There are many ways to analyze the question of whether a claimed invention is obvious. We have numerous past posts on various related issues (see here) and today we focus in on the particular aspect of technical reasoning in attacking, or establishing, obviousness. Usually the examiner sets the stage for the dispositive issues in that the Office bears the burden of establishing the rejection. The applicant then responds. Many times these analyses are somewhat fuzzy as there is almost never a perfectly clear line between obvious non-patentable concepts and non-obvious inventions. As we have said before - finding and presenting convincing arguments, one way or the other, is part of the challenge that makes patent law so engaging!
As a brief review of the current situation at the USPTO (and PTAB), an examiner typically forms an obviousness rejection by starting with a first reference, noting there is at least one claimed element lacking, and then turning to a second reference to fill the gap(s). Not only must the examiner fill all the gaps, but the examiner must articulate reasons (with rational underpinnings) for the combination. Sometimes the examiner does this though technical reasoning. Such an approach often utilizes reasoning that is not explicitly recited in the cited reference, but is nevertheless (allegedly) supported by those references or other evidence of record. Once the examiner sets forth such an approach, it is the applicant’s job to point out a problem with the examiner’s reasoning.
Many times applicants argue that the examiner’s reasoning for making a rejection is not explicitly found in the cited reference. For example, if an examiner adds a missing feature because such a modification will “improve efficiency”, an applicant might respond that the cited reference having that feature provides no such teaching that it improves efficiency. However, such an argument can be, and often is, dismissed (both by examiners and the PTAB) if the applicant cannot back it up with technical reasoning (or point out why the examiner’s technical reasoning is incorrect).
A couple of recent PTAB cases illustrate the distinction. US 13/881,033 relates to a method of producing a chassis component by ZF. The examiner rejected the pending claims based on a combination and provided numerous technical reasons to make the combination, none of which were explicitly recited in the cited references. In response to the rejection, ZF argued on appeal that the rejection was therefore based on hindsight. The PTAB disagreed, explaining (internal citations omitted, emphasis added):
The Appellant’s arguments that the Examiner relies on hindsight reasoning (see Appeal Br. 10) are unpersuasive of error because the Appellant does not provide sufficient argument, details, or technical reasoning why the Examiner’s articulated reasoning is ineffective to support the conclusion of obviousness. Here, the Examiner articulates clear reasons why it would have been obvious to one of skill in the art to [make the combination] ... The Examiner thus establishes a prima facie case of obviousness as the Examiner has provided articulated reasoning with rational underpinning to support a legal conclusion of obviousness. The Appellant does not provide sufficient evidence or technical reasoning why the Examiner’s reasons are in error. Rather, the Appellant simply argues that “[n]either Pyles ’833, nor Motofumi ’970, say anything of” the reasons stated by the Examiner. Appeal Br. 10 (italics and underlining omitted). The Appellant’s argument amounts to an argument that the Examiner’s reasoning is in error because the cited references do not explicitly provide a motivation to arrive at the proposed combination. However, there is no rigid requirement that the prior art explicitly disclose a particular benefit. As our reviewing court has stated:
KSR expanded the sources of information for a properly flexible obviousness inquiry to include market forces; design incentives; the “interrelated teachings of multiple patents”; “any need or problem known in the field of endeavor at the time of invention and addressed by the patent”; and the background knowledge, creativity, and common sense of the person of ordinary skill.
The Appellant fails to address why the Examiner’s articulated reasoning is incorrect, is based on the Appellant’s Specification, or is otherwise ineffective to support the conclusion of obviousness.
In contrast, with regard to E-One’s patent application (15/925,431) for a firefighting vehicle, E-One articulated a technical reason why the examiner’s proposed combination would not be deficient from a technical point of view. The invention related to a system for testing the flow to the foaming system on-board the vehicle. The examiner had proposed a modification of the primary reference that technically would have met the claim limitations under the broadest reasonable interpretation, but the reason for doing so was technically flawed because it would have formed a system that wasn’t actually able to measure the desired parameters to properly test the foam system. Here, the PTAB explained why E-One’s technical argument was correct (internal citations simplified):
In our opinion, it is unlikely that a person of ordinary skill in the art would have inserted a flow meter into pipe 82, because it would have measured only a portion of the flow from tank 75 to eductor 72 and nozzle 81. Although the Examiner is technically correct that a flow meter in pipe 82 would measure the flow through manifold 66 so as to literally satisfy the claim language, this would not actually “test” the system, because it would not also measure the direct flow through pipe 74 to eductor 72 and nozzle 81. Kudo explains that foam discharge tests verify that the foam delivery system functions properly. Kudo, col. 1, ll. 15–21. The Examiner does not explain how measuring only a portion of the total flow to eductor 72 effectively subjects the system to a reliable test. “The court should consider a range of real-world facts to determine ‘whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.’” Arctic Cat Inc. Here, due to the divergence of flow into pipes 82 and 74, the Examiner’s proposed reason for modifying Kudo in the manner proposed does not stack up to the “real-world facts” before us.
So, when considering an obviousness rejection, consider whether the examiner’s reasons for making the combination hold up to the particular technology at issue and lead to a logical system that is able to function. This is why it is so important to have a proper technical understanding not only of the invention, but the prior art and the line of reasoning applied by the examiner.