In the last quarter’s article, we reviewed the non-obviousness requirement for patentability codified under 35 U.S.C. § 103, which is the fourth and most difficult hurdle to satisfy for getting a patent. As you may recall, the other three requirements for patentability of a utility invention are 1) utility, 2) patentable subject matter and 3) novelty. Under 35 U.S.C. § 103, even if the claimed invention is new, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious to a person having ordinary skill in the art, then the non-obviousness requirement for patentability is not satisfied. The focus of this article is to review some strategies for overcoming an obviousness rejection to patentability while working with a patent attorney.

Begin with the basics

As we reviewed in last quarter’s article, in making an obviousness rejection, an Examiner typically combines two or more prior art references. In trying to overcome the rejection, the patent applicant should first verify that each of the prior art references is indeed prior art. That is, each one has a publication date that is earlier than the filing date of the patent application being examined. If this is not the case, then it is an improper obviousness rejection because one of the prior art references is not prior art against the application.

Next, the patent applicant should verify that the combination of prior art references used to make the obviousness rejection teaches or suggests each and every feature of the claims of the patent application being examined. Oftentimes, Examiners gloss over the prior art references and do not thoroughly confirm that they teach all of the features of the patent applicant’s claims. In this case, the patent applicant argues to the Examiner which of the claim features are not taught or suggested by the combination of prior art references to overcome the rejection.

Improper combination

If the above two options are not viable, the patent applicant may argue that the Examiner improperly combined the prior art references in making the obviousness rejection. In particular, there would be no reasonable expectation of success if one skilled in the art combined the prior art references together. For example, if one of the prior art references teaches away from one of the other prior art references, then one skilled in the art would not look to combine them together to come up with the patent applicant’s invention. To display this concept, let’s assume our claimed invention = A + B + C + D.  The Examiner combines prior art reference 1 (A + B + C) with prior art reference 2 (A + D) to recreate the claimed invention (A + B + C + D), and hence rejects it for obviousness. However, if prior art reference 2 teaches that A + D should not be used with B and/or C, then it teaches away from combining prior art reference 1 with prior art reference 2. The patent applicant can argue this to the Examiner, and the obviousness rejection likely will be overcome.

Narrowing the claimed ranges

As another possible option for overcoming an obviousness rejection, the patent applicant may argue the criticality of the claimed ranges in the patent application. For example, this may occur if the claimed invention is directed to process for synthesizing a polymer, but the patent applicant has discovered that within a narrow reactor temperature range of 150° to 170° C, the polymer yield from the reactor is dramatically improved. If the prior art teaches a similar process, but only discloses a broader reactor temperature range of 120° to 220° C with no mention of the impact of reactor temperature on polymer yield, the patent applicant can argue that he/she has discovered the criticality of the narrow range of reactor temperature (150° to 170° C)
to improve polymer yield. Even though the narrow temperature range (150° to 170° C) claimed by the patent applicant falls within the broad temperature range (120° to 220° C) disclosed by the prior art, the discovery of a “sweet spot” within the broad range of the prior art can be a basis for overcoming the obviousness rejection based on criticality of the claimed range.

Secondary considerations

Another approach for overcoming an obviousness rejection is to argue secondary considerations for patentability, including unexpected or surprising results, commercial success of the invention, long-felt need for the invention, praise and skepticism of experts in the field in being able to come up with the invention, prior failure of others in trying to come up with the invention, licensing of the invention to others and copying of the invention by others. These were discussed in the last quarter’s article, with unexpected or surprising results based on the invention being the most commonly used and most successfully argued secondary consideration for patentability. However, the unexpected or surprising results argument must be supported by actual experimental data relative to the invention and an explanation of why the data is surprising or unexpected. The scope of the claims also must be consistent with the actual experimental data in the patent application, exhibiting unexpected or surprising results.

Amending the claims

If none of the above options are viable for overcoming the obviousness rejection, the patent applicant then should look to modify or “amend” the claims in the patent application to try to distinguish them over the prior art references used by the Examiner in making the rejection. For example, the patent applicant should look to include a new feature in the independent claim(s) of the application, which the combination of prior art references does not teach or suggest. It is important to make sure that the new feature being added to the claim(s) is supported by the patent application in order to avoid a new subject matter rejection by the Examiner.

These strategies for overcoming an obviousness rejection may seem daunting; however, working with a patent attorney, they can be navigated easily to turn a patent application rejected for obviousness into a granted patent. In the next quarter’s article, we will cover the three types of US patents, which are 1) utility, 2) design and 3) plant patents, and the distinctions between them.   

Robert A. Migliorini
203-200-8065; rampatlaw@gmail.com
Patent Attorney