Patent Prosecution Notes

1. The MPEP was recently updated to include examination guidelines in light of KSR v. Teleflex: MPEP; Bluepages. The update to MPEP 706.02(j) reads as follows:  

35 U.S.C. 103 authorizes a rejection where, to meet the claim, it is necessary to modify a single reference or to combine it with one or more other references. After indicating that the rejection is under 35 U.S.C. 103, the examiner should set forth in the Office action:

1. the relevant teachings of the prior art relied upon, preferably with reference to the relevant column or page number(s) and line number(s) where appropriate,
2. the difference or differences in the claim over the applied reference(s),
3. the proposed modification of the applied reference(s) necessary to arrive at the claimed subject matter, and
4. an explanation >as to< why >the claimed invention would have been obvious to< one of ordinary
   skill in the art at the time the invention was made.

. . . It is important for an examiner to properly communicate the basis for a rejection so that the issues can be identified early and the applicant can be given fair opportunity to reply. Furthermore, if an initially rejected application issues as a patent, the rationale behind an earlier rejection may be important in interpreting the scope of the patent claims. Since issued patents are presumed valid (35 U.S.C. 282) and constitute a property right (35 U.S.C. 261), the written record must be clear as to the basis for the grant. Since patent examiners cannot normally be compelled to testify in legal proceedings regarding their mental processes (see MPEP § 1701.01), it is important that the written record clearly explain the rationale for decisions made during prosecution of the application.

See MPEP § 2141 - § 2144.09 generally for guidance on patentability determinations under 35 U.S.C. 103. . .