Invention Not Described Adequately: A Provisional Patent Application Problem

USPatent_9068339_42It is not surprising that the content of a patent application is important. Sometimes the description of something as simple as a washer is important to obtaining a valid patent.

If the description of the invention in a patent application is comprehensive and multifaceted, you will have the option of pursuing and possibly obtaining broad and varied claims directed at protecting the invention. However, if the description of the invention is thin or narrow, it could be that you can’t get any valid claims–any protection–on your invention.

This is one of the problems with back-of-the napkin or otherwise thin provisional patent applications. Even when the application has more to it than a back-of-the napkin level of detail, an application can run into problems that result in no patent protection, as was the case in D Three Enterprises, LLC v. Sunmodo Corporation, Nos. 2017-1909, 2017-1910 (Fed. Cir. 2018).

Descriptions of Washers and Brackets

D Three Enterprises sued Rillito for infringing three patents directed to roof mount sealing assemblies that are used to mount items, such as solar panels, to roofs. The patents claimed priority through a chain of patent applications back to a provisional patent application filed in 2009.

Some of the asserted claims of the patents did not require a soft washer. There were various versions of roof mount assemblies shown in the provisional application, but  only one version was washerless. However, the description of the washerless version used a W pronged attachment bracket.

The relevant asserted claims were not limited to a W pronged attachment bracket but recited a more generic bracket. Therefore, because the asserted washerless claims were not limited to the W prong style attachment brackets, those claims were broader than the disclosure in the provisional patent application. As such, the claims did not meet the written description requirement as applied to the provisional application.

As the claims were broader, the court found that they were not entitled to the benefit of the provisional application filing date in 2009. Instead the claims were provided the later filing dates in 2013 and 2014 of the non-provisional applications that resulted in the patents.

But there was intervening prior art that invalidated the asserted claims if the claims did not have the benefit of the 2009 provisional filing date. The court found the asserted claims of the patents were invalid based on the prior art that arose between 2009 and 2013.

Alternative Descriptions

The outcome in this case might be different if the 2009 provisional provided that any of the embodiment shown herein may be provided with or without a washer. Further, the outcome might be different if the provisional stated that a generic bracket could be used with the washerless version of the invention.

Claims in a Provisional Application

D Three’s provisional application (61/150,301) did not include any claims. While the law does not require a provisional application to have claims, one or more claims reciting a washerless version with a generic bracket could have been included in the provisional. Such claims might have provided the written support for the later claims in the resulting patent and changed the result. Just because the USPTO does not require claims in a provisional, doesn’t prevent you from including them.

Application Content Matters

D Three’s provisional application showed a number of different embodiments (variations) of the invention. D Three’s provisional application was not a back-of-the-napkin submission. It had 12 pages of description and 21 pages of drawings. If an application with that much detail can run into problems, so too can applications with less.

It is important that a patent application describe an invention both broadly and in detail regarding the various embodiments (variations) of the invention. This is designed to provide a broad foundation for future patent claims and for a better chance at obtaining broad and valid patent protection.

Fighting Obviousness Rejections: Unexpected Results

When an invention possesses or provides unexpected results, this is often sufficient to show the invention is not obvious.

The case of Allergan, Inc. v. Sandoz Inc., 796 F.3d 1293 (Fed. Cir. 2015) demonstrates this principle. Allergen sued Sandoz among others alleging infringement of five patents directed a drug and treatment for glaucoma. The defendants asserted that the patents were invalid. Each of the asserted claims required a composition comprising 0.01% bimatoprost and 200 ppm benzalkonium chloride (BAK)

Prior treatments for glaucoma included using .03% bimatoprost and 50 ppm BAK. Prior art U.S. Patent 5,688,819 (Woodward) reference disclosed a composition comprising 0.001% to 1% bimatoprost and 0 to 1000 ppm of preservative, including BAK.

Therefore Woodward disclosed a range that covered the claimed composition. When that occurs the question is whether there would have been a motivation to select the claimed composition from the prior art ranges.

The court found that the prior art taught that BAK should be minimized in ophthalmic formations to avoid safety problems.  BAK was known to cause increased IOP, hyperemia, dry eye, and damage to corneal cells, and to exacerbate other eye disorders. Therefore the prior art taught away from increasing BAK from 50 ppm to 200 pmm.

Further, the prior art taught that 200 ppm BAK would either have no impact on permeability of bimatoprost or decrease it. But Allergan’s inventors surprisingly determined that the opposite was true, 200 ppm BAK enhanced the permeability of the bimatoprost. The court concluded that his unexpected difference in kind supported nonobviousness of the claimed invention.

Moreover, the court found that the prior art taught that reducing bimatoprost from 0.03% to 0.01% resulted in reduced efficiency, but did not reduce red eye (hyperemia). However, the claimed, which comprises 0.01% bimatoprost and 200 ppm BAK, formulation unexpectedly maintained the IOP-lowering efficacy of Lumigan 0.03% (Allergen’s prior product), while exhibiting reduced incidence and severity of hyperemia (red eye), even though the prior art taught that BAK could cause hyperemia at high concentrations.

The court concluded that the results of the claimed formulation constituted an unexpected difference in kind, that is, “the difference between an effective and safe drug and one with significant side effects that caused many patients to discontinue treatment.” These unexpected results supported the conclusion that the challenged patent claims were not obvious in view of the prior art.

Therefore, when facing an obviousness rejection or challenge, look to see if you can show that the invention possesses or provides unexpected results in the art.

The five patents asserted in this case are: U.S. Patents 7,851,504, 8,278,353, 8,299,118, 8,309,605, and 8,338,479.

Fighting Obviousness Rejections: Lack of a Valid Rationale to Combine References

The USPTO must provide a reasoned explanation why the person of ordinary skill in the art would combine the prior art references to conclude that an invention is obvious. If the USPTO fails to do this, the obviousness rejection is not valid.

The case of In re NuVasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016) demonstrates this principle. Medtronic, Inc. petitioned the USPTO to invalid claims of NuVasive’s Patent No. 8,361,156 (the ‘156 patent). The ‘156 patent was directed to a spinal fusion implant.

Medtronic asserted that the challenged claims of the ‘156 patent were obvious in view of four references: a Synthes Vertebral Spacer-PR brochure (SVS-PR Vrochure), a Telamon Verte-Stack PEEK Vertebral Body Spacer brochure (“Telamon brochure”) a Telamon Posterior Impacted Fusion Devices guide (“Telamon guide”), and U.S. Patent Application Publication No. 2003/0028249 (“Baccelli”). The USPTO found the challenged claims were obvious over a combination of Baccelli and either the SVSPR brochure or the Telamon references.

But in reaching this conclusion the USPTO failed to explain the reason why a person skilled in the art would have been motivated to modify either the SVS-PR device or the Telamon implants, in light of Baccelli, to place radiopaque marketers “proximate to said medial plane,”  as the ’156 patent teaches. The court reversed the obviousness determination of the USPTO for failing to provide the necessary reasoned explanation.

The USPTO must articulate a reason why a person skilled in the art would combine the prior art references. That reason and other USPTO findings must have an adequate evidentiary basis. And the USPTO must provide a satisfactory explanation for its motivation reasoning that includes a rational connection to the evidence. Further merely conclusory statements are not sufficient.

If the USPTO fails to provide a reason to combine or if the reason to combine is not technically valid or is not rationally connected to the evidence, then the obviousness rejection is improper. Therefore, when receiving a obviousness rejection it is important to (1) determine whether the USPTO provided a reason to combine references and (2) whether that reason is valid and/or has support in the record.

Fighting Obviousness Rejections: Invention Proceeds Contrary to Accepted Wisdom in The Art

When an invention proceeds contrary to the accepted wisdom in the prior art, this is a strong indication that the invention is not obvious in view of the prior art.

The case of W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1552 (Fed. Cir. 1983) demonstrates this principle. This is an old case from 1983, but the principle discussed today from the case is still valid. W.L. Gore & Associates (Gore) sued Garlock for infringing claims 3 and 19 of U.S. Patent 3,953,566 (the ‘566 patent).  The ‘566 patent was directed to a method of making high crystalline polytetrafluorethylene (PTFE), such as might be used as tape. PTFE is known by the trademark TEFLON. PTFE tape had been sold as thread seal tape, i.e., tape used to keep pipe joints from leaking.

Dr. Gore of W.L. Gore & Associates experienced unsintered PTFE tape breakage problems in its tape stretching machine. Dr. Gore Experimented with heating and stretching of high crystalline PTFE rods. But the rods broke even when slowly and carefully stretching them a relatively small amount.

The conventional wisdom in the art taught that breakage could be avoided only by slowing the stretch rate or by decreasing the crystalline content. But contrary to this teaching, Dr. Gore discovered that stretching the PTFE rods as fast as possible enabled him to stretch them to more than ten times their original length with no breakage. Further, the rod diameter remained about the same through out the length and the rapid stretching transformed the the hard, shiny rods into rods of a soft, flexible material. 

Ultimately, the appeals court concluded that claims 3 and 19 of the ‘566 patent were not obvious because Dr. Gore’s invention for making high crystalline PTFE proceeded contrary to accepted wisdom in the art.

If you can establish that your invention proceeds contrary to the accepted wisdom in the relevant art, then an obviousness rejection may be overcome on that basis.

Fighting Obviousness Rejections: Proposed Modification Would Make Inoperable for Intended Purpose

When the USPTO rejects patent claims to an invention as being obvious, it often combines two or more prior art references to make the rejection. The rejection may be improper if the combination proposed by the USPTO renders the prior art reference being modified inoperable for its intended purpose.

The case of Plas-Pak Indus. v. Sulzer Mixpac AG, 600 Fed. Appx. 755 (Fed. Cir 2015) provides an example of this principle (it also discloses another basis to challenge an obviousness rejection). Sulzer asserted that claims of Plas-Pak’s US Patent 7,815,384 (“Plas-Pak’s Patent”) were obvious in view of a combination of two references, U.S. Patent 6,241,125 (“Jacobsen”) and U.S. Patent Publication 2002/0170982 (“Hunter”). Plas-Pak’s Patent was directed to a device and method for mixing and dispensing multi-component paints.

Jacobsen discloses a device that dispenses fluid materials into a surface crack so as to minimize leakage. Sulzer proposed to modify the device of Jacobsen to include the spray nozzle from Hunter. 

But the court found that the spray nozzle of Hunter would not obtain the objective of dispensing fluid materials into a  surface crack so as to minimize leakage. 

The court noted that Jacobsen’s dispensing system, partially shown in figure 9 below, has the very “specific function of dispensing fluid materials directly into surface cracks to minimize leakage.” The court found that Jacobsen’s repeatedly recites this limited purpose. Further, Jacobsen did not teach how a spray nozzle might accomplish the “intended purpose” of “dispensing fluid materials directly into cracks.”

Therefore the court concluded that modifying Jacobsen to accommodate the spray nozzle of Hunter would render Jacobsen “inoperable for its intended purpose,” and a person of ordinary skill would thus not have been motivated to pursue the combination. As a result, the court concluded that the challenged claims of Plas-Pak’s patent were not obvious.

When an obviousness rejection is received, you must closely study the modified reference to determine whether the proposed modification would render it inoperable for its intended purpose. If it would, then the rejection may be improper and can be overcome on that basis.

A Technique for Producing Ideas

“After experiencing a desire to invent a particular thing, I may go on for months or years with the idea in the back of my head,” said Nikola Tesla. Tesla calls this the incubation period, which precedes direct effort on the invention. Science writer, Steve Johnson, called this a slow hunch. And, in his 1940 publication, A Technique for Producing Ideas, James Young also calls it incubation as a part of the metal digestive process.

Young lays out a five step process for producing ideas. He says that:

“the production of ideas is just as definite a process as the production of Fords;… that in this production the mind follows an operative technique which can be learned and controlled; and that its effective use is just as much a matter of practice in the technique as is effective use of any tool.”

Young asserts the an idea “is nothing more or less than a combination of old elements.” He continues “the capacity to bring old elements into new combinations depends largely on the ability to see relationships.”

Step 1: Gather Material

The first step is to gather raw material. Young says that we constantly try to dodge the work of gathering raw material because its “a terrible chore.” You should gather both material specific to the problem at hand and general material.

Regarding general material, wide curiosity and exploration of the world is the rule. Galileo’s invention of the pendulum clock was the product of Galileo’s experiences and cross-disciplinary studies over 58 years. Similarity, Young says every really good creative person in advertising (his field) has two notable characteristics:

“First, there was no subject under the sun which he could not easily get interested…Every facet of life has fascination for him. Second, he was an extensive browser in all sorts of fields of information.”

Young said ideas in advertising result from a new combination of specific knowledge about products and people with general knowledge about life and events. He says:

“The more of the elements of that world which are stored away in that pattern making machine, the mind, the more chances are increased for the production of new and striking combinations, or ideas.”

The material gathering is a life long job.

Step 2: Active Mental Digestion

In the second step, you actively work the information over in your mind. “What you do is to take the different bits of material which you have gathered and feel them all over…with the tentacles of the mind.” He says after a while you will reach a hopeless stage where “Everything is a jumble in your mind, with no clear insight anywhere.” This is where you move to the third step.

Step 3: Incubation, Put It Out of Your Mind

In the “third stage you make absolutely no effort of a direct nature” and put it out of your mind. This is the step where Tesla describes he  “may go on for months or years with the idea in the back of [his] head.” Young says “What you have to do at this time, apparently, is to turn the problem over to your unconscious mind and let it work while you sleep.”

Step 4: The Idea Appears

Young says that if you really did steps 1-3 properly, in the fourth step, the idea will seem to appear out of nowhere. It will come to you when you are least expecting it.

Step 5: Refinement

In the last step you refine the idea to work in the real world conditions and constrains at issue.

While Young’s field is advertising, the process appears applicable to idea generation generally. Read Young’s full work for more details on the process and stories that accompany it.

Fighting Obviousness Rejections: Proposed Combination Changes Principle Operation of the Reference

When the USPTO rejects patent claims to an invention as being obvious, it often combines two or more prior art references to make the rejection. The rejection may be improper if the combination proposed by the USPTO changes the principle operation of the prior art reference being modified.

The case of Plas-Pak Indus. v. Sulzer Mixpac AG, 600 Fed. Appx. 755 (Fed. Cir 2015) provides an example of this principle. Sulzer asserted that the claims of Plas-Pak’s US Patent 7,815,384 (“Plas-Pak’s Patent”) were obvious in view of a combination of two references, U.S. Patent 4,745,011 (“Fukuta”) and U.S. Patent 3,989,228 (“Morris”). The Plas-Pak’s Patent was directed to a device and method for mixing and dispensing multi-component paints.

Fukuta disclosed a device for mixing two-component coatings but did not disclose two cylindrical cartridges and a mixing gun that were claimed in Plas-Pak’s patent. Morris disclosed two cylindrical cartridges and a mixing gun.

Sulzer proposed to replace Fukuta’s pumps, check valves, stop vales, and escape valves with the two cylindrical cartridges and a mixing gun of Morris. But, the court found that removing those pumps and valves would alter the principle operation of Fukuta. The pumps and valves where essential to the principle operation of Fukuta, which was to prevent back-flow even when the propensity for backflow occurs repeatedly and at high velocity. Fukuta was rife with statement defining the invention as adding stop valves to prevent backflow.

The court concluded that the claims of Plas-Pak’s patent were not obvious because the proposed modification of Fukuta would change its principle operation. A change in the principle operation “is unlikely to motivate a person of ordinary skill to pursue a combination with that reference.”

Therefore, when an obviousness rejection is received, you must closely study the modified reference to determine whether the proposed modification would change its principle operation. If it would, then the rejection may be improper and can be overcome on that basis.

Trademark Ownership: The Risk of Owning a Trademark Personally

When a founder starts a business, he or she has many decisions to make. One of those is whether he or she should own assets of the business personally or whether he or she should form a corporation or LLC to own the assets of the business and bear the liabilities of a business. Founders are often quick to form a corporation or LLC to operate the business to shield themselves from personal liability arising from claims against the business.

But occasionally founders and business owners operating under a corporation or LLC seek to register and own trademarks personally rather than have them owned by the corporation or LLC. This is probably a mistake that increases their risk of being personally liable for products or services sold under the trademarks as explained below.

Quality Control

Trademark owners are required to control the quality of the goods or services sold under the mark. If a trademark owner fails to control the quality of the goods or services, trademark rights can be lost. The requirement that a trademark owner control the quality ensures that customers expectations are met with respect to goods or services sold under the mark.

If a trademark is owned/registered in the founder’s name but used by his/her wholly owned corporation or LLC, the founder is likely (implicitly or expressly) licensing the use of the trademark to the corporation or LLC. The founder is a licensor of the trademark to the corporation or LLC, who is a licensee/user of the trademark.

An injured plaintiff might assert that the founder (e.g. the trademark licensor) is personally liable because, as the trademark owner, he/she controlled the quality of the goods/services that resulted in the injury. Therefore, owning a trademark in your own name rather than having your corporation or LLC own it may, at least partially, destroy the purpose of forming a corporation or LLC in the first place, which was to limit personal liability.

Kennedy v. Guess

In the case of Kennedy v. Guess, Inc., 806 NE.2d 776 (Ind. 2004), the Indiana Supreme Court found that Guess, Inc. could be liable for alleged defective products sold bearing its licensed GUESS trademark. While this case does not involve the founder being held liable for a defective product of its company, it does illustrate that a trademark owner/ licensor–which is what a founder-trademark-owner is–could be liable for defective products sold by a licensee using its mark.

In the Guess case, Kaye Kennedy purchased a GUESS watch and received a free umbrella bearing the GUESS logo. Kaye’s husband, Richard, took the umbrella to work where a co-worker swung it from the handle. The umbrella’s shaft separated from the handle and struck Richard in the nose and sinus, causing injury.

The Kennedys sued Guess Inc., as well as Callanen, a corporation, licensed by Guess to market Products bearing the GUESS logo, including the watch and umbrella. The court concluded that “Indiana common law should treat trademark licensors as having responsibility for defective products placed in the stream of commerce bearing their marks…” The court also said that “Consumers rightly expect that products bearing logos like ‘Guess’ have been subject to some oversight by those who put their name on the product, but those same consumers can well imagine that in modern commerce the products they buy may have actually been manufactured by someone else.” The process of sorting out comparative fault between Guess and the other defendants was ultimately left to the jury.

The Guess case shows that a trademark licensor might be liable for defective products or services provided by a trademark licensee. Other cases in California have reached the opposite conclusion. See Emery v. Visa Internat. Services Ass’n, 95 Cal.App.4th 952 (3d. Dist. 2002). Nevertheless, the leading trademark treatise provides “In many cases, legal responsibility under one of the relevant legal theories seems impossible for a trademark owner to avoid.” McCarthy on Trademarks 18:75 (2017).

Solutions to Mitigate Risk: Legal Entity Ownership of Trademarks

To avoid the possibility of personal liability as a founder-trademark owner, simply start with the corporation or LLC using, owning, and registering the mark from the founding of the business. This can be done if the corporation or LLC was formed from the beginning of the business.

If trademark ownership is currently owned in the name of the founder, the trademark, and associated goodwill, can be transferred through an assignment to the corporation or LLC. By doing this, use of the mark and ownership of the mark will then reside in one entity. Liability on the basis of trademark law should be reduced or avoided at least going forward after the transfer as the founder is no longer the trademark owner.

There are cases where a person starts out in business without forming a corporation or LLC and operates as a sole proprietor. In that case the person will own the trademark. However, if and when that person forms a corporation or LLC for the business, the trademark can be transferred to the legal entity to avoid potential personal liability arising from trademark ownership.

Overcoming Obviousness Rejections: Prior Art Teaching Away From Combination

When the USPTO rejects patent claims based on alleged obviousness, it often combines two or more prior art references to make the rejection. This combination may be challenged if one of the prior art references teaches away from the proposed combination.

For an example of this principle, consider the case of Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1328 (Fed. Cir. 2009). There, Depuy Spine sued Medtronic Sofamor Danek for infringement of U.S. Patent No. 5,207,678 (“the ‘678 patent”). The ‘678 patent is directed to a pedicle screw used in spinal surgeries. A jury determined that Medtronic infringed the patent and awarded $149.1 million in lost profits damages for the sale of pedicle screws.

As a defense, Medtronic argued that the asserted claims of the ‘678 patent were invalid as obvious over the combination of two references U.S. Patent No. 5,474,555 (“Puno”) and U.S. Patent No. 2,346,346 (“Anderson”). But, the court found that Puno taught away from the proposed combination and therefore the challenged claim was not obvious over the combination of references.

The court noted, “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” The court further said, “An inference of nonobviousness is especially strong where the prior art’s teachings undermine the very reason being proffered as to why a person of ordinary skill would have combined the known elements.”

Puno disclosed a polyaxial pedicle screw assembly that had all of the parts of the relevant claim except a “compression member” for pressing the screw head 30 against the receiver member 23. But Puno described that its design achieved a “shock absorber” effect allowing for some motion between the anchor seat 23 and the vertebrae (see fig. 7 below). The lack of a compression member allowed the shock absorber effect. Puno described that the shock absorber effect “prevent[s] direct transfer of load from the rod to the bone-screw interface prior to achieving bony fusion, thereby decreasing the chance of failure of the screw or the bone-screw interface.” 

Therefore, Puno taught away from the use of a compression member, which would have increased rigidity, decreased the shock absorber effect, and possibly increased the chance of failure of the screw or the bone-screw interface according to Puno. The court concluded, due to the teaching away, a person of ordinary skill would have been deterred from combining Puno and Anderson in the manner that Medtronic proposed. As a result, the challenged claim of the ‘678 patent was not invalid as obvious and the infringement judgement was upheld. 

When receiving an obviousness rejection, the cited references relied on in the rejection should be studied to determine whether they teach away from the combination. If there is such as teaching away, then a response may be filed with the USPTO arguing against the obviousness rejection on that basis.

Is The Invention Obvious?

In order to obtain a patent on an invention, the invention must not be obvious in view of the prior art. This requirement is provided in 35 USC 103, which states:

A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.

Obviousness determinations require a multifaceted consideration of the invention and the prior art.

The framework for obviousness determinations is provided by the Supreme Court in Graham v. John Deere Co., 383 U.S. 1 (1966). When considering obviousness one must (1) determine the scope and content of the prior art, (2) ascertain differences between the prior art and the claims at issue (the claimed invention), and (3) resolved the level of ordinary skill in the pertinent art. Obviousness or nonobviousness of the invention is determined against this framework.

Further, the USPTO fact finder must provide a rationale of why the invention is obvious. The Supreme Court in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415-421 (2007) made it easier for the USPTO to reject inventions as obvious. Prior to KSR, one could argue that an obviousness rejection was inproper if there was not teaching, suggestion, or motiviation to combine the prior art references. But, the court said “The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” This opened the door to the use of additional rationales and evidence to support an obviousness rejection. And, this made life harder for some patent applicants.

After KSR, the USPTO reviewed several court cases and attempted to distill possible non-limiting example rationales that could support an obviousness determination. Therefore, even if there was no teaching, motivation, or suggestion, the patent examiner might be able to rely on the following other rationales:

  1. Combining prior art elements according to known methods to yield predictable results;
  2. Simple substitution of one known element for another to obtain predictable results;
  3. Use of known technique to improve similar devices, methods, or products in the same way;
  4. Applying a known technique to a known device, method, or product ready for improvement to yield predictable results;
  5. Choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; or
  6. Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art. [MPEP 2143]

These rationales all rely on the predictability of the results of combining references. If the proposed combination would not have been recognized by one skilled in the art to produce predictable results, then these rationales should not apply.

Further, if one takes the example rationales of MPEP 2143 and considers them broadly it is possible that one could conclude that many patentable inventions are actually unpatentably obvious. However, you can’t take the rationales at face value because there are a host of rebuttal circumstances or circumstances where some of rationales don’t apply or would be applied only narrowly. In other words, don’t over generalize the MPEP 2143 rationales and conclude your invention is obvious.

For example, the following circumstances may prevent the combination of references in an obviousness rejection:

  1. one of the references teaches away from the combination of the other references,
  2. the proposed modification or combination will render the reference being modified unsatisfactory for its intended purpose,
  3. the proposed modification would change the principle operation of the prior art invention being modified, or
  4. the invention proceeds contrary to accepted wisdom in the art.

[See In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983), MPEP 2145(X)(D); In re Gordon, 733 F.2d 900 (Fed. Cir. 1984); MPEP 2143(V); In re Ratti, 270 F.2d 810, 813 (CCPA 1959); MPEP 2143(VI); In re Hedges, 783 F.2d 1038 (Fed. Cir. 1986); MPEP 2145(X)(D)(3).]

But these are just a few examples.

Further, the USPTO’s rationale for combining prior art references in an obviousness rejection must have an adequate evidentiary basis and there must be a connection between the rationale and the motivation to combine references in the obviousness rejection. In re NuVasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016); MPEP 2143. If the USPTO fails to meet these requirements the obviousness rejection can be improper.

In addition, so-called “secondary considerations” can be important to show nonobviousness. Secondary considerations may include: (1) commercial success of the claimed invention, (2) a long felt but unsolved need, or (3) failure of others.

As you can see there are several factors and elements to consider when attempting to establish obviousness or rebut it. And, the USPTO, district courts, and appeal courts, often disagree about whether a particular invention is obvious. For example, in Novartis AG v. Noven Pharmaceuticals Inc., 853 F. 3d 1289 (Fed. Cir. 2017), the PTAB of the USPTO found the challenged claims of U.S. Patent Nos. 6,316,023 and 6,335,031 were invalid as obvious. But, based on the same evidence, a prior District court found the claims of same patents were not obvious. The different results for the same patents on the same evidence were due in part to the different standards used by the PTAB and the district court. However, these varying results say something about the difficulty in applying and predicting whether an invention is obvious.

Nevertheless, obviousness of an invention can be assessed before a patent application is filed, usually after a patent novelty search is performed. And there are several possible angles for overcoming obviousness rejections at the USPTO.