1
United States Patent & Trademark Office
FORMULATING AND COMMUNICATING REJECTIONS
UNDER 35 U.S.C. 103 FOR APPLICATIONS DIRECTED TO
COMPUTER-IMPLEMENTED BUSINESS METHOD INVENTIONS
- Introduction...... 3
- The Basic Factual Inquiries...... 3
A. The Graham inquires...... 3
B. Gathering the facts...... 4
1. Determining where to search and what to search...... 4
a. What to search for...... 4
b. Where to search...... 5
2. Determining whether art found during the search qualifies as “prior art” under 35 U.S.C. 102 6
a. Documentary information...... 6
b. Non-documentary information...... 6
3. Determining the relevancy of each piece or prior art to the claimed subject matter...... 7
III.The Legal Conclusion of Obviousness...... 7
A. Evaluation of prima facie obviousness...... 7
B. Rebuttal of the prima facie case...... 8
C. The final legal conclusion...... 9
IV.Communicating the Rationale for a Proper Rejection under 35 U.S.C. 103...... 9
A. Examples of express or implied rationale statements from a reference...... 10
Example 1: Rationale expressly contained in a reference...... 10
Example 2: Rationale expressly contained in a reference...... 12
Example 3: Rationale implicitly contained in a reference...... 13
Example 4: Rationale implicitly contained in a reference...... 15
B. Examples of rationale statements logically reasoned from sources other than a reference.....16
Example 5: Rationale reasoned from common knowledge in the art...... 16
Example 6: Rationale reasoned from an established business principle...... 17
Example 7: Rationale reasoned from established business principle...... 19
Example 8: Rationale reasoned from legal precedent - automation of a known manual process20
Example 9: Rationale reasoned from legal precedent - automation of a known manual process on the Internet 22
Example 10: Rationale reasoned from legal precedent - automation of a known manual process and performed on the Internet 24
Example 11: Rationale reasoned from official notice...... 26
Example 12: Rationale reasoned from the difference is the data being stored (article of manufacture) 28
Example 13: Rationale reasoned from data being processed (machine)...... 29
Example 14: Known system/machine with computer program (patentable/unpatentable)....30
Example 15: Rationale reasoned from art-recognized equivalents...... 33
Example 16: Rationale reasoned from the level of skill in the art...... 34
V. Examples of Improper Rejection under 35 U.S.C. 103
Example 17: Improper rejection based upon hindsight - general motivation statement...... 36
Example 18: Improper rejection based upon hindsight - proposed motivation contrary to the stated purpose of the reference 37
Example 19: Improper rejection based upon hindsight - proposed motivation not directed to the claim differences 39
Footnotes...... 40
I. Introduction
The U. S. Patent & Trademark Office (USPTO) examines patent applications to determine whether the statutory conditions of patentability have been satisfied. The primary duty of the patent examiner is to perform a search of the relevant prior art and determine if the claimed subject matter is patentable.
As is the case for inventions in any field of technology, patentability determination under 35 U.S.C. 102 and 103 of a claimed computer-implemented business method invention begins with a comparison of the claimed subject matter to what is known in the prior art. If no differences are found between the claimed invention and the prior art, the corresponding claims are rejected under 35 U.S.C. 102 as lacking novelty. If the prior art does not identically disclose the claimed invention but would have suggested the claimed invention to one of ordinary skill in the art, the corresponding claims are rejected as being unpatentable under 35 U.S.C. 103.
Patent examiners carry the responsibility of making sure that the standard of patentability enunciated by the Supreme Court in Graham v. John Deere[1] is applied in each and every case. The four factual inquiries to determine obviousness enunciated by the Supreme Court in Graham are (1) determine the scope and contents of the prior art, (2) ascertain the differences between the prior art and the claims in issue, (3) resolve the level of ordinary skill in the pertinent art, and (4) evaluate evidence of secondary considerations.
The examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness. If the examiner does not produce a prima facie case, the applicant is under no obligation to submit evidence of nonobviousness. If, however, the examiner does produce a prima facie case, the burden of coming forward with evidence or arguments shifts to the applicant who may submit additional evidence that the claimed invention possesses improved properties not expected by the prior art. The initial evaluation of prima facie obviousness thus relieves both the examiner and applicant from evaluating evidence beyond the prior art and the evidence in the specification as filed until a case has been made that the prior art would have suggested the claimed invention to one of ordinary skill in the pertinent art.
This paper discusses the evaluation of obviousness in the USPTO. The procedure for gathering and evaluating the relevant evidence is the subject of Part II, and the analysis of that evidence is the subject of Part III. Communication of a rejection in the written Office action, including representative examples involving business methods, is the subject of Part IV.
II. The Basic Factual Inquiries
- The Graham inquires
The basic factual inquires guiding the search and evaluation of the prior art were outlined in 1966 by the Supreme Court in Graham v. John Deere as follows:
(1) Determining the scope and content of the prior art;
(2) Ascertaining the differences between the prior art and the claims in issue;
(3) Resolving the level of ordinary skill in the pertinent art; and
(4) Evaluating any objective evidence of nonobviousness (i.e., so-called "secondary considerations").
The examiner first determines the most probable field of search for the invention as claimed and described in the specification of the patent application. The most probable field of search includes the same field of applicant’s endeavor as well as analogous areas. The examiner must also determine the content of the prior art. The content of the prior art is determined at the time the invention was made to avoid hindsight.[2] These inquiries determine the scope and content of the prior art. Second, the examiner determines the differences between the prior art and the claim(s). Ascertaining the differences between the prior art and the claims requires interpreting the claim language and considering both the claimed invention and the prior art reference as a whole.[3] Third, the examiner determines the level of ordinary skill in the art. Factors that may be considered in determining level of ordinary skill in the art include (1) the educational level of the inventor, (2) type of problems encountered in the art, (3) prior art solutions to those problems, (4) rapidity with which innovations are made, (5) sophistication of the technology, and (6) educational level of active workers in the field. [4]
B. Gathering the Facts
The basic factual inquiries outlined in Graham are normally carried out by:
(1) Determining where to search and what to search for;
(2) Determining whether art found during the search qualifies as “prior art;”
(3) Determining the relevancy of each piece of prior art to the claimed subject matter. (i.e., which piece of art is closest to the claimed invention, what are the differences between the closest prior art reference and the claims, and where are the individual differences shown in the prior art).
This procedure is discussed in detail in the following sections.
1. Determining where to search and what to search for.
The question asked by 35 U.S.C. 103 is whether the “subject matter as a whole” would have been obvious at the time of the invention. In determining where to search and what to search for, the examiner must consider the invention “as a whole.”
a. What to search for:
The scope of the claimed invention must be clearly determined prior to searching. During patent examination, the claims are given the broadest reasonable interpretation consistent with the specification.[5] The search should not be limited only to the literal elements set forth in the claims. The search should, insofar as possible, also cover all subject matter which the examiner reasonably anticipates might be incorporated into applicant’s amendment. The initial search should be sufficiently complete such that only an update search is needed in the second action, unless necessitated by amendments to the claims by the applicant in reply to the first Office action.
b. Where to search:
In the examination of an application for patent, an examiner must conduct a thorough search of the prior art. Planning a thorough search of the prior art requires three distinct steps by the examiner: (1) identifying the field of search; (2) selecting the proper tool(s) to perform the search; and (3) determining the appropriate search strategy for each search tool selected.
When determining the field of search, three reference sources must be considered – domestic patents, foreign patent documents, and nonpatent literature (NPL). None of these sources can be eliminated from the search unless the examiner has and can justify a reasonable certainty that no references, more pertinent than those already identified, are likely to be found in the sources(s) eliminated. The field of search should be prioritized, starting with the area(s) where the invention would most likely be found in the prior art. The highest probability of finding the closest prior art reference is in the same “field of endeavor” as the claimed invention. This is the basic search area which contains the largest number of claimed elements found in combination. Differences not found in the inventor’s field of endeavor are then searched in, analogous arts, i.e., those which address the same or a similar problem with which the inventor was involved.[6]
Having determined the field of search, the examiner should then determine what search tools should be employed in conducting the search. Examiners are provided access to a wide variety of both manual and automated search tools. Choice of search tools is a key factor in ensuring that the most relevant prior art is found during the search. The choice of search tools to be used is based on the examiner’s knowledge of the coverage, strengths and weaknesses of the available search tools that are appropriate for use in an examiner’s assigned art. Search tool knowledge is particularly important for examiners in arts (e.g., very active, high technology) where patent documents may seriously lag invention and, consequently, represent a reference source of limited value. These examiners must take special care to ensure that their searches include consideration of NPL and employ the effective use of tools specialized to cover NPL pertinent to their search needs.
Having determined what search tool(s) should be used to conduct the search, the examiner should then determine the appropriate search strategy for each search tool selected. The appropriate search strategy should be determined by the examiner on a case-by-case basis along with consultation with other examiners and/or supervisory patent examiners, where appropriate.
2. Determining whether art found during the search qualifies as “prior art” under 35 U.S.C. 102.
Art found during the search must qualify as “prior art” as defined by 35 U.S.C. 102 before it can be used to reject a claimed invention. This involves determination of when art became public, who was the source of the art (e.g., the inventor or another party), and whether the art satisfies the enablement provision of 35 U.S.C. 112, first paragraph. Subject matter that is prior art under 35 U.S.C. 102 can be used to support a rejection under 35 U.S.C. 103.
Prior art typically includes documentary information in published form and certain types of non-documentary information, as discussed below.
a. Documentary information
Publicly available documents, such as issued patents and printed publications, are most commonly used in prior art rejections. A reference is a “printed publication” if it is accessible to the public. Printed documents usually have specific publication dates that make it easy to objectively determine if they qualify as prior art under 35 U.S.C. 102.
An electronic publication, including an on-line database or Internet publication, is considered to be a “printed publication” within the meaning of 35 U.S.C. 102(a) and (b) provided the publication was accessible to persons concerned with the art to which the document relates.[7]
b. Non-documentary information
Publicly available information in non-published form may also qualify as prior art. Common examples include admissions by the applicant, well-known scientific principles, or common knowledge in the art.
(i) Admissions
Statements made in the specification or in other papers submitted during prosecution that certain information was known to the applicant prior to the date of invention constitutes prior art. An admission of prior art can be used for any purpose, including rejections under 35 U.S.C. 103.[8] It is not necessary to cite a corroborating reference to support the admission. However, the applicant may later assert that a statement was not actually intended as an admission of prior art, or that the intended scope of a statement was different than the interpretation given it by the examiner. Such problems can be minimized if the examiner routinely requests the applicant to submit any supporting documents pertinent to an admission of prior art.
(ii) Common/prior knowledge in the art
Prior art includes all public knowledge demonstrating the level of ordinary skill in the art. The examiner may take official notice of facts outside of the record which are capable of instant and unquestionable demonstration as being "well known in the art.”[9] While an examiner may reject a claim based on common/prior knowledge in the art, this practice is to be applied sparingly. It is always incumbent upon the examiner to find a reference to support a rejection. If the applicant traverses such an assertion the examiner should cite a reference in support of his or her position. When a rejection is based on facts within the personal knowledge of the examiner, the data should be stated as specifically as possible, and the facts must be supported, when called for by the applicant, by an affidavit from the examiner. Such an affidavit is subject to contradiction or explanation by the affidavits of the applicant and other persons. See 37 CFR 1.104(d)(2).
If applicant does not seasonably traverse the well known statement during examination, then the object of the well known statement is taken to be admitted prior art.[10]
3. Determining the relevancy of each piece of prior art to the claimed subject matter.
The examiner continually evaluates art found during the search to determine which art is closest to the claimed invention, whether the prior art shows all differences not shown by the closest prior art and whether the art suggests combining individual teachings.
III. The Legal Conclusion of Obviousness
A. Evaluation of prima facie obviousness
To establish a prima facie case of obviousness, three basic criteria must be met. First, there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings.[11] Second, there must be a reasonable expectation of success.[12] Finally, the prior art reference (or references when combined) must teach or suggest all the claim limitations.[13]
The initial burden is on the examiner to provide some suggestion of the desirability of doing what the applicant has done. To support the conclusion that the claimed invention is directed to obvious subject matter, either the references must expressly or impliedly suggest the claimed invention or the examiner must present a convincing line of reasoning as to why the artisan would have found the claimed invention to have been obvious in light of the teachings of the references.[14] Both the suggestion to make the claimed combination and the reasonable expectation of success must be founded in the prior art and not in applicant’s disclosure.[15]
The reason or motivation to combine may often suggest doing what the applicant has done, but for a different purpose or to solve a different problem than that asserted by the applicant. It is not necessary in order to establish prima facie obviousness that the prior art suggest their combination to achieve the same advantage or result discovered by the applicant.[16]
The supporting rationale for combining the prior art may also be based on legal precedent.[17] If the facts in a prior legal decision are sufficiently similar to those in an application under examination, the examiner may rely upon the rationale used by the court. The courts have held that certain common practices, such as simple changes of size, shape or color of an article or reversal of mechanical parts in an apparatus, normally require only ordinary skill in the art and hence are considered routine expedients.[18] Reliance on prior case law is appropriate only when a common factual basis has been established. If an applicant has demonstrated the criticality of a specific limitation, it would not be appropriate to rely solely on prior case law to support an obviousness rejection.
B. Rebuttal of the prima facie case
Once a prima facie case of obviousness has been established, the burden shifts to the applicant to come forward with evidence to rebut the prima facie case.[19] This evidence is generally of two types: (1) evidence of unexpected or nonobvious properties or advantages as compared with the closest prior art; and (2) evidence of real world activities, such as commercial success of the invention or providing a solution to a long-felt need in the art. Arguments by applicant are not evidence.[20]
Evidence of advantages or unexpected results produced by the invention may be established by affidavit or declaration under 37 CFR 1.132[21] or may be submitted in unsworn form in the written description or in a reply to a rejection. Such evidence is typically in the form of “comparative examples” demonstrating that the invention produced properties not possessed by the prior art.[22] In considering evidence of nonobviousness, it is well settled that advantages or unexpected results must be established by factual evidence. Mere arguments or conclusory statements are not factual evidence. When superior or unexpected results are asserted, these results must logically be shown as superior compared to the results achieved by other devices, methods, etc., as described in the closest prior art.