Say Anything: The KSR Obviousness Rejection That Wasn't There

   A common source of frustration for patent prosecutors is the Examiner that cites vague, unreadable applications as prior art.  Sometimes they are poorly written, sometimes just poorly translated, but the effect is that you have to spend time shooting down prior art assertions that are vague, internally inconsistent or completely nonsensical.  The Examiner gets a blank canvas on which he can project all sorts of hindsight-driven combinations of elements, and the Applicant ends up having to do the background work of explaining the prior art reference that the original preparer of it never did just to get to the point where its anticipatory value can be refuted. 

   In short, Providence has gifted the Examiner an open-ended theme to run away with; the Applicant has to do a lot of work to bring him back.  And every attorney knows the danger of giving a hostile party an open-ended question. 

   Which bring us to KSR obviousness rejections.  As we know by now, the Supreme Court holding in KSR states there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). This was thinner than the prior teaching-suggestion-motivation test, and obviousness rejections spiked in the two years following KSR.

   Ten years later, KSR is still a thorn in the side of patent applicants. Ball Aerosol, in 2010, reiterated that the motivation to combine analysis “should be made explicit …” Ball Aerosol v. Limited Brands, 555 F.3d 984 (Fed. Cir. 2009). It was therefore referenced in the 2010 post-KSR Examination Guidelines, which gave a little more guidance in the wake of KSR:

   “The Federal Circuit’s directive in Ball Aerosol was addressed to a lower court, but it applies to Office personnel as well. When setting forth a rejection, Office personnel are to continue to make appropriate findings of fact as explained in MPEP §§2141 and 2143, and must provide a reasoned explanation as to why the invention as claimed would have been obvious to a person of ordinary skill in the art at the time of the invention. This requirement for explanation remains even in situations in which Office personnel may properly rely on intangible realities such as common sense and ordinary ingenuity.”

   So, the motivation to combine analysis must be made explicit by the Examiner.  Still, since the analysis does not have to quote or rely on reasoning articulated in the prior art, how much explicit reasoning the Applicant has, with which to engage, is dependent on how much verbiage the Examiner decides to put into his reasoning.  The reasoning can be vague, abbreviated, lacking in detail.  The reasoning can assume its own obviousness. The reasoning can be pure handwaving.  But solely countering that the reasoning is vague or lacking in articulation is not something you want to rely on to carry an Applicant’s side of the story.

   You have to engage the argument- even when the argument is not there.  This is a problem, unless you turn it into an advantage:  the Examiner has given you an open-ended question to run with.  Now you get to frame the argument that you are going to refute.

   To give an example: Picture an application where a device would operate by responding to reading and recognizing on-going patterns of user input.  The recognizable patterns and corresponding responses were stored in a digital memory and matched by a microprocessor.  The Examiner made a post-KSR obviousness argument in which he combined “Smith”, a device in the same field that was operated entirely by direct analog controls, with “Jones”, a somewhat dissimilar device that used digitally stored push-button responses.

   You can see where this is going: why would a direct-control analog device need or want to store pre-programmed response patterns in a memory?  The Examiner argues that: “It would have been obvious to one of ordinary skill in the art to have incorporated a memory for storing varying modes of operation as taught by Jones in a device for providing variable responses as suggested by Smith as such a memory would allow reproduction of variable control responses for the user.”

   Now, this is just a convoluted way of saying “Smith already functions as is, but it is probably possible to recreate Smith from scratch using some parts from Jones.”  There is no motivation expressed by the Examiner to argue against.  Asking for clarification and hoping for the best is likely to garner you a final rejection based on your non-responsive amendment.  You have to, first, respond by stating that the Examiner has not articulated a reason with rational underpinning to support the combination.  But you are also going to need to demonstrate that the Examiner hasn’t articulated a sensible motive to combine. You will want to re-state the Examiner’s argument before you can refute it.  And you get to do that however you like.

   In this case, the Examiner’s motivation to combine could be reframed in two ways: first, as a reason to combine that is articulate but not rational, and second as a reason to combine that is rational but derived via impermissible hindsight.  My response is along the following lines: “It is not explained in the Examiner’s reasoning why the disclosure of Smith would need to be combined with the disclosure of Jones in order to allow reproduction of variable control responses for the user.  If the Examiner intends to argue that Smith alone does not allow reproduction of variable control responses for the user, the Examiner should make that argument.”  The first re-framing.  “If the Examiner intends to argue that Smith should use the methods of Jones rather than its own methods, then it seems clear that the motivation for doing so could only come from starting with a new invention and reasoning backwards to arrive at the combination. Such hindsight reasoning is still impermissible, even in the wake of KSR v. Teleflex.”  The second re-framing.

   I have seen variations of this where an applicant’s claim includes two instances of an element, each with a separate purpose- a vehicle with a drive motor and winch motor, for example.  An Examiner will add a second motor to a prior art reference that has one motor, under color of reasoning that amounts to saying that a second motor will make the first reference “more motor-y”, so to speak.  A two-part re-framing of the sort explained in the previous paragraph works here, as well.

   Remember, the Examiner is pulling arguments somewhat by rote out of the Examiner’s manual. Don’t respond to just one possible interpretation of the reason to combine, because he can just switch to the other one. 

   This approach is argumentative and you may want to try an interview with the Examiner first.  But, if the cooperative approach is not working, you will be showing the Examiner that you are preparing your arguments for appeal.  Coming up with a third interpretation of his obviousness argument, and then explaining to the Appeals Board why he did not articulate it that way in the first place, is not something that he will want to have to do.

   Of course, you must apply the other approaches in your rebuttal – lack of prima facie case due to missing claim elements, objective indicia of non-obviousness, and so forth.  And, for the examples I gave above, MPEP 2143.01(V, In re Dance) and MPEP 2143.01(VI, In re Ratti) can be used to rebut the Examiner who continues to pursue the “more motor-y” path.  But, if faced with a post-KSR motivation to combine argument that does not articulate enough reasoning to even begin, the two-pronged re-statement can give you a strong place to start.