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Responding to a Rejection when the Examiner’s Argument is Unclear

I was recently asked the question: Is it proper for an Examiner to select elements from a number of prior art references without connecting the elements to reject a claim as obvious?

This practice is often referred to as “Cherry Picking”; selecting a reference merely because it recites an element without further explanation. This is more common than one would expect, but this is not a proper rejection under obviousness. MPEP §2141 (C)(III) requires that “Office personnel must explain why the difference(s) between the prior art and the claimed invention would have been obvious to one of ordinary skill in the art”. It has been suggested that if the reference discloses the element in a similar context as the claimed invention or one skilled in the art would understand the connection, an explanation is not needed. Unfortunately, this is an error. The USPTO requires that the Examiner support a conclusion of obviousness by providing an explanation why the claimed invention is obvious in view of the cited art.

Providing a response to this type of rejection can be tricky. There are two common methods often used in these circumstances. The first method is to request additional information in the response stating that “without further explanation, Applicant is uncertain how the Examiner is applying the reference in the context of the claimed invention and therefore is unable to provide a complete response”. The second method is to restate the Examiner’s argument in a way that allows you to provide a complete response. Each has its benefits and drawbacks. The first allows the Examiner the opportunity to clarify the argument for the record. However, since requesting additional information is not technically a response, the Examiner may issue a final Office action stating that Applicant’s arguments were non-responsive to the rejections.

The second can move prosecution forward if the presumption was correct and the Examiner accepts the response. However, if the presumption is incorrect, it may raise additional rejections by the Examiner. Another disadvantage is that the incorrect presumption is now part of the prosecution history.

Because of the disadvantages, Patent Success Strategies, LLC does not recommend either of these approaches. Our method avoids the disadvantages of the current methods and often results in an allowance. To learn more about our method, please contact us.

In summary, MPEP §2141 (C) states that an Examiner must explain why the claimed invention is obvious in view of the prior art cited. Section (III) further elaborates that rejections for obviousness will not be sustained by mere conclusory statements of obviousness. Articulated reasoning with some rational underpinning is required to support an obviousness rejection.

 



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