Misapplication of Obviousness: What the MPEP gets wrong about obviousness rejections

By Gene Quinn
August 13, 2018

MPEP 2141 actually cites Arendi for the proposition that common sense can be used to supply a missing limitation from the prior art in an obviousness rejection. That, however, is the exact opposite proposition for which the case actually stands.

Image Source: Deposit Photos.

According to the Manual of Patent Examining Procedures, “[t]he prior art reference (or references when combined) need not teach or suggest all the claim limitations however, Office personnel must explain why the difference(s) between the prior art and the claimed invention would have been obvious to one of ordinary skill in the art.” MPEP 2141. It is not particularly surprising in and of itself that any action of the MPEP might be inaccurate, misleading, or simply flat wrong as this statement. The way the United States Patent and Trademark Office (USPTO) envisions the MPEP is as a static document that is updated periodically. The MPEP is not a truly living document that is updated in anything close to real time.

What is surprising, however, is that MPEP 2141 was last revised in August 2017. Given the timing of the latest revision of MPEP 2141, the USPTO is continuing to instruct examiners that not all claim limitations need to be present in order to make an obviousness determination becomes harder to understand.

What the MPEP says in this segment of 2141 is directly inconsistent with Arendi v. Apple, 832 F.3d 1355 (Fed. Cir. 2016), decided a full year prior to the last revision of MPEP 2141.

In Arendi, the Federal Circuit correctly explained that in order for an obviousness rejection to be appropriate all claim limitations must be present and common sense cannot be used to supply limitations missing in the prior art. See Common sense is no substitute for reasoned analysis and evidentiary support.

[[Advertisement]]

Making matters worse, MPEP 2141 actually cites to Arendi, but then quotes the case entirely out of context. This is a worrisome problem that can be found in many parts of the MPEP, which makes the MPEP a useful reference tool to find relevant cases, but as useful as an opponent’s brief when it comes to accurately characterizing the holdings of decisions.

For example, MPEP 2141 actually cites Arendi for the proposition that common sense can be used to supply a missing limitation from the prior art in an obviousness rejection. That, however, is the exact opposite proposition for which the case actually stands.

Judge O’Malley explained that common sense is ordinarily invoked to provide a known motivation to combine and not to supply a missing claim limitation.

O’Malley recognized that in Perfect Web Technologies, Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) the Federal Circuit did authorize the use of common sense to supply a missing claim limitation, but she pointed out that this was the only case where the Federal Circuit had ever allowed common sense to supply a missing claim limitation. O’Malley further explained that in Perfect Web that which was missing was “unusually simple and the technology particularly straightforward.” In fact, in Perfect Web, dealt with sending e-mail to an e-mail list, and the missing claim limitation was nothing more than merely repeating the step of resending e-mails in accordance with the claim. Thus, O’Malley explained for the panel that Perfect Web is properly considered an exception to allowing common sense to supply a missing claim limitation, rather than the rule.

Judge O’Malley also pointed out that Federal Circuit cases have repeatedly warned against the use of common sense to supply either a motivation to combine or a missing limitation. Common sense “cannot be used as a wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the prior art references specified,” O’Malley wrote.

The logic of Arendihas since been applied by the Federal Circuit to overturn decisions of the Patent Trial and Appeal Board (PTAB). See e.g. In re Van Os, 844 F.3d 1359 (Fed. Cir. 2017); In re Stepan Co., 868 F.3d 1342 (Fed. Cir. 2017); In re Hodges, 882 F.3d 1107 (Fed. Cir. 2018).

Therefore, the rule the MPEP should be revised to contain is this: “The prior art reference (or references when combined) must teach all the claim limitations. Only in the most extraordinary of situations where the missing claim limitation is ‘unusually simple and the technology particularly straightforward’ is it appropriate for common sense to be relied upon to supply a missing claim limitation.”

 

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 18 Comments comments. Join the discussion.

  1. anon36 August 13, 2018 12:23 pm

    This post states: “In Arendi, the Federal Circuit correctly explained that in order for an obviousness rejection to be appropriate all claim limitations must be present and common sense cannot be used to supply limitations missing in the prior art.”

    That is a misunderstanding of Arendi. Arendi is about the mere reference to “common sense” absent a detailed analysis of the underlying logic. The opinion explains that a detailed consideration of what is actually happening in light of the facts of the case demonstrated Board error.

    The opinion points out three caveats to the role of common sense. As this post acknowledges, the second caveat is about the prior role of common sense to supply a missing teaching (i.e., Arendi expressly contradicts the quoted sentence above). The third caveat explains that whether common sense is relied on for the reason to combine OR a missing feature in the art, one cannot just cite to common sense, but instead must dig into the logic and facts of the case and persuasively explain the reasoning. That’s precisely what the MPEP provision is about.

    I understand you’d like a bright line rule forbidding a rejection absent an express teaching of every claimed element in the prior art, but Arendi is simply not such a case.

  2. Gene Quinn August 13, 2018 12:41 pm

    anon36-

    You can belief Arendi stands for whatever proposition you like, but what I wrote is 100% correct. Please notice that I actually quote what Judge O’Malley wrote in Arendi, while you on the other had do not.

    Arendi clearly and unambiguously says that it is improper to reject claims as being obvious when all limitations are not found in the claims, period. Only in the most extraordinary case — see Perfect Web — can a claim be rejected when all claim limitations are not found in the prior art. Judge O’Malley characterized that as a situation where the missing element was “unusually simple”, and further went on to explain that Perfect Web is the exception, NOT the rule.

    So that is what Arendi says and means, whether you like it or not.

  3. Anonynous Examiner August 13, 2018 2:19 pm

    While I don’t disagree that the MPEP can perhaps get case law wrong at times, I think this post does not take into account the entirety of the MPEP’s discussion on obviousness and common sense.

    First, I disagree that the Office misquotes or misapplied Arendi in section 2141. This section of the MPEP merely quotes a part of the case, and is used to show that common sense can be used to teach a missing limitation but with a huge caveat.

    Second, I think if you were to also analyze section 2144.03 of the MPEP, you’d see the Office’s guidance on common knowledge/sense is far more in line with the case law. I just don’t agree that the Office’s policy on common sense is wrong or misapplied.

    Now, whether the Board (or even some examiners) follow this guidance is a different matter. But that is a lack of proper training at the Office, not faulty guidance in the MPEP.

  4. Gene Quinn August 13, 2018 2:29 pm

    Anonymous Examiner-

    First, with respect to 2144.03, the article is about what is said in MPEP 2141.

    Second, MPEP 2141 most certainly is incorrect. It says: ” The prior art reference (or references when combined) need not teach or suggest all the claim limitations…”

    That is wrong, period. The prior art must teach all claim limitations. As Arendi says, only in the most exceptional of all cases (i.e., the exception to the rule) can the prior art not teach all claim limitations and still result in a correct obviousness rejection.

    Finally, as Judge O’Malley points out, Perfect Web is the ONLY case where the Federal Circuit has ever found an obviousness rejection to be appropriate where all claim limitations were not present in the prior art. Thus, it is wrong for the Office to in the MPEP tell examiners that not all claim limitations need to be present in the prior art to issue an obviousness rejection. That was correct exactly once. The exception does not prove the rule. Examiners should follow the rule, not the exception. That is the point of the article. Following the exception and believing it to be the rule is absurd.

  5. Curious August 13, 2018 2:36 pm

    anon36 @1 — without getting into the gory details (because I’m pressed for time), the MPEP citation of Arendi is classic misrepresentation of a case by the USPTO in the MPEP.

    The MPEP cites this passage of Arendi:
    “… we conclude that while ‘common sense’ can be invoked, even potentially to supply a limitation missing from the prior art, it must still be supported by evidence and a reasoned explanation. In cases in which ‘common sense’ is used to supply a missing limitation, as distinct from a motivation to combine, moreover, our search for a reasoned basis for resort to common sense must be searching. And, this is particularly true where the missing limitation goes to the heart of an invention.”

    However, this mere quote does little justice to how narrowly the Federal Circuit cabined the prior decision of Perfect Web. One doesn’t get that from the single quote provided by the MPEP.

    This isn’t the only example … not even close. There are a number of decisions that I doubt that examiners (or the Board) have even read besides the quotes provided by the MPEP. I doubt because the manner in which these cases are applied bear no semblance to the facts of the cited cases.

    I understand that it is difficult for examiners to read (and understand) all of the case law they cite, but it should be the role of the MPEP to provide an examiner with an accurate description of the law — not some shaded interpretation that omits critical facts and caveats identified by the Court.

  6. anon36 August 13, 2018 2:43 pm

    Yes, you do quote the opinion. You quote a portion of the discussion from that third caveat the opinion mentions, which by its own terms applies to both uses of common sense–motivation teachings and limitation teachings. So relying on that language to support a new special rule about common sense and the presence limitations in the prior art doesn’t work.

    Plus, you crop the quote. What the opinion is really saying is that “references to common sense” cannot replace reasoned analysis. The opinion is about the need to articulate a persuasive rationale instead of merely saying “common sense.” Arendi is not about a requirement to find an express teaching in the prior art for every limitation–nor could it be given existing caselaw.

  7. Gene Quinn August 13, 2018 4:12 pm

    Anon 36-

    Your understanding of Arendi is shockingly incorrect.

    The decision explains: “The single question at issue here is whether the Board misused “common sense” to conclude that it would have been obvious to supply a missing limitation in the Pandit prior art reference to arrive at the claimed invention.”

    Therefore, the ONLY issue the court decided is precisely whether examiners, like yourself, can use your common sense (whatever that means) to supply missing elements. The answer reached is, as I explain in the article, no. I understand you do not like that, but you are absolutely and unequivocally wrong when you what I’ve written about Arendi is incorrect. Your understanding of Arendi is simply wrong.

    The Court does talk about three caveats to the use of common sense, but only one of them deals with the use of a missing element. So why you are concerned with the other two, which are irrelevant to the incorrect statement in MPEP 2141 discussed in the article, is rather mysterious.

    But let’s take a look at the three caveats, which you obviously don’t understand and haven’t read.

    Caveat 1: “First, common sense is typically invoked to provide a known motivation to combine, not to supply a missing claim limitation.” Arendi 832 F.3d at 1361.

    Caveat 2: Relating to the only case where the Federal Circuit has allowed common sense to supply a missing claim limitation because what was missing was “unusually simple”, O’Malley explains that Perfect Web “ought to be treated as the exception, rather than the rule.”

    Caveat 3: “[W]hether to supply a motivation to combine or a missing limitation — cannot be used as a wholesale substitute for reasoned analysis and evidentiary support…”

    So you can say that Arendi is only about requiring reasoned analysis, but that is in fact wrong.

  8. Curious August 13, 2018 5:31 pm

    The opinion is about the need to articulate a persuasive rationale instead of merely saying “common sense.” Arendi is not about a requirement to find an express teaching in the prior art for every limitation–nor could it be given existing caselaw.
    This is why lawyers should interpret case law — not examiners.

    The Federal Circuit writes “Second, in Perfect Web, the only case Appellees identifies in which common sense was invoked to supply a limitation that was admittedly missing from the prior art, the limitation in question was unusually simple and the technology particularly straightforward.” This is an unstated mea culpa by the Federal Circuit: i.e., we got Perfect Web wrong but we are going rectify that error by stating that using “common sense” is only appropriate in situations where the limitation was unusually simple and the technology particularly straightforward. Consequently, the holding of Perfect Web was substantially narrowed.

    The third caveat stated by the Federal Circuit, which is additional to the second caveat described above (and not alternative to), is that if one is to employ common sense (either to supply a missing motivation or element), there must be reasoned analysis and evidentiary support.

    The MPEP’s discussion of Arendi makes NO MENTION of the 1st and 2nd caveats — only the 3rd caveat. Without the mentioning the first two caveats, the MPEP citation of Arendi gives the impression that the Federal Circuit takes a much more favorable view of the use of “common sense” than what the Federal Circuit actually stated in Arendi.

    Again, this is blatant misrepresentation of the case law.

  9. Gene Quinn August 13, 2018 5:44 pm

    Curious-

    Further to your point, there really is no reason to cite Arendi for the proposition that reasoned analysis is required when making an obviousness rejection. If that is the sum extent of the Arendi holding (which of course it is not) it would have been a non-precedential decision because all the decision would have done is restate the Supreme Court in KSR.

    ‘‘‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).

    Clearly, Arendi stands for the proposition of the first two caveats, namely that it is improper to issue an obviousness rejection when there are missing claim limitations in the prior art.

  10. Pete August 13, 2018 6:35 pm

    Gene Quinn @4

    “First, with respect to 2144.03, the article is about what is said in MPEP 2141.”

    The MPEP quotation in question comes from MPEP § 2141(III), third paragraph. MPEP 2141(III) last paragraph states “See also MPEP § 2144 – § 2144.09 for additional guidance regarding support for obviousness determinations”, so the contents of 2144 are relevant to discussing whether the 2141 quotation is correct based on both explicit statements in 2141 and the general subject matter of 2144 (“Supporting a Rejection Under 35 U.S.C. 103”).

    “Second, MPEP 2141 most certainly is incorrect. It says: ” The prior art reference (or references when combined) need not teach or suggest all the claim limitations…”
    That is wrong, period. The prior art must teach all claim limitations.”

    I respectfully disagree. There are numerous scenarios where a limitation which is not taught in the prior art can be found to be obvious. For example imitations can be found obvious in view of implicit disclosure (2144.01), what is well-known (2144.03), or legal precedent (2144.04) such as the duplication, omission, or rearrangement of parts.
    You clearly feel, and I do not disagree, the MPEP should employ stronger language discouraging Examiners from concocting their own “common sense” rationales, but “common sense” inference is not the only way a limitation absent from the cited prior art can be found to be obvious, and the 2141(III) statements that “The prior art reference (or references when combined) need not teach or suggest all the claim limitations” and “Factors other than the disclosures of the cited prior art may provide a basis for concluding that it would have been obvious to one of ordinary skill in the art to bridge the gap” are entirely correct.

  11. Curious August 13, 2018 8:16 pm

    For example imitations can be found obvious in view of implicit disclosure (2144.01), what is well-known (2144.03), or legal precedent (2144.04) such as the duplication, omission, or rearrangement of parts.
    Let me remind examiners of the first line of MPEP 2144: “When considering obviousness, Office personnel are cautioned against treating any line of reasoning as a per se rule.”

    The following lines are also found in MPEP 2144(III): “If the facts in a prior legal decision are sufficiently similar to those in an application under examination, the examiner may use the rationale used by the court. If the applicant has demonstrated the criticality of a specific limitation, it would not be appropriate to rely solely on the rationale used by the court to support an obviousness rejection.” Examiner’s RARELY ever make a showing that the facts of the application under examination are sufficiently similar to the facts in the cited case law. Rather, they’ll cite the broad heading (e.g., “Automating a manual activity”) and declare that the limitations at issue are obvious in view of this heading.

    From my experience, the case law typically has very specific caveats that aren’t mentioned in the MPEP that the Examiner is probably never aware of.

    All that aside, I suspect that most of these cases wouldn’t pass muster under KSR. I’m scanning the cases cited in MPEP 2144, and most of them are from the 1950s and 1960s. There are a couple from the 1980s. Arguably, most of this probably isn’t good law anymore.

  12. Gene Quinn August 13, 2018 9:27 pm

    Pete-

    You say you disagree with me because limitations can be found obvious in view of implicit disclosure (2144.01), what is well-known (2144.03), or legal precedent (2144.04).

    With respect to MPEP 2144.01, there is still a reference that teaches the limitation. And the example given in the MPEP really doesn’t explain an implicit disclosure as much as an explicit disclosure, using In re Preda as an example for 700 degrees C teaching a claimed range of 750-830 degrees C where the reference also recognized the possibility of temperatures greater than 750 degrees C. So is that an example of an implicit disclosure? Not as the MPEP explains it.

    With respect to MPEP 2144.03, common knowledge or what is well known, this section deals with patent examiners taking judicial notice. But if the applicant challenges the examiner the examiner needs to come up with proof. This section by its explicit terms is to be used rarely, and were it is absolutely clear and unassailable. The example from In re Ahlert explains it is acceptable to take notice that flame intensity can be adjusted in accordance with heat requirements. So this section doesn’t really stand for the proposition that not all limitations need to be present, but rather that some things are so obvious that examiners ought not to have to waste their time looking. But if the applicant puts the examiner to their proof, look the examiner must.

    Finally, with respect to MPEP 2144.04, frankly I don’t know what one really gets out of that section. It is an almost incompressible list of rather random cases. Having said that, things like changes in shape or size have been found to be obvious. But with something like scaling size, different proportions isn’t really different limitations.

    I don’t dispute that the MPEP makes the claims you are suggesting, but I’m saying the MPEP is wrong as it is written. And that is the problem. In many places the MPEP makes bold, sweeping statements that are simply incorrect and do not actually match up with a fair reading of the cases.

  13. BP August 14, 2018 10:34 am

    Gene is correct for bringing issues in Arendi and MPEP to light. From the oral argument in Arendi, “common sense” is argued by Asher as being limited to use in considering motivation to combine rather than as a substitute for evidence of an element. And, Matsui stated explicitly that he was not arguing “common sense” as a substitute – rather, he argued “common knowledge”.

    The opinion states: But conclusory statements and unspecific expert testimony regarding searches in general are precisely what the Board relied upon in drawing its conclusion that it would have been “common sense” to search a database for a telephone number to be added. In so doing, the Board ignored Arendi’s arguments regarding the differences between searching for duplicate entries with a telephone number versus with a name or address. And these errors were particularly problematic considering the fact that a key limitation of the ’43 patent was missing from the prior art reference in dispute.

    Ex parte Frye: For example, if an appellant contests an obviousness rejection only on the basis that a cited reference fails to disclose a particular limitation, the Board need not review the other, uncontested findings of fact made by the examiner underlying the rejection, such as the presence of uncontested limitations in the prior art.

    The MPEP on In re Keller (attacking references individually) is entirely messed up.

    In our legal system, consider the due process clauses of the Fifth and Fourteenth Amendments that “[protect] the accused against conviction except upon proof beyond a reasonable doubt of every fact necessary to constitute the crime with which he is charged.” And, in criminal cases, a jury can ignore “judicial notice” of a fact.

    Under 103, evidence must be present for each element of a claim. “Common sense”, by itself, is not sufficient as a substitute for evidence.

    The MPEP is full of errors, especially as to how it misstates case law to make examiners think they can do less than what is required by law.

  14. Paul Morgan August 14, 2018 12:52 pm

    Yes, the MPEP should be relying on the controlling authority on point, which for 103 is KSR, not any Fed. Cir. panel decision.

  15. AAA JJj August 16, 2018 10:38 am

    The editor(s) of the MPEP have no ethics whatsoever. A trait shared with many APJ’s.

  16. Anon August 16, 2018 2:58 pm

    The duty of those of the executive branch is to enforce the law (not to write law that it wants to enforce).

    Not only is such “miswriting” a dereliction of duty to enforce, it is a violation of separation of powers to rewrite.

    I wonder if the Ombudsman of the Office would have a role in any Office refusal to correct clear errors brought to the attention of the Office.

  17. David August 17, 2018 2:34 pm

    Eh, SCOTUS explicitly says that common sense can be used: “Rigid preventative rules that deny recourse to common sense are neither necessary under, nor consistent with, this Court’s case law. Pp. 15–18.”

    The only thing that is surprising about this article is that Quinn appears to have found something that says that the Fed Cir Court’s opinions overrule the SCOTUS…then again, Chief Justice Roberts benchslapping the Cir Court for ignoring SCOTUS is a mere inconvenience, right??

  18. Gene Quinn August 17, 2018 4:33 pm

    David @17

    Your comment is incomprehensible. Obviously, you intended it to be a dig at me personally for some unknown and unintelligible reason. Had you read the article you would have realized that the article does not mention the Supreme Court, and does not mention the Federal Circuit overruling the Supreme Court.

    In the future, if you are going to try and insult me please try and make more sense.

Post a Comment

Respectfully add to the discussion.

Name *
Email *
Website

Our website uses cookies to provide you with a better experience. Read our privacy policy for more information.Accept and Close