Drafting Tips for Overcoming Obviousness Rejections and Officially Noticed Facts

In a patent application, it is important to describe the benefits and advantages that the invention provides over the prior art. This gives the invention context and provides reasons for the Examiner to find the unique features of the invention novel and non-obvious.

Defensive Uses. You may also use the benefits and advantages provided in the application defensively during prosecution. This may occur in two instances (1) when the examiner makes an obviousness rejection and provides reasons why one skilled in the art would combine the references and (2) when the examiner takes official notice of one or more facts.

Reasons To Combine References. Section 2145(X) of the MPEP provides that an obviousness rejection may not be based on improperhindsight reasoning gleaned from the applicant’s disclosure. Section 2142 provides “To reach a proper determination under 35 U.S.C. 103, the examiner must step backward in time and into the shoes worn by the hypothetical ‘person of ordinary skill in the art’ when the invention was unknown and just before it was made.” It continues, “The tendency to resort to ‘hindsight’ based upon applicant’s disclosure is often difficult to avoid due to the very nature of the examination process.” It further provides that knowledge of the applicant’s disclosure must be put aside in reaching an obviousness determination.

Therefore, if the Examiner provides a reason to combine two references, and that reason is listed in the application, the applicant can assert that the Examiner is using improper hindsight reasoning based on the applicant’s disclosure.

For example, say the Examiner asserted that one skilled in the art would combine two references to gain operational efficiency. Further, the applicant provided in the disclosure that the invention provided the benefit of increased operational efficiency over the prior art. Then the applicant could assert that the examiner is using improper hindsight reasoning and therefore, the operational efficiency rationale is not a proper basis to combine references. The Examiner may not be able to sustain the obviousness rejection without the given rationale.

Official Notice. Section 2144.03 of the MPEP allows an Examiner to take official notice of facts not in the record or to rely on common knowledge in making a rejection. However, section 2144.03(A) provides that “Official notice unsupported by documentary evidence should only be taken by the Examiner where the facts asserted to be well-known, or to be common knowledge in the art are capable of instant and unquestionable demonstration as being well-known.” The “Examiner must be capable of such instant and unquestionable demonstration as to defy dispute.”

Section 2144.03(B) provides that when the Examiner claims certain facts are common knowledge, the Examiner must “provide specific factual findings predicated on sound technical and scientific reasoning to support his or her conclusion of common knowledge.”

If the examiner uses a reason listed in the applicants disclosure to support his or her conclusion of common knowledge–like above–the applicant may assert that the Examiner is using improper hindsight reasoning based on the applicant’s disclosure.

Failure to List Advantages. If the applicant drafts a “slim” application that does not list the advantages and benefits provided over the prior art, the applicant will have a more difficult time attacking an Examiner’s reasoning as a basis of officially noticed facts and as used in an obviousness rejection.