Written by: Mark Terry
Last week’s Board of Patent Appeals and Interferences (BPAI) decision of Ex Parte Lim , which affirmed a Patent Examiner’s 35 U.S.C. 103 obviousness rejection, teaches an important lesson – obviousness rejections must address both references – not just one. As a Miami Patent Attorney that reads BPAI decisions frequently, I’m surprised that any practitioners even try this argument anymore.
case of Ex Parte Lim involved a mobile
communications network, such as those used by cell phone providers. The
Examiner issued a 35 U.S.C. 103 obviousness rejection based on two references –
Lipsanen and Siren. The Appellant argued that Lipsanen did not disclose the
claimed subject matter. The Appellant did not address Siren and did not address
the combination of
the two references.
Board decided: “Appellants’ argument [regarding] Lipsanen … is unpersuasive as
it attacks the disclosure of Lipsanen individually, rather than
addressing the combination with Sirén described by the Examiner. See In
re Keller, 642 F.2d 413, 425 (CCPA 1981) and In re
Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Lessons Learned: The lesson here is a simple one. When attacking a 35 U.S.C. 103 obviousness rejection, it doesn’t help to attack references individually. You must focus on the central concept behind the Examiner’s rejection – the combination of the references. This means you must focus on why the combination – not the individual references – fail to disclose the claimed invention. For example, if your argument involves a claim element that is missing from the prior art, then you must argue that the combination – not the individual references – fail to disclose the claim element.