Campaign: 2100 Patentability

Expand 2145, IV. to explain "Keller," not just quote it.

MPEP 2145, IV (Nov. 2015), at 2100-194, quotes In re Keller without explanation. The Office should expand the discussion to explain to Examiners and Applicants the scope of applicability of Keller.

 

Keller says "[o]ne cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references." 642 F.2d 413, 426. I have seen this quote interpreted to mean that any argument specific to a single reference in a 103 rejection is irrelevant.

 

However, as far as I can tell, in context, Keller has a different thrust. Keller does not invite the Office to disregard an applicant’s arguments. Instead, Keller invites the applicant to argue what the combination of references “would have suggested to one of ordinary skill in the art.” Id. at 426. The contents of individual references are very relevant to what their combination teaches, and MPEP 2145, IV should make this clear.

 

John DeBoer’s post at http://www.patenthawk.com/blog/2010/03/debunking_in_re_keller.html has some language I think would fit well if he were willing to contribute it. I extract and paraphrase from the linked the following proposed text for MPEP 2145, IV:

 

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In Keller, an obviousness rejection was supported by the teachings of two primary references, each one combined with a secondary reference. In response, the Appellant submitted evidence of non-obviousness that consisted only of a single affidavit that was only in regard to the secondary reference. (In re Keller at 422-23)

 

The CCPA affirmed the Board's decision that, under the facts of the case, one cannot show objective evidence of non-obviousness by "attacking references individually" when the rejection is based upon a combination. (Id. at 425-426) In other words, the rebuttal evidence that consisted _only_ of a single affidavit that _only_ attacked the single secondary reference was insufficient evidence of non-obviousness to overcome the rejection over the combination of references.

 

Where none of the references teach or suggest a particular limitation of the claimed invention, Keller does not prohibit showing that each reference, individually, does not teach or suggest that limitation. In this and similar situations, by attacking the references individually, the applicant can show that the combination does not amount to a prima facie case of obviousness. Therefore, form paragraph 7.37.13 (MPEP 707.07(f)) should only be used where the applicant has entirely failed to argue or present evidence of patentability with respect to at least one of the references used in a 103 combination.

 

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(Analysis and conclusions are my own, not those of my employer, Mr. DeBoer, any applicant or patentee, or any other party. I dedicate to the public domain any copyright interest I may have in this post’s contents.)

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Idea No. 193