IP Practice Vlogs: Understanding and Responding to Examiner Rationales for Prima Facie Obviousness

Did you know that the examiner bears the initial burden of proving a prima facie case of obviousness? You, the applicant, do not have any duty or burden to prove nonobviousness. Therefore, initially, the applicant has no obligation to present any secondary evidence of nonobviousness. It is only when the examiner has proven a prima facie case of obviousness that the burden shifts to the applicant.

Prima facie obviousness is a preponderance of the evidence standard. That is, the examiner has to weigh the evidence of the entire record (that includes your disclosure and all of the prior art references made of record) and find that there is more evidence in favor of a finding of obviousness than evidence presented against it. In other words, that it is more probable to be obvious than not obvious based on all the evidence considered.

After weighing the evidence and finding that the invention is more probable than not to be obvious, the examiner must then present a rationale linking the evidence to a legal conclusion of obviousness. Have you ever received a rationale with no evidence? I have. Examiner rationales for obviousness rarely, from my experience, include links to proof—I’m sure you have experienced this as well. Often, the rationale links to nothing and you simply receive the rationale and conclusion: your claims have been rejected, have a nice day.

Take the ‘obvious to try’ rationale that was made especially annoying thanks to KSR Int’l Co. v. Teleflex. The Supreme Court said that the “The Federal Circuit erred in holding that patent examiners should look only to the problem the patentee was trying to solve. Under the correct analysis, any need or problem known in the field and addressed by the patent can provide a reason for combining the elements in the manner claimed.” Second, the Court held that “when there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill in the art has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”

By allowing design need to be a factor to support a rationale of “obvious to try,” the applicant’s own disclosure statements of attempting to solve a problem can then be used as evidence against them. Also, examiners almost never cite to evidence of market pressure and a finite number of identified or predictable solutions while still invoking the “obvious to try” rationale. Prior to KSR, examiners were supposed to point to evidence of record to support the rationale for finding obviousness. Now, after KSR, the Supreme Court has implicitly given examiners the go-ahead to make an “obvious to try” rationale as long as there is any need in the field without any evidence on the record to support this finding. At the same time, KSR says that findings of obviousness cannot be supported by conclusory statements.

When it comes to the applicant’s rebuttal (i.e., the examiner has met the burden and the burden has shifted), applicant can present evidence of secondary considerations. Presenting evidence of secondary considerations prematurely may constitute implicit admission that the examiner has met his/her burden. Secondary evidence includes evidence of commercial success, long felt but unsolved needs, failure of others and unexpected results. This type of evidence supports a finding of non-obviousness.

Remember, attorney arguments are not evidence. However, an affidavit from a person having ordinary skill in the art (your inventor, for instance) can be considered evidence. Also, when presenting evidence of commercial success to prove nonobviousness, you need a nexus between the commercially successful aspect of the product and your claim. That is, your claim has to claim the thing that is making you a lot of money in the marketplace.

Watch the latest IP Practice Vlogs episode to learn more.

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14 comments so far. Add my comment.

  • [Avatar for Anon]
    Anon
    July 26, 2022 06:19 pm

    As to, “What was the constitutional crisis that made SCOTUS think the judicial exceptions were so necessary?

    There was not one. This was only the addiction of the Court’s fingers in the nose of wax.

    As to the position of Justice Barrett, I may amend my “Kavanaugh Scissors” to include a Barrett Pivot Point.

  • [Avatar for concerned]
    concerned
    July 26, 2022 03:50 pm

    Anon:

    Thank you for the review and comment.

    What was the constitutional crisis that made SCOTUS think the judicial exceptions were so necessary?

    It seems the already in-place s102,s103, and s112 did the necessary heavy lifting to ensure a robust and proper patent system.

    Now we have a patent system, thanks to SCOTUS, where the Patent Commissioner readily admits every federal judge struggles with patent case law and 84% of granted software patents are invalidated upon appeal to the Board.

    SCOTUS just had to put their policy preferences in place, then hide behind them and refuse clarification.

    Perhaps Associate Judge Barrett will notice a patent appeal and encourage the entire court to grant cert on a case where such is so “fundamentally flawed” that her thesis thinking kicks-in.

    Many requests for cert asks for clarification on the two step rule, but how many cert requests attacked the two step rule as unconstitutional? Just the Commissioner’s comments alone reveal unequal application of the case law.

    One never knows where a landmark case where originate. Maybe my case will be the right case, at the right time? I know 100% that I have the right attorney!

  • [Avatar for Anon]
    Anon
    July 26, 2022 01:38 pm

    Thanks concerned,

    It appears that the item was merely one of a ‘flashback’ style and that there is no current item “refining” the decision.

    The Marbury case is indeed important – vis a vis a Separation of Powers perspective. It is also notable in that judicial oversight can be achieved without that oversight explicitly coming from the Supreme Court.

    This facet has been a part of my entreaties as to Congress exercising their Constitutional power of jurisdiction stripping of what is called non-original jurisdiction. As long as there is some designated Article III Court (such as, for example, a reformulated Patent court), Congress has the Constitutionally provided power to remove the Supreme Court from cases to which That Court does not have original jurisdiction.

  • [Avatar for Anon]
    Anon
    July 26, 2022 10:05 am

    concerned,

    Do you have a link?

    I ask because (like many other Court decisions), the ability to misunderstand the Marbury case appears often to be intentional.

  • [Avatar for concerned]
    concerned
    July 26, 2022 06:13 am

    Curious:

    Ironically an article regarding Marbury v. Madison was on the internet today and it said the court overturned Congress based on the law being unconstitutional.

    SCOTUS adding words and judicial exceptions to s101 sure seem to me to be policy preferences, not constitutional grounds. SCOTUS seems to be gunning down computer implemented patents. It is hard to see computers as unconstitutional.

    The holdings of Benson, Flook, Bilski, etc. do not seem implicit in the concept of ordered liberty. Patent law as written by Congress does not seem to violate some fundamental right that is objectively, deeply rooted in this nation’s history and tradition.

    Of course, my views are from a layperson.

  • [Avatar for Loozap]
    Loozap
    July 25, 2022 08:37 pm

    J’en apprend des choses . Grand meri à vous

  • [Avatar for concerned]
    concerned
    July 25, 2022 05:55 am

    Curious:

    The evidence was submitted on June 10, 2017 to the USPTO. It contained documents from every Medicaid authority in the nation, plus documents from the Administering Agency, showing my process is not used, not one claimed step. It also included two university studies documenting the problem and the fact that mental steps could not resolved the problem.

    The authors of the studies were experts in the subject field. All that cross matching of records did not help the experts. One expert said disability attorneys could not solve the problem and also said the Social Security Administration was not solving the problem either. If anyone has the records to cross match and solve the problem, it would be the Social Security Administration. Yet that Agency could not and has not solved the problem. According to my attorney, the appeal brief reference was on page 18 (appx 113).

    When I read Alice, it said abstract idea with a practical application are still patentable. SCOTUS did not seem to have any code words in that simple statement. The USPTO and its Board should not say the same if it is not true. As a person with 47 years of experience in the field, I say my process has a very practical application and so would the people that are discovered from my process as overlooked by the working professionals and experts. If I found you $400 per month and better health care at no extra charge, and you were completely clueless as to your entitlement to both, would you call that a very practical and helpful solution? My solution also brings compliance to law, hardly insignificant post solution activity. One Board got defensive when we called him out on that statement.

    Alice also relied on evidence that the process was well established in commerce. There is no evidence that my process is well understood, conventional or routine as there are no s102 or s103 rejections.

    I am aware of statutory stare decisis and the thesis from Ms. Barrett. It did point out that some courts of appeal question the precedent if it is “fundamentally flawed.” My attorney in the blue brief attacks that issue of “fundamentally flawed” arguing the patent process is capricious and applied without real due process. It is a common belief that patent decisions are all over the place with the two step rule. Taranto did throw his arms up in the air when discussing being stuck with the two step rule. I realize we may need en banc.

    I have seen sicker dogs than this one get well.

    Thank you for your input.

  • [Avatar for Curious]
    Curious
    July 24, 2022 11:14 pm

    your Board did state in writing that my (alleged abstract) process does have a practical application in the every day word sense (page 13)
    I haven’t seen an application rejected under 101 (either by an examiner, the Board, or the CAFC) that doesn’t “have a practical application in the every day word sense.” That recognition is not going to help you.

    How can an applicant overturn a bad analysis if (55 pieces of) evidence is not even a consideration?
    What is your evidence of? Does your evidence go to some dispositive factual finding? Also, you keep mentioning evidence, but when I look at the file history, I don’t see any evidence mentioned in the Appeal Brief. I’m not sure when you submitted this “evidence,” but if this evidence is not properly submitted, it won’t be considered. As such, all this talk about “evidence” may be for naught.

    Where has Congress given the authority to discard the meaning of everyday words for the substitution by courts or Agencies on patents?
    It’s called Marbury v. Madison. There is also something called statutory stare decisis in play here. Congress has had an opportunity to slap down the Supreme Court’s “interpretation” of 35 USC 101. They did not. Consequently, under the doctrine of statutory stare decisis, the Supreme Court presumes that Congress has acquiesced to this interpretation of the statute. If you understood the law, you would understand that.

    We did not get Rule 36 as many thought. The panel has been moved to give an opinion. We shall see
    Don’t be so sure of that. Maybe they are giving Clevenger’s law clerk an opportunity to draft an opinion. Regardless, if a written opinion is issued, I do not expect a good outcome.

  • [Avatar for concerned]
    concerned
    July 24, 2022 02:16 pm

    PE:

    I understand that Curious has been giving advice.

    I do not understand why the current legal standards on patents are tolerated. Standards that allow analysis above reproach from evidence and why SCOTUS is allowed to say mental steps when it is not, both pointed out by Curious.

    In as much as Curious does not think much of my process, your Board did state in writing that my (alleged abstract) process does have a practical application in the every day word sense (page 13), just not in the so-called legal sense. What kind of legal standard is the preceding?

    I thought Congress wrote what they meant and everyday words are used unless expressed otherwise.
    Where did Congress define practical application, inventive concept and significantly more? If not, do we use everyday definitions?

    In the recent EPA decision by SCOTUS, it was ruled that Congress has to give expressed authority to the EPA for some of their decretionary actions, which Congress has not to date. Where has Congress given the authority to discard the meaning of everyday words for the substitution by courts or Agencies on patents?

    My attorney so asks. I so wonder.

  • [Avatar for Primary examiner]
    Primary examiner
    July 24, 2022 01:30 pm

    Curious is not your critic, he has been trying (extremely patiently) to help you.
    Too bad (for you) that you cannot understand that. Help cannot be forced i suppose.

  • [Avatar for Ben Borson]
    Ben Borson
    July 24, 2022 10:33 am

    If an Examiner does not provide any evidence supporting an obviousness rejection, one can refute the rejection, and avoid admitting that a prima facie case has been made. Refuting a rejection places the burden on the Examiner to make a valid rejection. Ask the Examiner to provide evidence sufficient to support the rejection.

  • [Avatar for concerned]
    concerned
    July 24, 2022 02:28 am

    One would think that the examiner has to make a prima facie case using the preponderance of the evidence standard with a s101 rejection also.

    As the author of this article asks “Have you ever received a rationale with no evidence?” Like the author, I have also. In addition, the rationale is vague (body of unspecified case law) where my attorney cannot even respond directly.

    As my biggest critic on this forum points out “The USPTO does not need evidence, they use analysis.” I think he is 100% correct on what is happening, and like this author, I think it is wrong. How can an applicant overturn a bad analysis if (55 pieces of) evidence is not even a consideration?

    My attorney has made brilliant arguments regarding evidence in the CAFC blue brief. My attorney points out that the USPTO and its Board do not use the word “evidence” even once in their arguments.

    We did not get Rule 36 as many thought. The panel has been moved to give an opinion. We shall see.

    However, articles such as these, and comments such as mine, will continue as long as the USPTO keeps taking our patent fees and there is no change in prosecution.

  • [Avatar for Loozap]
    Loozap
    July 23, 2022 07:18 pm

    It’s great

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