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. . .

Comments

[mrbellie]

I find it interesting that there is no requirement to assess the levelof skill of someone with "ordinary" skill in the art. This
is no different than the previous version of 706.02(j)
but I always felt it should be in there given the Graham
inquiries.

[Edge]

Meaningless but obvious clerical error:
Section 2141, under II (page 2100-116), (A) and (B) are identical (though it is correct in the corresponding October 10 Federal Register).

[ple]

KSR likely won't have much of an effect at the examination level. I do suspect, however, that the BPAI's affirmance rate will increase substantially.

[Gobhicks]

Here in the UK, following the decision

Pozzoli Spa v BDMO SA & Anor [2007] EWCA Civ 588 (22 June 2007)
http://www.bailii.org/ew/cases/EWCA/Civ/2007/588.html

the test for obviousness/inventive step is:

(1)
(a) Identify the notional "person skilled in the art"
(b) Identify the relevant common general knowledge of that person;

(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;

(3) Identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed;

(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?

Not that different from KSR...

This is fine in litigation, where the the characteristics of the skilled person and the question of what would be obvious to that person will be the subject of expert evidence and "learned" debate. But how on earth can that standard be properly applied by any Patent Office in a quick, low cost, ex parte administrative procedure? Answer: it can't. It's a plain fact that pre-grant examination for obviousness can only hope to weed out the "obviously obvious". Beyond that, to be fair to the applicant, any doubt has to be resolved in favour of the applicant. To be fair to third parties, opportunities must be available for challenging the grant of the patent.

Fact is, no-one cares that much about most patents. Pre-grant examination can, realistically, only be a screening process, unless you want to vastly increase the cost of obtaining a patent. The Presumption of Validity is intellectually dishonest and perverts the whole patent system.