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Help! They Rejected my Patent Application!

The popularity of reality television shows such as "Shark Tank," "All-American Makers," and "How It's Made," has led to increased interest in seeking patent protection. Applications for patents are made to the U.S. Patent and Trademark Office. However, the USPTO does not grant patents to all comers. In fact it is rare to obtain a patent grant without at least one Office Action requesting clarification or providing a non-final rejection. The applicant has an opportunity to respond to adverse Office Actions, 37 CFR 1.111(a)(1).

A statutory ground for rejection is obviousness, 35 U.S.C. 103: "A patent for a claimed invention may not be obtained . . . if the differences between the claimed invention and the prior art are such that the claimed invention . . . would have been obvious . . ." My Top in the Regular Army instructed: "If it doesn't move, paint it." His meaning was obvious. The USPTO has more complicated guidelines for determining when an invention is obvious which are provided in the Manual of Patent Examining Procedure [MPEP] available on the USPTO web site. The guidelines in the MPEP are "intended to assist office personnel to make a proper determination of obviousness . . ." MPEP 2141.

The MPEP is updated from time-to-time by developments in the law. In an leading case, the U.S. Supreme Court accepted the defendant's argument and invalidated a patent by reasoning that connecting an adjustable control pedal to an electronic throttle control was a combination of two known elements which was obvious, KSR International Co. V. Teleflex, Inc., 550 U.S. 398, 404 (2007). The MPEP now instructs on a portion of the KSR holding to support rejection: "[T]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results."

The MPEP also cites a follow-on KSR passage to explain that "[w]hen a work is available in one field . . . other market forces can prompt variations of it, either in the same field or a different one," KSR at 417. As is readily apparent, combinations of prior art in different fields even separated by substantial periods of time can prove fatal to the applicant's dreams of patent grant.

To overcome obviousness challenges, the MPEP instructs that the applicant may present objective evidence referred to as "secondary considerations [such as] commercial success, long-felt but unsolved needs, failure of others, and unexpected results," MPEP 2141 II. Although the Examiner is tasked to independently discover facts, the applicant should certainly provide a response based on investigation, scientific research and/or testing, MPEP 2141 IV.

The Examiner's ability to support rejection based on relying on prior patents and publications is limited to analogous art, meaning that the reference must be in the same field of endeavor or reasonably pertinent, MPEP 2141.01(a). Examples are provided in the MPEP for chemical, mechanical, electrical and design art.

Further, the prior art must be considered in its entirety based on a hypothetical person of ordinary skill in the art, MPEP 2141.03 I.

My law office is pleased to assist applicants with patent prosecution. We are proactive in seeking to anticipate potential grounds for rejection as well as responding to and overcoming Examiner rejections.

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