Technology Center 1600 Training on Writing Rejections Under 35 U.S.C. § 103

Goals of the Presentation n Keep you awake for about an hour. Z Z Z Z Z Z Z Z Z Z

Goals of the Presentation n Present a methodology for analyzing 103 issues and writing 103 rejections to help you: –Make decisions on 103 issues more efficiently and accurately –Write 103 rejections that are clear to all who would read them –Save time and effort

Goals of the Presentation n For those who already follow the methodology: –Reinforce the methodology in your work –Encourage you to continue

Obviousness A Review

35 U.S.C. § 103(a) (in part) n A patent may not be obtained … if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. (emphasis added).

Graham v. John Deere Test n Determination of the scope and content of the prior art n Ascertainment of the differences between the prior art and the claims at issue n Resolution of the level of ordinary skill in the pertinent art n Evaluation of evidence of secondary considerations

Prima Facie Obviousness n An examiner bears the initial burden of presenting a prima facie conclusion of obviousness. n If the Examiner does not make a prima facie case, an applicant is under no obligation to submit evidence of nonobviousness. n A prima facie case will shift the burden to applicant.

Prima Facie Obviousness: Requirements n There must be some suggestion or motivation to modify the reference or to combine reference teachings. n There must be a reasonable expectation of success. n The prior art reference (or references when combined) must teach or suggest all the claim limitations.

A Clear Rejection? Why?

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Patent Business Goal IV n To exceed our customers quality expectations through the competencies and empowerment of our employees

Four Objectives or Drivers n Direct the customers promptly to the proper office or person. n Return telephone calls within one business day, or provide another contact. n Set forth clearly in written communications the technical, procedural, and legal positions of the examiner. n Conduct a thorough search of all relevant information.

Benefits to the Examiner n It will be easier for you to refamiliarize yourself with the application and your position relative to the claims. n It will help reduce errors in decision making.

Benefits to the Examiner n A clearly formulated rejection will more likely result in a clearly formulated response. n A clearly formulated response will make it easier for you to allow the application or write a final rejection.

Fairness to Applicant n Applicant has a right to know exactly why his or her invention has not met the criteria of the law. n Cost for Applicant

Those of Less Than Ordinary Skill in the Art n SPEs (sometimes) n Group Directors (more often) n Administrative Patent Judges (usually) n Federal Judges (almost always) n Quality Assurance Specialist (always) n Businessmen

35 U.S.C. § 103 Parts of a Clear and Complete Rejection

Clear Statement of the Basis for the Rejection n What references are being combined? n Clear: –A in view of B –Either one of A or B in view of either one of C or D n Unclear –A in view of B and C or D –Either A or B in view of either C or D

Item Matching: Primary Reference n Use claim language and explain where features are taught in the reference. n Use reference numerals or column and line numbers from the reference.

Item Matching: Primary Reference - Examples n Reference A discloses a method that clearly includes all the steps recited in the claims except...See column...line… n Reference A discloses a method that is basically the same as that recited. See column...line...for step (a) as recited, column...line...for step (b) as recited...

Clear Statement of Differences n What is recited in the claims but not taught in the primary reference?

Clear Statement of Difference: Examples n Reference A discloses a method that clearly includes all the steps recited in the claims except… n However, Reference A fails to teach that the method includes step (e) as recited in the claims.

Item Matching: Secondary Reference(s) (when applicable) n This generally will be directed to the differences and can include any advantages/benefits noted in the reference(s). n Use claim language and explain where features are taught in the reference. n Use reference numerals or column and line numbers from the reference.

Clear Statement of What Would Have Been Obvious n This should constitute a statement or explanation of how the primary reference is to be modified or combined with the teachings of other references. n The statement should be specific.

Clear Statement of What Would Have Been Obvious - Examples n Acceptable: It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the method of Reference A so as to include a further step...as taught in Reference B… n Unacceptable: Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to combine the teachings of the references to produce the claimed method...

Clear Motivation Statement n States why one having ordinary skill in the art would have been motivated to make the modification or combination noted in the Clear Statement of What Would Have Been Obvious.

Clear Motivation Statement - Examples n Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the method of Reference A so as to include a further step...as taught in Reference B because… n One having ordinary skill in the art would have been motivated to make such a modification because...

Clear Motivation Statement - Unacceptable Example n Therefore, it would have been obvious to one having ordinary skill in the art to modify the method of Reference A so as to include a further step (e) as taught in Reference B because Reference A teaches the basic method and Reference B teaches step (e).

Template n Helps to ensure that the Examiner meets the initial burden of establishing a prima facie case of obviousness n Helps to ensure that the Examiner has done a proper obviousness analysis.

A.Claim [(s) # is/are] rejected under 35 U.S.C. § 103(a) as being unpatentable over [Reference A] in view of [Reference B] B.[Reference A] discloses [insert the claim limitations found in Reference A; give column and line numbers, drawing element number, etc.]. C.[Reference A] does not expressly disclose [insert the claim limitations missing form Reference A]. D.[Reference B] discloses [insert the claim limitations found in Reference B; give column and line numbers, drawing element number, etc.]. E.It would have been obvious to a person of ordinary skill in the art at the time the invention was made to [insert explanation how Reference B is used to modify Reference A]. F.One having ordinary skill in the art would have been motivated to do this [insert reasons why modification would have been obvious; give column and lines numbers if motivation is found in References A or B].