Examiners tend to think of many rules from the MPEP as per se rules. It clearly makes things easier, but many times the rules to be applied are not so black and white. A great example is the idea that it is per se obvious to integrate two components into a single component. Many examiners will make such a statement in their rejections or in interviews. However, when pressed for support for this rule, they often become silent.
The reason is that there is no clear support for such a rule. Rather, the opposite is true. This is illustrated in a recent appeal decision from the PTAB for an invention by Stihl related to a pre-assembled fuel injector component. However, before getting to that case, some background is provided.
Some examiners think that MPEP 2143 supports the idea that it is per se obvious to combine two elements into a single component. While it is true that MPEP 2143(A) is relevant to determining whether combining two elements together into a single component is obvious, MPEP 2143(A) does not answer the question with a per se rule. Instead, MPEP 2143(A) discusses a broader rule that requires looking to the facts of each case:
Combining Prior Art Elements According to Known Methods To Yield Predictable Results
To reject a claim based on this rationale, Office personnel must resolve the Graham factual inquiries. Then, Office personnel must articulate the following:
(1) a finding that the prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference;
(2) a finding that one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately;
(3) a finding that one of ordinary skill in the art would have recognized that the results of the combination were predictable; and
(4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness
Example 1 in the MPEP, is from Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969). The MPEP summarizes the issue as one where “[a]ll of the component parts were known in the prior art…” and the only difference was “the combination of the ‘old elements’ into a single device by mounting them on a single chassis.” This, as we all know, was found unpatentable because operation of the heater was in no way dependent on the operation of the other equipment, and a separate heater could also be used in conjunction with a standard paving machine to achieve the same results. This fits in with the rules above, but does not conform to the idea of a per se rule.
Turning back to the Stihl case (15/178,916), the examiner rejected the claim on the theory that “forming an integral unit from previously separable parts is not patentably distinct” without citation to any case or the MPEP.
The appellant here took the very astute approach of pointing out the lack of citation to any precedent or the MPEP, and then turning attention to MPEP § 2144.04. MPEP § 2144.04 is a great tool to bring to bear in this situation since it effectively undercuts the rejection where the examiner improperly relies on a per se rule since reliance on a per se rule never considers the particular facts of the case at hand (and thus is per se wrong).
MPEP § 2144.04 explains that there are times where precedent can supply a supporting rationale for obviousness, but in doing so the Office must establish that the facts of the case at hand are sufficiently similar to the facts of the cited precedent. Here, the Office cited nothing and so the rejection was in error. As the PTAB explained:
Reliance on legal precedent as a source of supporting rationale, however, is appropriate only “if the facts in a prior legal decision are sufficiently similar to those in an application.” Id. § 2144(III). Moreover, this “should not be treated as [a] per se rule[], but rather must be explained and shown to apply to the facts at hand.” Id. § 2144; (internal citations omitted).
Here, the Examiner provides no reasoning to support the conclusion that “forming an integral unit from previously separable parts is not patentably distinct.” Ans. 8. The Examiner applies this statement as a per se rule, without analysis. For example, the Examiner does not provide any persuasive reasoning to show that a person of ordinary skill in the art would have found it obvious to integrate and preassemble a valve unit when Tanari’s device is modified to include “an inner shoulder [that] provides a stop surface for the spring and valve body as taught by Ams” and “a valve member that is separated from the armature and return spring by a body and seat and attached via a stem as taught by Yamada,” or that the so-modified valve unit would have been expected to operate successfully if made integral and preassembled.
So, don’t be afraid to push back against rejections improperly relying on per se rules that do not exist.