Written by Mark Terry     

It is often the case that the U.S. Patent and Trademark Office (USPTO) will issue a 35 U.S.C. § 103 obviousness rejection based on what an Examiner believes is material that is known to a person of ordinary skill in the art. That is, the Patent Examiner will often state that such-and-such claim element (or some combination of claim elements) are well known to a person of ordinary skill in the art (POSITA). As a patent practitioner, you can respond with “attorney argument” and/or you can respond with hard evidence. The attached Patent Trial and Appeal Board (PTAB) decision of Ex Parte Kristian (Appeal 2016-000,458) illustrates the importance of using hard evidence to respond to a 35 U.S.C. § 103 obviousness rejection based on what is known to a POSITA.     Recall that evidence, such as a 37 C.F.R. §1.132 affidavit, is taken as objective evidence to be considered by the USPTO. As provided for in MPEP section 716.01(c): “Objective evidence which must be factually supported by an appropriate affidavit or declaration to be of probative value includes evidence of unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the applicant.” Evidence, such as a 37 C.F.R. §1.132 affidavit, textbook excerpts or dictionary definitions, must be considered and responded to by a Patent Examiner. Ideally, an appropriate response to evidence provided in a 37 C.F.R. §1.132 affidavit is a Patent Examiner’s evidence of his own. But due to time constraints and other reasons, it is not often that a Patent Examiner will respond with his own evidence, in response to your 37 C.F.R. §1.132 affidavit.

In the Ex Parte Kristian (Appeal 2016-000,458) case, which pertains to an injection molding technique, the knowledge of a POSITA was crucial to the arguments made by the Applicant and the Examiner alike. According to the Examiner, “one of ordinary skill in the art would have been led to employ an injection molding technique for forming the cable connection device.” The Applicant argued that a POSITA would not, in fact, have been led to employ an injection molding technique for forming the cable connection device. But in response, the Applicant only provided attorney argument. As most of you well know, attorney argument, on its own, is not the most highly regarded. For example the Federal Circuit has held, in an unrelated case: “the Appellant’s argument is not well taken because it is merely unsupported attorney argument, and arguments of counsel cannot take the place of evidence.” See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).

    Consequently, the PTAB held that “Appellants have not established that providing such a ‘natural measure’ would have been beyond the skill level of the ordinary artisan armed with the teachings of the applied prior art … In sum, Appellants have not identified harmful error in the Examiner’s obvious rejection based on the arguments presented.” Hence, the Applicant lost its case based on what a POSITA knew at the time of the invention.

    Lessons Learned: When responding to an Examiner’s 35 U.S.C. §103 obviousness rejection, the savvy patent practitioner should use evidence to respond to a POSITA argument. Evidence includes the cited references, other patents in the same area from the same time, textbooks, science/engineering treatises, etc. Also, you can use a §1.132 declaration from your inventor or someone else in the field, IF their credentials are impressive enough to be considered a POSITA. And the best part of using these authorities, is that the Examiner must rebut this evidence. He can’t just dismiss it, he must consider it, rebut it with evidence of his own and provide substantive reasoning as to why your evidence does not overcome the rejection.

Mark Terry is a registered patent attorney and operates a patent and trademark practice in South Florida. Contact Mark Terry if you have any questions regarding enforcement of patents, trademarks and copyrights.