![]() Other less common options include arguing that the examiner has read the citations unfairly, or is combining old citations. Additionally, you can also try to defend based on Secondary considerations. Further, the examiner’s proposed combination is often a Frankenstein monster that differs significantly from the claim. ![]() Indeed, the examiner’s interpretation may even render the citation inoperable. Examiners often misquote the citations and have gaps in their reasoning. You have other ways to rebut obviousness rejections. SCOTUS says that we don’t have to! Other ways to rebut obviousness rejectionsįortunately, you are not totally out of luck. In other words, thanks to the KSR ruling, the present USPTO rules can be paraphrased as Don’t bother us about “hindsight”, we’re not listening. Thus, your examiner can dismiss your “hindsight” rebuttals by merely stating that under the newer, post-KSR, USPTO rules (MPEP 2141.01 III): “ Content of the prior art is determined at the time the invention was made to avoid hindsight.” Really? While you are back in that earlier time, can you invest in some stocks for me? Instead, they have told the examiner that hindsight bias isn’t a real problem. You have thus “ trained the examiner’s neural net” to view this solution as “obvious.” However, SCOTUS doesn’t understand this. In reality, you have just shown the examiner the solution to a puzzle. What they gave us instead is a meaningless phrase and a legal fiction. Unfortunately, SCOTUS failed to provide a time machine. They held that hindsight could be avoided by just considering if the invention would be obvious “ at the time of the invention”. They argued that the earlier anti-hindsight rules were too “ rigid”, and that “ common sense” should be used. Here, they ran this incomplete dictionary definition into the ground. SCOTUS tends to turn to the dictionary whenever they don’t understand a subject. Dictionaries define hindsight (somewhat incompletely) as: “ understanding of a situation or event only after it has happened or developed”. Teleflex case, SCOTUS made what, in my opinion, was a fundamental error. Hindsight bias? Inconceivable!īefore 2007, the USPTO used anti-hindsight rules in an attempt to minimize hindsight problems. Another big problem is that the USPTO rules examination rules allow them to combine an unreasonable number of prior art citations. Once you see the solution to a puzzle, it is hard to see anything else. Here the legal system is attempting to cope, with varying success, with a very complex underlying problem of pattern recognition. Lots of non-obvious things look obvious in hindsight. ![]() The USPTO attempts to set the depth of this “ shielding” or “ force field” by trying to determine, often years later, what a person having ordinary skill in the art (PHOSITA) would think was obvious. Obviousness acts like an invisible “ force field” that keeps competitors from getting too close to your work. So there needs to be something to prevent this. Some background: Without obviousness rejections, your utility or design patent could soon be swamped by many other competitor patents that claim the smallest, most trivial changes to your work. Why does the USPTO work this way? Why do obviousness rejections exist? This statement might look to you like a standard formula that the USPTO could use to reject almost anything. Why did the examiner write all these “ rejected under 35 USC 103 as being unpatentable over (various citations)” statements? It almost looks like the examiner just copied your claim, interspersed it with various citations matching some of the claim words, and concluded with “ therefore it would have been obvious to one of ordinary skill in the art…” The patent examiner has just reviewed your patent application and has sent you an office action. Unfortunately, the US patent “obviousness” rules and regulations still have some “bugs.” Teleflex Supreme Court (SCOTUS) decision is why the patent examiner, ignoring hindsight issues, just used your teaching against you to reject your patent application claims as being “unpatentable” (obvious) under 35 USC 103.
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