An obviousness rejection is a determination by a patent examiner that a claimed invention is not patentable because it would have been obvious to combine two or more prior art references together. See Manual of Patent Examining Procedure (MPEP) § 2141.
The Low Bar for Obviousness Rejections
Rejections based on obviousness is a very low bar for the patent examiner to make. The examiner only needs to provide a rational basis for the rejection. According to MPEP § 2141, a rational basis could involve among other things identifying specific teachings, suggestions, or motivations in the prior art that would lead someone skilled in the art to combine elements or modify prior art references in the way claimed. Practically speaking, the basis for combining two prior art references must not be inconsistent with reality.
This low bar makes obviousness rejections one of the most common rejections in patent prosecution.
Strategies for Responding to Obviousness Rejections
When responding to an obviousness rejection, you have two options:
Option 1: Argue Against the Combination
You can argue that the examiner’s reliance on the prior art or their rationale for the combination is flawed. This might involve pointing out that the references cited by the examiner:
- Do not teach or suggest the claimed features.
- Are not combinable due to technical incompatibility.
However, this strategy is often difficult because it requires the examiner to admit an error in their reasoning. It’s very difficult to get someone to admit that they are wrong.
Option 2: Amend the Claims
A more practical and effective approach is to amend the claims by adding a new limitation. The new limitation should:
- Overcome the cited prior art.
- More importantly, not unduly narrow the scope of the claim. Otherwise, competitors can easily design around the claim.
By adding a limitation, you are asking the examiner to make a new decision based on new information, not to admit an error. This strategy often yields better results.
The Challenge of Amending the Claim Language: Broadest Reasonable Interpretation (BRI)
In my point of view, the biggest challenge in amending the claims to overcome the obviousness rejection is trying to figure out how the examiner will interpret the new limitation.
Examiners interpret claims under the broadest reasonable interpretation (BRI) standard during prosecution. This approach often leads to interpretations that are much broader, and thus the claims are still obvious. In contrast, ordinary people interpret claims under the plain and ordinary meaning which is much more narrow, leading laypeople to believe that the claim amendment is sufficient even though it’s not under BRI.
For instance, under BRI, a claim to a “flat table” could be interpreted as including a surface with slight curvature, as there is no such thing as absolutely flat. This broad interpretation often results in rejections based on seemingly unrelated prior art, and a feeling that the examiner doesn’t know what they are talking about.
Understanding the Examiner’s Position
To figure out how the examiner will understand the claim language, it’s useful to reverse-engineer the examiner’s logic:
- Ask yourself: “What assumptions must be made to arrive at the examiner’s conclusion?”
- Once you can answer this, you can prepare a response to the office action. By adopting the examiner’s perspective, you can identify gaps or weaknesses in their rationale and tailor your response accordingly.
Crafting Effective Claim Amendments
The key to successful claim amendments is finding the balance between:
- Narrowing the claim enough to overcome the rejection.
- Avoiding excessive narrowing that would invite competitors to design around your patent.
This requires you to consider how the examiner would interpret the language of the claims and adjust your amendments to address their specific concerns while maintaining the breadth of the claims.
Call to Action
Navigating an obviousness rejection requires strategic thinking and a thorough understanding of patent law. We specialize in helping inventors and businesses respond effectively to office actions, ensuring their innovations are fully protected.
Schedule a consultation today to discuss your specific case, or call us at (949) 433-0900 to take the next step in securing your patent. Together, we’ll craft claims that withstand scrutiny while maintaining a competitive edge.