not
be sufficient to confer patentability
howing of unexpected results is sufficient to overcome a
prima facie
case of obviousness. See, e.g.,
In re
Albrecht,
514 F.2d 1389, 1396, 185 USPQ 585, 590 (CCPA 1975). However, where
the claims are not limited to a particular use, and where the prior art provides other
motivation to select a particular species or subgenus, a showing of a new use alone may not
be sufficient to confer patentability. See
Dillon,
919 F.2d at 692, 16
USPQ2d at 1900-01. Accordingly, each case should be evaluated individually based on the
totality of the circumstances.
Evidence pertaining to secondary considerations must be taken into
account whenever it has been properly presented; however, it does not necessarily control
the obviousness conclusion. See, e.g.,
Pfizer, Inc. v. Apotex, Inc.,
480
F.3d 1348, 1372, 82 USPQ2d 1321, 1339 (Fed. Cir. 2007) (“the record establish[ed] such a
strong case of obviousness” that allegedly unexpectedly superior results were ultimately
insufficient to overcome obviousness conclusion);
Leapfrog Enterprises Inc. v.
Fisher-Price Inc.,
485 F.3d 1157, 1162, 82 USPQ2d 1687, 1692 (Fed. Cir. 2007)
(“given the strength of the
prima facie
obviousness showing, the
evidence on secondary considerations was inadequate to overcome a final conclusion” of
obviousness); and
Newell Cos., Inc. v. Kenney Mfg. Co.,
864 F.2d 757,
768, 9 USPQ2d 1417, 1426 (Fed. Cir. 1988). Office personnel should not evaluate rebuttal
evidence for its “knockdown” value against the
prima facie
case,
Piasecki,
745 F.2d at 1473, 223 USPQ at 788, or summarily dismiss it
as not compelling or insufficient. Office personnel should weigh all relevant evidence of
record in order to determine whether the claims would have been obvious based on a
preponderance (more likely than not) standard, and then explain their conclusions. See
MPEP §
716
-
§ 716.10
for additional information
pertaining to the evaluation of rebuttal evidence submitted under
37 CFR 1.132
dismiss it
as not compelling or insufficient. Office personnel should weigh all relevant evidence of
record in order to determine whether the claims would have been obvious based on a
preponderance (more likely than not) standard, and then explain their conclusions. See
MPEP §
716
-
§ 716.10
for additional information
pertaining to the evaluation of rebuttal evidence submitted under
37 CFR 1.132
.
The following cases exemplify the continued application of
the principle that when evidence has been presented to rebut an obviousness rejection, it
should not be evaluated simply for its “knockdown” value. Rather, all evidence must be
reweighed to determine whether the claims are nonobvious.
Example 1:
The claims at issue in
PharmaStem Therapeutics,
Inc. v. Viacell, Inc.,
491 F.3d 1342, 83 USPQ2d 1289 (Fed. Cir. 2007), were
directed to compositions comprising hematopoietic stem cells from umbilical cord or
placental blood, and to methods of using such compositions for treatment of blood and
immune system disorders. The composition claims required that the stem cells be present
in an amount sufficient to effect hematopoietic reconstitution when administered to a
human adult. The trial court had found that PharmaStem’s patents were infringed and not
invalid on obviousness or other grounds. On appeal, the Federal Circuit reversed the
district court, determining that the claims were invalid for obviousness.
The Federal Circuit discussed the evidence presented at
trial. It pointed out that the patentee, PharmaStem, had not invented an entirely new
procedure or new composition. Rather, PharmaStem’s own specification acknowledged that
it was already known in the prior art that umbilical cord and placental blood-based
compositions contained hematopoietic stem cells, and that hematopoietic stem cells were
useful for the purpose of hematopoietic reconstitution. PharmaStem’s contribution was to
provide experimental proof that umbilical cord and placental blood could be used to
effect hematopoietic reconstitution in mice
ledged that
it was already known in the prior art that umbilical cord and placental blood-based
compositions contained hematopoietic stem cells, and that hematopoietic stem cells were
useful for the purpose of hematopoietic reconstitution. PharmaStem’s contribution was to
provide experimental proof that umbilical cord and placental blood could be used to
effect hematopoietic reconstitution in mice. By extrapolation, one of ordinary skill in
the art would have expected this reconstitution method to work in humans as well.
The court rejected PharmaStem’s expert testimony that
hematopoietic stem cells had not been proved to exist in cord blood prior to the
experiments described in PharmaStem’s patents. The court explained that the expert
testimony was contrary to the inventors’ admissions in the specification, as well as
prior art teachings that disclosed stem cells in cord blood. In this case, PharmaStem’s
evidence of nonobviousness was outweighed by contradictory evidence.
Despite PharmaStem’s useful experimental validation of
hematopoietic reconstitution using hematopoietic stem cells from umbilical cord and
placental blood, the Federal Circuit found that the claims at issue would have been
obvious. There had been ample suggestion in the prior art that the claimed method would
have worked. Absolute predictability is not a necessary prerequisite to a case of
obviousness. Rather, a degree of predictability that one of ordinary skill would have
found to be reasonable is sufficient. The Federal Circuit concluded that “[g]ood science
and useful contributions do not necessarily result in patentability.”
Id.
at 1364, 83 USPQ2d at 1304.
Example 2:
It was found to be an error in
In re
Sullivan,
498 F.3d 1345, 84 USPQ2d 1034 (Fed. Cir. 2007), for the Board to
fail to consider evidence submitted to rebut a
prima facie
case of
obviousness.
The claimed invention was directed to an antivenom
composition comprising F(ab) fragments used to treat venomous rattlesnake bites
essarily result in patentability.”
Id.
at 1364, 83 USPQ2d at 1304.
Example 2:
It was found to be an error in
In re
Sullivan,
498 F.3d 1345, 84 USPQ2d 1034 (Fed. Cir. 2007), for the Board to
fail to consider evidence submitted to rebut a
prima facie
case of
obviousness.
The claimed invention was directed to an antivenom
composition comprising F(ab) fragments used to treat venomous rattlesnake bites. The
composition was created from antibody molecules that include three fragments, F(ab)2,
F(ab) and F(c), which have separate properties and utilities. There had been
commercially available antivenom products that consisted of whole antibodies and F(ab)2
fragments, but researchers had not experimented with antivenoms containing only F(ab)
fragments because it was believed that their unique properties would prevent them from
decreasing the toxicity of snake venom. The inventor, Sullivan, discovered that F(ab)
fragments are effective at neutralizing the lethality of rattlesnake venom, while
reducing the occurrence of adverse immune reactions in humans. On appeal of the
examiner’s rejection, the Board held that the claim was obvious because all the elements
of the claimed composition were accounted for in the prior art, and that the composition
taught by that prior art would have been expected by a person of ordinary skill in the
art at the time the invention was made (the case was examined under
pre-AIA 35 U.S.C.
103
) to neutralize the lethality of the venom of a rattlesnake.
Rebuttal evidence had not been considered by the Board
because it considered the evidence to relate to the intended use of the claimed
composition as an antivenom, rather than the composition itself. Appellant successfully
argued that even if the Board had shown a
prima facie
case of
obviousness, the extensive rebuttal evidence must be considered
ralize the lethality of the venom of a rattlesnake.
Rebuttal evidence had not been considered by the Board
because it considered the evidence to relate to the intended use of the claimed
composition as an antivenom, rather than the composition itself. Appellant successfully
argued that even if the Board had shown a
prima facie
case of
obviousness, the extensive rebuttal evidence must be considered. The evidence included
three expert declarations submitted to show that the prior art taught away from the
claimed invention, an unexpected property or result from the use of F(ab) fragment
antivenom, and why those having ordinary skill in the art expected antivenoms comprising
F(ab) fragments to fail. The declarations related to more than the use of the claimed
composition. While a statement of intended use may not render a known composition
patentable, the claimed composition was not known, and whether it would have been
obvious depends upon consideration of the rebuttal evidence. Appellant did not concede
that the only distinguishing factor of its composition is the statement of intended use
and extensively argued that its claimed composition exhibits the unexpected property of
neutralizing the lethality of rattlesnake venom while reducing the occurrence of adverse
immune reactions in humans. The Federal Circuit found that such a use and unexpected
property cannot be ignored – the unexpected property is relevant and thus the
declarations describing it should have been considered.
Nonobviousness can be shown when a person of ordinary
skill in the art would not have reasonably predicted the claimed invention based on the
prior art, and the resulting invention would not have been expected. All evidence must
be considered when properly presented.
Example 3:
The case of
Hearing Components, Inc. v. Shure
Inc.,
600 F.3d 1357, 94 USPQ2d 1385 (Fed. Cir. 2010), involved a disposable
protective covering for the portion of a hearing aid that is inserted into the ear
canal
sonably predicted the claimed invention based on the
prior art, and the resulting invention would not have been expected. All evidence must
be considered when properly presented.
Example 3:
The case of
Hearing Components, Inc. v. Shure
Inc.,
600 F.3d 1357, 94 USPQ2d 1385 (Fed. Cir. 2010), involved a disposable
protective covering for the portion of a hearing aid that is inserted into the ear
canal. The covering was such that it could be readily replaced by a user as needed.
At the district court, Shure had argued that Hearing
Components’ patents were obvious over one or more of three different combinations of
prior art references. The jury disagreed, and determined that the claims were
nonobvious. The district court upheld the jury verdict, stating that in view of the
conflicting evidence presented by the parties as to the teachings of the references,
motivation to combine, and secondary considerations, the nonobviousness verdict was
sufficiently grounded in the evidence.
Shure appealed to the Federal Circuit, but the Federal
Circuit agreed with the district court that the jury’s nonobviousness verdict had been
supported by substantial evidence. Although Shure had argued before the jury that the
Carlisle reference taught an ear piece positioned inside the ear canal, Hearing
Components’ credible witness countered that only the molded duct and not the ear piece
itself was taught by Carlisle as being inside the ear canal. On the issue of combining
references, Shure’s witness had given testimony described as “rather sparse, and lacking
in specific details.”
Id.
at 1364, 94 USPQ2d at 1397. In
contradistinction, Hearing Components’ witness “described particular reasons why one
skilled in the art would not have been motivated to combine the references.”
Id
ce
itself was taught by Carlisle as being inside the ear canal. On the issue of combining
references, Shure’s witness had given testimony described as “rather sparse, and lacking
in specific details.”
Id.
at 1364, 94 USPQ2d at 1397. In
contradistinction, Hearing Components’ witness “described particular reasons why one
skilled in the art would not have been motivated to combine the references.”
Id.
Finally, as to secondary considerations, the Federal Circuit
determined that Hearing Components had shown a nexus between the commercial success of
its product and the patent by providing evidence that “the licensing fee for a covered
product was more than cut in half immediately upon expiration” of the patent.
Although the
Hearing Components
case
involves substantial evidence of nonobviousness in a jury verdict, it is nevertheless
instructive for Office personnel on the matter of weighing evidence. Office personnel
routinely must consider evidence in the form of prior art references, statements in the
specification, or declarations under
37 CFR 1.130
(for cases examined
under the
AIA
35 U.S.C. 102
and
103
),
37 CFR 1.131
(for cases examined under
pre-AIA 35 U.S.C. 102
and
103
), or
1.132
(for cases examined either
under the AIA or under pre-AIA law). Other forms of evidence may also be presented
during prosecution. Office personnel are reminded that evidence that has been presented
in a timely manner should not be ignored, but rather should be considered on the record.
However, not all evidence need be accorded the same weight. In determining the relative
weight to accord to rebuttal evidence, considerations such as whether a nexus exists
between the claimed invention and the proffered evidence, and whether the evidence is
commensurate in scope with the claimed invention, are appropriate. The mere presence of
some credible rebuttal evidence does not dictate that an obviousness rejection must
always be withdrawn. See
MPEP § 2145
mining the relative
weight to accord to rebuttal evidence, considerations such as whether a nexus exists
between the claimed invention and the proffered evidence, and whether the evidence is
commensurate in scope with the claimed invention, are appropriate. The mere presence of
some credible rebuttal evidence does not dictate that an obviousness rejection must
always be withdrawn. See
MPEP § 2145
. Office personnel must consider the appropriate
weight to be accorded to each piece of evidence. An obviousness rejection should be made
or maintained only if evidence of obviousness outweighs evidence of nonobviousness. See
MPEP §
706
, subsection I. (“The standard to be applied in all cases
is the ‘preponderance of the evidence’ test. In other words, an examiner should reject a
claim if, in view of the prior art and evidence of record, it is more likely than not
that the claim is unpatentable.”).
MPEP § 716.01(d)
provides further
guidance on weighing evidence in making a determination of patentability.
Example 4:
Yita LLC, v MacNeil IP LLC,
69 F.4th
1356, 2023 USPQ2d 667 (Fed. Cir. 2023) involved consideration of Yita’s challenge to
MacNeil’s patent in two
inter partes
reviews (IPRs). In
IPR2020-01139, the Board found the patent claims nonobvious due to MacNeil’s “evidence
of secondary considerations [which was] compelling and indicative of non-obviousness.”
On appeal, the Federal Circuit reversed the Board’s final written decision.
MacNeil’s patent claims were directed to a vehicle floor
tray “closely conforming” to certain walls of the vehicle foot well, a feature that the
Board recognized was disclosed in one of the asserted prior art references (Rabbe). The
Board had found that MacNeil was entitled to a presumption of nexus because its marketed
vehicle trays embodied the claimed invention and were coextensive with the claims
Neil’s patent claims were directed to a vehicle floor
tray “closely conforming” to certain walls of the vehicle foot well, a feature that the
Board recognized was disclosed in one of the asserted prior art references (Rabbe). The
Board had found that MacNeil was entitled to a presumption of nexus because its marketed
vehicle trays embodied the claimed invention and were coextensive with the claims.
On appeal, the Federal Circuit determined that the
finding of nexus rested on two legal errors: (1) the finding that Rabbe’s disclosure
needed to but did not establish that close conformance was well-known; and (2) the
misapplication of
WBIP, LLC v. Kohler Co.,
829 F.3d 1317, 119 USPQ2d
1301 (Fed. Cir. 2016), which did not speak to the present situation where the secondary
consideration evidence is linked to an individual element of the claimed invention,
specifically the close-conformity element taught by Rabbe.
As to the first error, the court determined that their
previous case law made clear that “objective evidence of nonobviousness lacks a nexus if
it exclusively relates to a feature that was ‘known in the prior art’—not necessarily
well-known.”
Rambus Inc. v. Rea,
731 F.3d 1248, 1257, 108 USPQ2d 1400
(Fed. Cir. 2013) (emphasis in the original) (quoting
Ormco Corp. v. Align
Technology, Inc.,
463 F.3d 1299, 1312, 79 USPQ2d 1931 (Fed. Cir. 2006))
(internal quotation marks omitted). Additionally, the court noted that the finding of
coextensiveness is only relevant to the presumption of nexus and it alone does not
decide the overall nexus question.
As to the second error, the court determined the
secondary consideration evidence was related solely to the individual element of
close-conformance disclosed in the prior art to Rabbe. This circumstance was different
than the one present in
WBIP
in which no single feature (but only the
combination) was responsible for the secondary consideration evidence
does not
decide the overall nexus question.
As to the second error, the court determined the
secondary consideration evidence was related solely to the individual element of
close-conformance disclosed in the prior art to Rabbe. This circumstance was different
than the one present in
WBIP
in which no single feature (but only the
combination) was responsible for the secondary consideration evidence.
The secondary consideration evidence was the only
Graham
factor that the Board deemed to weigh in favor of
nonobviousness. Because the Board determined that an artisan of ordinary skill would
have been motivated to combine the teachings of the prior art references to arrive at
the claimed invention with a reasonable expectation of success, the court reversed the
final written decision.
MPEP § 716.01(b)
provides further
guidance on the nexus requirement and evidence of nonobviousness.
See
MPEP § 2155
regarding affidavits or
declarations under
37
CFR 1.130
to overcome prior art rejections.
See
MPEP §§ 715
et seq. and
2136.05(a)
regarding affidavits or declarations under
37 CFR
1.131
to overcome prior art rejections.
See
MPEP §§ 716
et seq. and
2136.05(b)
regarding affidavits or declarations under
37 CFR
1.132
to overcome prior art rejections.
I.
ARGUMENT DOES NOT REPLACE EVIDENCE WHERE EVIDENCE IS NECESSARY
An argument by the applicant is not evidence unless it is an admission,
in which case, an examiner may use the admission in making a rejection. See
MPEP §
2129
and
§ 2144.03
for a discussion of
admissions as prior art.
Arguments presented by applicant cannot take the place of evidence in
the record. See
In re De Blauwe,
736 F.2d 699, 705, 222 USPQ 191, 196
(Fed. Cir. 1984);
In re
Schulze,
346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965);
In re Geisler,
116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) (“An
assertion of what seems to follow from common experience is just attorney argument and
not the kind of factual evidence that is required to rebut a
prima
facie
case of obviousness.”)
e record. See
In re De Blauwe,
736 F.2d 699, 705, 222 USPQ 191, 196
(Fed. Cir. 1984);
In re
Schulze,
346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965);
In re Geisler,
116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) (“An
assertion of what seems to follow from common experience is just attorney argument and
not the kind of factual evidence that is required to rebut a
prima
facie
case of obviousness.”). See
MPEP § 716.01(c)
for examples of
applicant statements which are not evidence and which must be supported by an
appropriate affidavit or declaration.
II.
ARGUING ADDITIONAL ADVANTAGES OR LATENT PROPERTIES
Prima Facie Obviousness Is Not Rebutted by Merely Recognizing Additional
Advantages or Latent Properties Present But Not Recognized in the Prior
Art
Mere recognition of latent properties in the prior art does not
render nonobvious an otherwise known invention.
In re Wiseman,
596
F.2d 1019, 201 USPQ 658 (CCPA 1979) (Claims were directed to grooved carbon disc
brakes wherein the grooves were provided to vent steam or vapor during a braking
action. A prior art reference taught noncarbon disc brakes which were grooved for the
purpose of cooling the faces of the braking members and eliminating dust. The court
held the prior art references when combined would overcome the problems of dust and
overheating solved by the prior art and would inherently overcome the steam or vapor
cause of the problem relied upon for patentability by applicants. Granting a patent
on the discovery of an unknown but inherent function (here venting steam or vapor)
“would remove from the public that which is in the public domain by virtue of its
inclusion in, or obviousness from, the prior art.” 596 F.2d at 1022, 201 USPQ at
661.);
In re Baxter Travenol Labs.,
952 F.2d 388, 21 USPQ2d 1281
(Fed. Cir. 1991) (Appellant argued that the presence of DEHP as the plasticizer in a
blood collection bag unexpectedly suppressed hemolysis and therefore rebutted any
prima facie
showing of obviousness
that which is in the public domain by virtue of its
inclusion in, or obviousness from, the prior art.” 596 F.2d at 1022, 201 USPQ at
661.);
In re Baxter Travenol Labs.,
952 F.2d 388, 21 USPQ2d 1281
(Fed. Cir. 1991) (Appellant argued that the presence of DEHP as the plasticizer in a
blood collection bag unexpectedly suppressed hemolysis and therefore rebutted any
prima facie
showing of obviousness. However, the closest prior
art utilizing a DEHP plasticized blood collection bag inherently achieved same
result, although this fact was unknown in the prior art.).
“The fact that appellant has recognized another advantage which
would flow naturally from following the suggestion of the prior art cannot be the
basis for patentability when the differences would otherwise be obvious.”
Ex
parte Obiaya,
227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985) (The
prior art taught combustion fluid analyzers which used labyrinth heaters to maintain
the samples at a uniform temperature. Although appellant showed that an unexpectedly
shorter response time was obtained when a labyrinth heater was employed, the Board
held this advantage would flow naturally from following the suggestion of the prior
art.). See also
Lantech Inc.
v. Kaufman Co. of Ohio Inc.,
878 F.2d 1446, 12 USPQ2d 1076, 1077
(Fed. Cir. 1989),
cert. denied,
493 U.S. 1058 (1990) (unpublished
— not citable as precedent) (“The recitation of an additional advantage associated
with doing what the prior art suggests does not lend patentability to an otherwise
unpatentable invention.”).
In re Lintner,
458 F.2d 1013, 173 USPQ 560 (CCPA 1972) and
In re Dillon,
919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990)
discussed in
MPEP
§ 2144
are also pertinent to this issue.
See
MPEP § 716.02
-
§ 716.02(g)
for a discussion of
declaratory evidence alleging unexpected results.
III
ciated
with doing what the prior art suggests does not lend patentability to an otherwise
unpatentable invention.”).
In re Lintner,
458 F.2d 1013, 173 USPQ 560 (CCPA 1972) and
In re Dillon,
919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990)
discussed in
MPEP
§ 2144
are also pertinent to this issue.
See
MPEP § 716.02
-
§ 716.02(g)
for a discussion of
declaratory evidence alleging unexpected results.
III.
ARGUING THAT PRIOR ART DEVICES ARE NOT PHYSICALLY COMBINABLE
“It is well-established that a determination of obviousness based on
teachings from multiple references does not require an actual, physical substitution of
elements.”
In re Mouttet,
686 F.3d 1322, 1332, 103 USPQ2d 1219, 1226
(Fed. Cir. 2012) (citing
In re Etter,
756 F.2d 852, 859, 225 USPQ 1,
6 (Fed. Cir. 1985) (
en banc
)) (“Etter's assertions that Azure cannot
be incorporated in Ambrosio are basically irrelevant, the criterion being not whether
the references could be physically combined but whether the claimed inventions are
rendered obvious by the teachings of the prior art as a whole.”). See also
In
re Keller,
642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981) (“The test for
obviousness is not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference.... Rather, the test is what
the combined teachings of those references would have suggested to those of ordinary
skill in the art.”);
In re Sneed,
710 F.2d 1544, 1550, 218 USPQ 385,
389 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review.”); and
In
re Nievelt,
482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973) (“Combining the
teachings
of references does not involve an ability to combine
their specific structures.”).
However, the claimed combination cannot change the principle of
operation of the primary reference or render the reference inoperable for its intended
purpose. See
MPEP
§ 2143.01
, subsection VI.
IV
he invention under review.”); and
In
re Nievelt,
482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973) (“Combining the
teachings
of references does not involve an ability to combine
their specific structures.”).
However, the claimed combination cannot change the principle of
operation of the primary reference or render the reference inoperable for its intended
purpose. See
MPEP
§ 2143.01
, subsection VI.
IV.
ARGUING AGAINST REFERENCES INDIVIDUALLY
One cannot show nonobviousness by attacking references individually where the
rejections are based on combinations of references
.
In re
Keller,
642 F.2d 413, 208 USPQ 871 (CCPA 1981);
In re Merck &
Co., Inc.,
800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Where a rejection
of a claim is based on two or more references, a reply that is limited to what a subset
of the applied references teaches or fails to teach, or that fails to address the
combined teaching of the applied references may be considered to be an argument that
attacks the reference(s) individually. Where an applicant’s reply establishes that each
of the applied references fails to teach a limitation and addresses the combined
teachings and/or suggestions of the applied prior art, the reply as a whole does not
attack the references individually as the phrase is used in
Keller
and reliance on
Keller
would not be appropriate. This is because
“[T]he test for obviousness is what the combined teachings of the references would have
suggested to [a PHOSITA].”
In re Mouttet,
686 F.3d 1322, 1333, 103
USPQ2d 1219, 1226 (Fed. Cir. 2012).
V.
ARGUING ABOUT THE NUMBER OF REFERENCES COMBINED
Reliance on a large number of references in a rejection does not,
without more, weigh against the obviousness of the claimed invention.
In re
Gorman,
933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991) (Court affirmed a
rejection of a detailed claim to a candy sucker shaped like a thumb on a stick based on
thirteen prior art references.).
VI
Cir. 2012).
V.
ARGUING ABOUT THE NUMBER OF REFERENCES COMBINED
Reliance on a large number of references in a rejection does not,
without more, weigh against the obviousness of the claimed invention.
In re
Gorman,
933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991) (Court affirmed a
rejection of a detailed claim to a candy sucker shaped like a thumb on a stick based on
thirteen prior art references.).
VI.
ARGUING LIMITATIONS WHICH ARE NOT CLAIMED
Although the claims are interpreted in light of the specification,
limitations from the specification are not read into the claims.
In re Van
Geuns,
988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993) (Claims to a
superconducting magnet which generates a “uniform magnetic field” were not limited to
the degree of magnetic field uniformity required for Nuclear Magnetic Resonance (NMR)
imaging. Although the specification disclosed that the claimed magnet may be used in an
NMR apparatus, the claims were not so limited.);
Constant v. Advanced
Micro-Devices, Inc.,
848 F.2d 1560, 1571-72, 7 USPQ2d 1057, 1064-1065 (Fed.
Cir.),
cert. denied,
488 U.S. 892 (1988) (Various limitations on
which appellant relied were not stated in the claims; the specification did not provide
evidence indicating these limitations must be read into the claims to give meaning to
the disputed terms.);
Ex parte McCullough,
7 USPQ2d 1889, 1891 (Bd.
Pat. App. & Inter. 1987) (Claimed electrode was rejected as obvious despite
assertions that electrode functions differently than would be expected when used in
nonaqueous battery since “although the demonstrated results may be germane to the
patentability of a battery containing appellant’s electrode, they are not germane to the
patentability of the invention claimed on appeal.”).
See
MPEP
§ 2111
-
§ 2116.01
, for additional case law
relevant to claim interpretation.
VII
assertions that electrode functions differently than would be expected when used in
nonaqueous battery since “although the demonstrated results may be germane to the
patentability of a battery containing appellant’s electrode, they are not germane to the
patentability of the invention claimed on appeal.”).
See
MPEP
§ 2111
-
§ 2116.01
, for additional case law
relevant to claim interpretation.
VII.
ARGUING ECONOMIC INFEASIBILITY
The fact that a "combination would not be made by businessmen for
economic reasons" does not mean that a person of ordinary skill in the art would not
make the combination because of some technological incompatibility.
In re
Farrenkopf,
713 F.2d 714, 718, 219 USPQ 1, 4 (Fed. Cir. 1983) (Prior art
reference taught that addition of inhibitors to radioimmunoassay is the most convenient,
but costliest solution to stability problem. The court held that the additional expense
associated with the addition of inhibitors would not discourage one of ordinary skill in
the art from seeking the convenience expected therefrom.).
VIII.
ARGUING ABOUT THE AGE OF REFERENCES
“The mere age of the references is not persuasive of the unobviousness
of the combination of their teachings, absent evidence that, notwithstanding knowledge
of the references, the art tried and failed to solve the problem.”
In re
Wright,
569 F.2d 1124, 1127, 193 USPQ 332, 335 (CCPA 1977) (100 year old
patent was properly relied upon in a rejection based on a combination of references.).
See also
Ex parte Meyer,
6 USPQ2d 1966 (Bd. Pat. App. & Inter.
1988) (length of time between the issuance of prior art patents relied upon (1920 and
1976) was not persuasive of nonobviousness).
IX.
ARGUING THAT PRIOR ART IS NONANALOGOUS
See
MPEP
§ 2141.01(a)
for case law pertaining to analogous art.
X.
ARGUING IMPROPER RATIONALES FOR COMBINING REFERENCES
A.
Impermissible Hindsight
Applicants may argue that the examiner’s conclusion of obviousness
is based on improper hindsight reasoning
n the issuance of prior art patents relied upon (1920 and
1976) was not persuasive of nonobviousness).
IX.
ARGUING THAT PRIOR ART IS NONANALOGOUS
See
MPEP
§ 2141.01(a)
for case law pertaining to analogous art.
X.
ARGUING IMPROPER RATIONALES FOR COMBINING REFERENCES
A.
Impermissible Hindsight
Applicants may argue that the examiner’s conclusion of obviousness
is based on improper hindsight reasoning. However, “[a]ny judgment on obviousness is
in a sense necessarily a reconstruction based on hindsight reasoning, but so long as
it takes into account only knowledge which was within the level of ordinary skill in
the art at the time the claimed invention was made and does not include knowledge
gleaned only from applicant’s disclosure, such a reconstruction is proper.”
In re McLaughlin,
443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA
1971). “A factfinder should be aware, of course, of the distortion caused by
hindsight bias and must be cautious of arguments reliant upon ex post reasoning. . .
. Rigid preventative rules that deny factfinders recourse to common sense, however,
are neither necessary under our case law nor consistent with it.”
KSR Int'l
Co. v. Teleflex Inc.,
550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007)
(internal quotations omitted). Applicants may also argue that the combination of two
or more references is “hindsight” because “express” motivation to combine the
references is lacking. However, there is no requirement that an “express, written
motivation to combine must appear in prior art references before a finding of
obviousness.”
Ruiz v. A.B. Chance Co.,
357 F.3d 1270, 1276, 69
USPQ2d 1686, 1690 (Fed. Cir. 2004). See
KSR,
550 U.S. at 402, 82
USPQ2d at 1389 (“The diversity of inventive pursuits and of modern technology
counsels against confining the obviousness analysis by a formalistic conception of
the words teaching, suggestion, and motivation, or by overemphasizing the importance
of published articles and the explicit content of issued patents.”) See also
Uber Techs., Inc. v
1686, 1690 (Fed. Cir. 2004). See
KSR,
550 U.S. at 402, 82
USPQ2d at 1389 (“The diversity of inventive pursuits and of modern technology
counsels against confining the obviousness analysis by a formalistic conception of
the words teaching, suggestion, and motivation, or by overemphasizing the importance
of published articles and the explicit content of issued patents.”) See also
Uber Techs., Inc. v. X One, Inc.,
957 F.3d 1334, 1339-40, 2020
USPQ2d 10476 (Fed. Cir. 2020) (“[W]e hold that the Board erred when it determined
that a person of ordinary skill in the art would not have been motivated to combine
the teachings of Okubo with Konishi's server-side plotting to render obvious the
limitation ‘software ... to transmit the map with plotted locations to the first
individual.’ This combination does not represent ‘impermissible hindsight’…. Rather,
because Okubo's terminal-side plotting and Konishi's server-side plotting were both
well known in the art, and were the only two identified, predictable solutions for
transmitting a map and plotting locations, it would have been obvious to substitute
server-side plotting for terminal-side plotting in a combination of Okubo and
Konishi.”).
See
MPEP § 2141
and
§
2143
for guidance regarding establishment of a
prima facie
case of obviousness.
B.
Obvious To Try Rationale
An applicant may argue the examiner is applying an improper “obvious
to try” rationale in support of an obviousness rejection.
An “obvious to try” rationale may support a conclusion that a claim
would have been obvious where one skilled in the art is choosing from a finite number
of identified, predictable solutions, with a reasonable expectation of success. “ [A]
person of ordinary skill has good reason to pursue the known options within his or
her technical grasp. If this leads to the anticipated success, it is likely that
product [was] not of innovation but of ordinary skill and common sense
have been obvious where one skilled in the art is choosing from a finite number
of identified, predictable solutions, with a reasonable expectation of success. “ [A]
person of ordinary skill has good reason to pursue the known options within his or
her technical grasp. If this leads to the anticipated success, it is likely that
product [was] not of innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might show that it was
obvious under
§
103
.”
KSR Int'l Co. v. Teleflex Inc.,
550
U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007).
“The admonition that ‘obvious to try’ is not the standard under
§
103
has been directed mainly at two kinds of error. In some
cases, what would have been ‘obvious to try’ would have been to vary all parameters
or try each of numerous possible choices until one possibly arrived at a successful
result, where the prior art gave either no indication of which parameters were
critical or no direction as to which of many possible choices is likely to be
successful.... In others, what was ‘obvious to try’ was to explore a new technology
or general approach that seemed to be a promising field of experimentation, where the
prior art gave only general guidance as to the particular form of the claimed
invention or how to achieve it.”
In re O’Farrell,
853 F.2d 894,
903, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988) (citations omitted) (The court held the
claimed method would have been obvious over the prior art relied upon because one
reference contained a detailed enabling methodology, a suggestion to modify the prior
art to produce the claimed invention, and evidence suggesting the modification would
be successful.).
C.
Lack of Suggestion To Combine References
A teaching, suggestion, or motivation to combine references that is
found in the prior art is an appropriate rationale for determining obviousness.
KSR,
550 U.S. at 418, 82 USPQ2d at 1396. However, it is just
one of a number of valid rationales for doing so
to produce the claimed invention, and evidence suggesting the modification would
be successful.).
C.
Lack of Suggestion To Combine References
A teaching, suggestion, or motivation to combine references that is
found in the prior art is an appropriate rationale for determining obviousness.
KSR,
550 U.S. at 418, 82 USPQ2d at 1396. However, it is just
one of a number of valid rationales for doing so. The Court in
KSR
identified several exemplary rationales to support a conclusion of obviousness which
are consistent with the proper “functional approach” to the determination of
obviousness as laid down in
Graham.
KSR,
550 U.S. at 415-21, 82 USPQ2d at 1395-97. See
MPEP §
2141
and
§ 2143
.
D.
References Teach Away from the Invention or Render Prior Art
Unsatisfactory for Intended Purpose
In addition to the material below, see
MPEP § 2141.02
(prior art must be considered in its entirety, including disclosures that teach away
from the claims) and
MPEP § 2143.01
, subsection VI (proposed modification
cannot render the prior art unsatisfactory for its intended purpose or change the
principle of operation of a reference).
1.
The Nature of the Teaching Is Highly
Relevant
A prior art reference that “teaches away” from the claimed
invention is a significant factor to be considered in determining obviousness.
However, “the nature of the teaching is highly relevant and must be weighed in
substance. A known or obvious composition does not become patentable simply
because it has been described as somewhat inferior to some other product for the
same use.”
In re
Gurley,
27 F.3d 551, 553, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994)
(Claims were directed to an epoxy resin based printed circuit material. A prior
art reference disclosed a polyester-imide resin based printed circuit material,
and taught that although epoxy resin based materials have acceptable stability and
some degree of flexibility, they are inferior to polyester-imide resin based
materials
In re
Gurley,
27 F.3d 551, 553, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994)
(Claims were directed to an epoxy resin based printed circuit material. A prior
art reference disclosed a polyester-imide resin based printed circuit material,
and taught that although epoxy resin based materials have acceptable stability and
some degree of flexibility, they are inferior to polyester-imide resin based
materials. The court held the claims would have been obvious over the prior art
because the reference taught epoxy resin based material was useful for the
inventor’s purpose, applicant did not distinguish the claimed epoxy from the prior
art epoxy, and applicant asserted no discovery beyond what was known to the
art.).
Furthermore, “the prior art’s mere disclosure of more than one
alternative does not constitute a teaching away from any of these alternatives
because such disclosure does not criticize, discredit, or otherwise discourage the
solution claimed….”
In re Fulton,
391 F.3d 1195, 1201, 73
USPQ2d 1141, 1146 (Fed. Cir. 2004). See also
UCB, Inc. v. Actavis Labs,
UT, Inc.,
65 F.4th 679, 692, 2023 USPQ2d 448 (Fed. Cir. 2023) (“a
reference does not teach away if it merely expresses a general preference for an
alternative invention but does not criticize, discredit or otherwise discourage
investigation into the invention claimed.”) (internal quotations omitted) (quoting
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
567 F.3d
1314, 1327 (Fed. Cir. 2009)); and
Schwendimann v. Neenah, Inc.,
82 F.4th 1371, 1381, 2023 USPQ2d 1173 (Fed. Cir. 2023) (“Although Oez [the prior
art] used a white pigment with a cross-linking polymer, it does not discourage a
skilled artisan from using the white pigment without a cross-linking polymer or
lead the skilled artisan in a direction divergent from the path taken in the
Appealed Patents. Thus, Oez's disclosure is substantial evidence that supports the
Board's finding that Oez does not teach away from the proposed combination.”).
2
rt] used a white pigment with a cross-linking polymer, it does not discourage a
skilled artisan from using the white pigment without a cross-linking polymer or
lead the skilled artisan in a direction divergent from the path taken in the
Appealed Patents. Thus, Oez's disclosure is substantial evidence that supports the
Board's finding that Oez does not teach away from the proposed combination.”).
2.
References Cannot Be Combined Where Reference Teaches Away from Their
Combination
It is improper to combine references where the references teach
away from their combination.
In re Grasselli,
713 F.2d 731,
743, 218 USPQ 769, 779 (Fed. Cir. 1983) (The claimed catalyst which contained both
iron and an alkali metal was not suggested by the combination of a reference which
taught the interchangeability of antimony and alkali metal with the same
beneficial result, combined with a reference expressly excluding antimony from,
and adding iron to, a catalyst.).
3.
Proceeding Contrary to Accepted Wisdom Is Evidence of Nonobviousness
The totality of the prior art must be considered, and proceeding
contrary to accepted wisdom in the art is evidence of nonobviousness.
In
re Hedges,
783 F.2d 1038, 228 USPQ 685 (Fed. Cir. 1986) (Applicant’s
claimed process for sulfonating diphenyl sulfone at a temperature above 127ºC was
contrary to accepted wisdom because the prior art as a whole suggested using lower
temperatures for optimum results as evidenced by charring, decomposition, or
reduced yields at higher temperatures.).
Furthermore, “[k]nown disadvantages in old devices which would
naturally discourage search for new inventions may be taken into account in
determining obviousness.”
United States v. Adams,
383 U.S. 39,
52, 148 USPQ 479, 484 (1966).
E.
Applicability of KSR to All Technologies
At the time the
KSR
decision was
handed down, some observers questioned whether the principles discussed were intended
by the Supreme Court to apply to all fields of inventive endeavor
ld
naturally discourage search for new inventions may be taken into account in
determining obviousness.”
United States v. Adams,
383 U.S. 39,
52, 148 USPQ 479, 484 (1966).
E.
Applicability of KSR to All Technologies
At the time the
KSR
decision was
handed down, some observers questioned whether the principles discussed were intended
by the Supreme Court to apply to all fields of inventive endeavor. Arguments were
made that because the technology at issue in
KSR
involved the
relatively well-developed and predictable field of vehicle pedal assemblies, the
decision was relevant only to such fields. The Federal Circuit has soundly repudiated
such a notion, stating that
KSR
applies across technologies:
This court also declines to cabin KSR to the
“predictable arts” (as opposed to the “unpredictable art” of biotechnology). In
fact, this record shows that one of skill in this advanced art would find these
claimed “results” profoundly “predictable.”
In re Kubin,
561 F.3d 1351, 1360, 90 USPQ2d 1417, 1424 (Fed. Cir.
2009). Thus, Office personnel should not withdraw any rejection solely on the basis
that the invention lies in a technological area ordinarily considered to be
unpredictable. See also
MPEP § 2143.02
.
XI.
FORM PARAGRAPHS
See
MPEP
§ 707.07(f)
for form paragraphs
7.37
through
7.38
which may be used where applicant’s
arguments are not persuasive or are moot.
[top]

## Nearby sections

- [MPEP § 2103 Patent Examination Process](https://www.frixlaw.com/law-library/statutes/MPEP_S2103.md)
- [MPEP § 2104 Requirements of 35 U.S.C. 101](https://www.frixlaw.com/law-library/statutes/MPEP_S2104.md)
- [MPEP § 2104.01 Barred by Atomic Energy Act](https://www.frixlaw.com/law-library/statutes/MPEP_S2104.01.md)
- [MPEP § 2105 Patent Eligible Subject Matter — Living Subject Matter](https://www.frixlaw.com/law-library/statutes/MPEP_S2105.md)
- [MPEP § 2106 Patent Subject Matter Eligibility](https://www.frixlaw.com/law-library/statutes/MPEP_S2106.md)
- [MPEP § 2106.01 [Reserved]](https://www.frixlaw.com/law-library/statutes/MPEP_S2106.01.md)
- [MPEP § 2106.02 [Reserved]](https://www.frixlaw.com/law-library/statutes/MPEP_S2106.02.md)
- [MPEP § 2106.03 Eligibility Step 1: The Four Categories of Statutory Subject Matter](https://www.frixlaw.com/law-library/statutes/MPEP_S2106.03.md)
- [MPEP § 2106.04 Eligibility Step 2A: Whether a Claim is Directed to a Judicial Exception](https://www.frixlaw.com/law-library/statutes/MPEP_S2106.04.md)
- [MPEP § 2106.04(a) Abstract Ideas](https://www.frixlaw.com/law-library/statutes/MPEP_S2106.04(a).md)
- [MPEP § 2106.04(a)(1) Examples of Claims That Do Not Recite Abstract Ideas](https://www.frixlaw.com/law-library/statutes/MPEP_S2106.04(a)(1).md)
- [MPEP § 2106.04(a)(2) Abstract Idea Groupings](https://www.frixlaw.com/law-library/statutes/MPEP_S2106.04(a)(2).md)
- [MPEP § 2106.04(a)(3) Tentative Abstract Ideas](https://www.frixlaw.com/law-library/statutes/MPEP_S2106.04(a)(3).md)
- [MPEP § 2106.04(b) Laws of Nature, Natural Phenomena & Products of Nature](https://www.frixlaw.com/law-library/statutes/MPEP_S2106.04(b).md)

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Source: Frix Law Library, https://www.frixlaw.com/law-library/statutes/MPEP_S2145. Check the current official text before relying on it. Not legal advice.