In the wake of the U.S. Supreme Court decision in KSR (KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2 1383 (2007)), responding to 35 USC §103 or obviousness-type rejections where the examiner has to combine one or more prior art references in order to reject all of the features of a claim have become much more challenging. Prior to KSR the teaching-suggestion-motivation (TSM) test set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1996), was applied to determine obviousness. The prior art references were required to provide some teaching, suggestion or motivation to be properly combined to reject the features of a claim. Accordingly, an argument could be made in responding to a 103 rejection that the prior art references could not be properly combined because there was no teaching, suggestion or motivation for their combination to provide the claimed invention.
After KSR, virtually any reasonable rationale for combining the prior art references by the examiner seems to be possible. MPEP 2143 provides seven exemplary rationales to support a conclusion of obviousness and provides an extensive explanation of each of the rationales including examples. MPEP 2143 states that the list of rationales provided is not intended to be an all-inclusive list and other rationales to support a conclusion of obviousness may be relied upon by Office personnel. Accordingly, the reasons that an examiner can provide for combining prior art references for an obviousness rejections can be limitless. Although, KSR requires that rejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.
One approach for rebutting a 103 rejection includes providing evidence of secondary considerations, such as commercial success, long felt but unsolved need, failure of others and unexpected results (Graham v. John Deere Co., 383 U.S. at 17, 148 USPQ at 467). While this approach may prove successful, being able to obtain evidence of such secondary considerations may prove difficult and the adequacy of such evidence if available must be carefully considered. Affidavits including secondary considerations to overcome a 103 rejection are typically viewed as being self-serving and are subject to attack in litigation.
Another approach is to rebut the examiner’s rationale for combining the prior art references. However as discussed above the rationales that an examiner can use to combine prior art references can extend beyond the exemplary rationales discussed in the MPEP. Yet there may still be issues associated with the prior art references that can be used. One argument for non-combinability is if one of the prior art references criticizes, discredits or otherwise discourages the claimed invention (MPEP 2143.01 I.). Other arguments may involve the proposed modification formed by combining the prior art references rendering the prior art device or process unsatisfactory for its intended purpose (MPEP 2143.02 V.) or the proposed modification changes the principle of operation (MPEP 2143.02 VI.). A caveat to physical combinability in MPEP 2145 provides that the test for obviousness is not whether the feature of a secondary reference may be bodily incorporated into the structure of the primary reference but rather the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art (In re Keller, 208 USPQ 871, 881 (CCPA 1981)).
In conclusion, an argument that the prior art references cannot be properly combined is probably not going to be successful unless there is explicit teaching in one of the references that can be used as evidence that the references cannot be combined. What the patent practitioner is typically left with, or along with the non-combinability argument, is treating the 103 rejection like a 102 rejection and finding at least one feature in the claimed invention that is not taught or suggested by any of the cited documents.