Strangers in Paradise: Obviousness Part 2

Today we begin discussion of our patent practitioners’ tools to overcome rejections based upon obviousness in the United States patent office. Typically, to reject a patent utility application for obviousness, the examiner presents several earlier patents and/or patent applications (also known as references). These applications and patents purportedly present identical or similar features to those of the applicant’s invention. The examiner organizes rejection of the invention on a claim by claim basis (claims are the long sentences that define the scope of the protection of the invention requested from the patent office). In some applications specific claims may be rejected while others are considered acceptable. As a practical matter, the acceptable claims are generally much narrower in scope of protection than those that are found obviousness.

The business person must understand that it is the practitioner’s obligation to artfully implement these tests in reply to obviousness rejections. To do so may require a tremendous of effort on the part of the practitioner and the inventor and/or business person, and even if the examiner’s rational for rejection is relatively brief. For example, the examiner may alert the practitioner to similar or identical features in two previous patents or patent applications. He or she then may conclude with an assertion such as: It would have been obvious to combine the features in one device and the second device to arrive at the pending invention. It is then the practitioner’s responsibility to evaluate these assertions through all the legal tests for obviousness.

The business owner must also understand that the examiner may present additional patents and patent applications on which to base an obviousness rejection. This approach is appropriate even if your practitioner successfully overcomes obviousness rejections based upon previous patents and patent applications. There is also no limit to how many references the examiner may present in a single letter and to which the practitioner must respond in total. In my own practice I have seen both of these situations combined into one tremendously long examiner’s letter. Not surprisingly, in one instance my reply to the examiner was over 150 typewritten pages, plus government forms, affidavits and exhibits.

Fortunately for you and your practitioners there are several tests to use as tools for overcoming these rejections. One such test addresses obviousness of the invention as a whole. Even if a specific change in the invention previously existed, the entire new invention may not obvious because of a unique combination, improvement or criticality of the change. The test also determines whether any features are necessarily present in either the earlier subject matter or the pending invention. For example, the client may apply for a new self-watering storage rack for floral containers. The examiner may state that a watering method is necessarily present in an earlier patent, although not explicitly described therein. If appropriate, the practitioner would reply as part of the ‘as a whole’ analysis that such features were not necessarily present in the earlier reference. The practitioner must also state a specific reason for this conclusion. This reasoning generally requires citations to the references’ page number, and line numbers and drawings, as well as the client’s patent application.

© 2011 Adrienne B. Naumann
Ms. Naumann does not endorse or sponsor the advertisements at


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