Written by Mark Terry   

Today the Board of Patent Appeals and Interferences (BPAI) of the U.S. Patent and Trademark Office reversed a Patent Examiner’s 35 U.S.C. sec. 103(a) obviousness rejection because the Examiner did not adequately explain why the ordinary artisan would have combined the cited prior art references. As a practicing Miami Patent Lawyer who responds to 35 U.S.C. sec. 103(a) obviousness rejections weekly, today’s decision of the BPAI is instructive because it illustrates a method for attacking obviousness rejections.

The patent application at issue belongs to International Specialty Products, a global supplier of pharmaceutical products. The Patent Examiner found multiple prior art references and combined them into a 35 U.S.C. sec. 103(a) obviousness rejection. As is typical for the Patent Office these days, the Examiner’s reason for combining the references started with a boiler plate sentence – “one of ordinary skill in the art at the time the invention was made could have been motivated to do so” – and ended with a terse phrase formulated by the Examiner – “in order to improve stability.” And other than those 5 words, that’s all the Examiner wrote about the reasons for combining – no elaboration, no citation to the references, and no further explanation. As a patent attorney with a sizable patent prosecution docket, this is all too familiar to me. Of course, the Appellant argued the Examiner did not adequately explain why the references should be combined.

The BPAI stated: “A rejection for obviousness must include ‘articulated reasoning with some rational underpinning to support the legal conclusion.’ KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), quoting In re Kahn, 441 F.3d 977 (Fed. Cir. 2006) … The Examiner has neither identified any objective teaching in the prior art, nor referenced knowledge generally available to one of ordinary skill in the art that would have led that individual to combine … [the two cited references] in order to improve stability. Moreover, the Examiner has not provided any reasoning why stability was a problem that needed to be solved.” Thus, the BPAI reversed the Examiner’s rejection.

This simple case illustrates a valuable lesson to practicing patent practitioners. When encountering a 35 U.S.C. sec. 103(a) obviousness rejection, the Examiner’s reasons for combining the cited references is crucial and necessary to the viability of the rejection. The Examiner’s reasoning should be scrutinized to ensure that in fact there is evidence in the cited references and/or in the art in general for supporting his reasoning. It is not enough for an Examiner to state that one of ordinary skill in the art would have combined the references in order to [insert reason here]. The Examiner should cite a passage in the cited references indicating a reason to combine and/or cite a publication or other written work illustrating that general knowledge in the art indicates a reason to combine. If the Examiner does neither in his rejection, you have a great premise for reversing his rejection.