The Manhattan Project: Obviousness part 3

This week we continue discussion of the manner in which patent practitioners overcome obviousness rejections of your invention in the United States patent office. This goal is most often met with analysis through a series of legal tests. Our test of this week addresses the situation wherein a rejected claim sentences contains features that are not described in the patents or patent applications (i.e., references) upon which the examiner relies (For a refresher on the legal significance and
content of a claim in a United  States utility patent application, please refer to my previous posts or contact my office and we will electronically forward it to you). This situation occurs whenever the examiner combines features found within these references to ostensibly arrive at your invention’s features in a claim sentence.

This test is a truly beneficial analysis to the application and is relatively straightforward in application: If your claim sentence designates any feature not found in the references, then on this basis the invention described in that claim sentence is not obvious. For example, suppose your invention is a storage unit and your claim sentence reads as follows:

A storage unit in which the shelves reversibly attach to two vertical posts and the vertical posts reversibly attach to a base made of three plastic panels.

In this example, the examiner denies your invention as described in this claim sentence. In this analysis the reference upon which the examiner relies describes a storage unit with two vertical posts and a base, but the base is made of two steel plates. Your practitioner replies to the rejection that the government’s reference does not explicitly or implicitly describe a base made of three plastic panels and therefore this claim is not obvious on this basis.

Now suppose your patent practitioner originally drafted the claim as follows:

A storage unit in which the shelves reversibly attach to two vertical posts and the vertical posts reversibly attach to a base.

One of your practitioners’ options in responding to the rejection is to add to the claim sentence that the base is made of three plastic panels. This additional feature results in a claim with a narrow scope of protection, but according to this test the modified claim is no longer obvious.

The greatest advantage of this test it that it is relatively easy for your practitioner to respond in a victorious manner without pages evidence such as affidavits, expensive marketing surveys, customer questionnaires, statistical analysis and potential exposure of confidential sales data. There is also no requirement for lists of legal citations, specialty references and legal analysis. In twenty years of practice before the patent office, in most instances I have found features within a claim sentence that are not explicitly or implicitly described in the references. In the remaining situations, my client’s application always contained features to add to a claim that were not present in the reference upon with the examiner relied. In fact, an experienced practitioner can easily include a feature to the claim that does not significantly reduce the scope of the claim and still protects features with the most commercial value.

© 2011 Adrienne B. Naumann

Ms. Naumann does not endorse or sponsor the advertisements at


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