Insufficient Rationale for Rejection under 35 U.S.C. § 103
When an Office Action rejects claims as being obvious under 35 U.S.C. § 103 in view of one or more cited art documents, the Office Action, on occasion, may not
include a proper explanation in support of the rejection. This can sometimes stifle expedient prosecution by requiring Applicant to essentially guess as to the
actual position taken by the Office Action. In such cases, Applicant may request that the Examiner issue another Office Action.
MPEP § 2143 states that “[t]he key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed
invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made
explicit” (emphasis added). According to MPEP § 2143, rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) "Obvious to try" - choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other
market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior
art reference teachings to arrive at the claimed invention.
While the above is not an all-inclusive list, the MPEP requires that some rationale be provided in order to support a conclusion of obviousness. In this case, not
only has the Office Action failed to present one or more of the above-listed rationales, the Office Action has failed to present any type of
rationale. In particular, the rejection lacks a clear articulation of the reasons why these features would allegedly have been obvious and, therefore, the
rejection cannot be supported per the requirements set forth by the United States Supreme Court in the KSR decision. Thus, it is respectfully submitted that
the rejection is improper and must be withdrawn. Further, because the Office Action failed to establish a prima facie case of obviousness, any rejection in
a subsequent Office Action providing adequate reasoning(s) would be presented for the first time on the record, and, as such, a subsequent Office Action cannot be
made final.
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The above example may also be used with additional arguments as to why the cited art does not teach or suggest all of the features recited in the claims. If
additional arguments are not provided, the Examiner may allege that the Response is non-responsive under 37 C.F.R. § 1.111(b). While such an allegation is likely
improper since the Examiner has not technically passed the burden of rebutting the rejection to Applicant by establishing a prima facie case of obviousness,
it may be preferable to present arguments against the cited art in order to avoid such an allegation and to expedite prosecution.