Getting an office action from the USPTO calling your invention “obvious” is a tough pill to swallow. But this is actually normal.
As a patent attorney who has prosecuted hundreds of patents, if the biggest issue we’re facing is a Section 103 obvious rejection, we’re in good shape.
But it’s really easy to flub the response if you don’t know what to look for.
Fights over obviousness focus on 3 things.
What you’ll learn
- How obviousness rejections happen.
- The three ways to argue against an obviousness rejection.
- How to set an application up to combat an obviousness rejection.
Setting the stage
A tech founder client of ours was building something that was big enough to disrupt the market. They had identified a real need, and decided it would be strategically helpful to seek a patent on the core technology. This would give them both deterrence against competitors, but also an attractiveness boost for fundraising.
Here’s what happened
We put together a patent application for the invention, drafting claims that varied in scope and would be designed to give good defensibility if a resulting patent was to be litigated. A market study was conducted before we drafted the application, so we had a good idea of what was and was not available on the market.
After putting all of the details in, we filed the application.
We had to wait a bit, but eventually, we received an office action from the USPTO. One of the issues the examiner raised was obviousness. The examiner argued that a handful of the claims were obvious over a few previous patent applications (a/k/a prior art) when read together.
We called BS on the rejection
Initially, we argued against the rejection. We saw that there was a bad reading of the prior art, and the combination itself did not make sense. There was just no way that two of the prior art references the examiner relied on could join together in a sensible manner.
The examiner must have agreed with us, because the next office action we received did not contain the same rejection. The examiner issued a new rejection by changing out the prior art relied on (this happens too). So, we had to put our other tactic into play as well.
We were prepared to handle this
To get over this obviousness rejection, we leveraged two key tactics:
- Attack the prima facie case
- Leveraging our pre-planned fallback claims
What is the “prima facie case” and how do you attack it?
Latin! Welcome to law. The prima facie case consists of the three requirements that a patent examiner must satisfy to call an invention obvious:
- All Elements Addressed: The rejection has to address all of the claim limitations—the examiner can’t skip over language in the claim.
- Motivation or Suggestion: The examiner needs to demonstrate a logical rationale or motivation for modifying or combining prior art cited. This rationale must be credible and not based purely on speculation or hindsight.
- Expectation of Success: There should be a reasonable expectation of success in recreating the claimed invention by combining or modifying the prior art—things can’t just be jammed together without regard to what they’re actually capable of.
In this case, we attacked the motivation to combine the prior art. When we did a deep dive into the cited prior art, it became clear that the references militated against each other. Not directly (wouldn’t it be nice if it was that easy?), but each had written disclosure that provided a good basis for an argument against their combination.
We presented the argument to the examiner demonstrating that the references did provide the puzzle fit they needed to in order to make the rejection stand.
But the examiner wasn’t done yet. The examiner thought adding another reference would do the trick.
The examiner revised the rejection, with another reference added to the group that was cited.
Leveraging our pre-planned position
When you apply for a patent, you usually want to aim for as broad of scope as you can. I typically describe this as a negotiation—where our initial claim set is our opening anchor. (Forget that being the first one to name a number in a negotiation is at a disadvantage—this is a functional limitation because it would make no sense for the government to give the opening scope).
But there is a LOT of prior art in the world. How much prior art is a lot? Think of it in terms of all conveyable human knowledge in existence before your filing date. Obviously we cannot review all of that before we file. We go in with the best intel we have available, but it is always possible the examiner finds something else or interprets something differently.
Knowing that, during the drafting process, we shoot for broad independent claims (claims that usually start with “A”). We then add our dependent claims (claims that usually start with “The”) to cover variations. Remember that a dependent claim’s language and scope is the combination of itself and all claims from which it depends.
Smart patent attorneys do something savvy, though. Some of the dependent claims are set up as pre-planned fallback positions. These are scopes that we would be comfortable taking for the entire patent, but for negotiation reasons, do not want to start off with.
This way, when you’re dealing with a stubborn rejection, you can add one of these fallback scopes into your independent claim to defeat the prima facie case by making the target harder to hit. This is the tactic we used to get over the restated obviousness rejection.
This wasn’t our first rodeo
As you can probably guess, we’ve seen this story more than once. When you’ve been working on patents for tech startups for this long, it’s not an unusual one.
Both of these tactics required planning for them from the start. We had to plan for these contingencies when we wrote the application. This is one of the reasons that patent law is so hard. But I enjoy the challenge.