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.

The 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.

The 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.