Gunfight at OK Corral: Obviousness Part 6

In our last discussions of overcoming obviousness rejections in the United States Patent Office, we addressed approaches in which ‘the proof was in the pudding.’ That is, in responding to an examiner’s rejection we looked to our claim sentences for features that were not disclosed in the government’s references. In a related approach we explain to the examiner how these claim limitations are inapposite to (that is, teaching away from) features of the examiner’s references.

The next approach is demonstration of invention development for the prototype or method designated by the rejected claim sentences. This approach is somewhat counter-intuitive in that the inventor, generally in a declaration or affidavit, describes the mistakes and blind alleys he or she experienced while developing the invention. When initially hearing this request, most inventors react by asking why anyone would want to know all the development mistakes. The answer is as follows: The disputed invention superficially appears very similar to existing devices or methods because small structural changes do not appear as significant improvements. It is then the inventor’s responsibility to evidence the extended amount of time, expertise, experimentation, testing and design required for these changes, as the case may be.

For example, one of my clients filed a U.S. utility patent application for an improved portable animal waste remover (a pooper scooper to most of us). Superficially, the device looked like a shovel, and everyone knows that there are already a great many shovels and animal waste scoops in existence. Not surprising the examiner rejected all the claim sentences in his first letter to the client. However, my client had a secret weapon: a notebook complete with cad drawings of the numerous designs and sketches he conceived before he created several related prototypes.

Consequently, our response strategy was a declaration for my client in which he described the numerous steps in the design development of the scoop (shovel) component in particular. Attached to this declaration, and referenced at appropriate points therein, were photographic images of the cad drawings and photographs of the original prototype in resin on a mockup. Was there a happy ending of this story? Yes, because the examiner eventually approved several claims to three related prototypes in the application! Although these claims were necessarily narrow in a crowded art area, there a real possibility that no claims would have been allowed without evidence of prior design and prototype development.

Of course, not every client has a notebook filled with the exact technical drawings to document the development an invention. However, with initial skillful questions from the patent practitioner, most inventors will recall how certain changes came about. For example, in my practice an inventor of a storage device initially overlooked many phases of his product development because he did not initially perceive large structural changes.

However, after initial analysis of device components, this same client recalled the testing of wheels with different dimensions and weights. He also recalled that the device is now longer longitudinally as well as uniform in height and width. He then recalled that he produced new molds so that vertical supports are now wider and thicker than previously. The key? The inventor must understand that (i) overlooked changes are often patentable, and (ii) combinations of these changes may be critical to significant improvement over previous existing subject matter.

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


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