Novel Arguments That Don’t Work Against a 103 Rejection – Florida Patent Lawyer Blog

Written by Mark Terry

In it’s first decision of the day this sleepy Monday morning, the Board of Patent Appeals and Interferences (BPAI) rejected a novel “market forces” argument in favor of a Patent Examiner’s 35 U.S.C. 103 obviousness rejection. As a Miami Patent Lawyer, I found the Ex parte Scherschel decision interesting because I like to read the novel arguments asserted by patent attorneys when they have a dog of a case. And sometimes the BPAI’s response is even more interesting.

The case of Ex parte Scherschel involved an invention related to cell phone communications systems. This case was on re-hearing, which means the Applicant was attempting to overturn a BPAI decision based on a Patent Examiner’s rejection. The Patent Examiner had rejected the Applicant’s claim under 35 U.S.C. 103 for being obvious. The Applicant argued that the Examiner and the Board erred because they had not considered market forces. Specifically, the Applicant argued

KSR also mandates that we consider a commonsense consideration of market forces and the effects of demands known to the design community when assessing the obviousness of a given prior art combination. KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 417-418 (2007).”

Now that’s a novel argument. Patent practitioners know that market forces are rarely, if ever, a subject that we bring up during patent prosecution. The only commonly-used exception is when you make an argument of long-felt need – usually done in a 1.132 Affidavit – and even then, it is categorized as a “secondary consideration” and not given great weight. See MPEP 716.04 for long-felt need arguments.

How did the Board respond? The Board stated: “The Court in KSR does not ‘mandate[] that we consider a common-sense consideration of market forces and the effects of demands known to the design community when assessing the obviousness of a given prior art combination,’ as argued by Appellants. Anderson ‘s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62 (1969) specifically precludes Appellants’ reading of KSR.”

The Board went on: “A combination of elements may result in an effect greater than the sum of the several effects taken separately. No such synergistic result is argued here. It is, however, fervently argued that the combination filled a long felt want and has enjoyed commercial success. But those matters ‘without invention will not make patentability.’ Great A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147, 153, 71 S.Ct. 127, 130, 95 L.Ed. 162. Anderson’s-Black Rock, 396 U.S. at 61.

Lessons Learns: The educational moment here is that long-felt need and market forces arguments are secondary considerations and cannot be used as the main component of your non-obviousness argument. In order to combat a 103 obviousness rejection, you must focus your argument on the basics, i.e., why the references don’t disclose every element of the claimed invention, why the two references should not be combined, etc. In other words, long-felt need and market forces arguments can be used as a spice, but not as the main dish.


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