Sunday, March 21, 2010

How to respond when the Examiner says "cannot show nonobviousness by attacking references individually"

In my practice, the most common type of § 103 rejection is one in which the Examiner alleges that specific elements are taught by Reference #1, and other elements are taught by Reference #2. In response to this type of rejection, I argue by explaining why each of those references does not teach what the Examiner alleges.

In such a case, I don't "argue the combination" because the Examiner hasn't relied on the combination to teach any particular element. In the situation I'm describing, the Examiner has instead relied on the combination only for combining individual elements, each of which is allegedly taught by a single reference. [See my previous posts (here and here) about a less common type of rejection in which the Examiner does actually rely on the combination for teaching a particular element.]

When I write a response like this, I almost always see boilerplate from the Examiner that says:
One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). 
I usually ignore this rejoinder. I tried a few times to explain that I'm only attacking the references "individually" because that's how the Examiner used them. But that didn't get anywhere, so now I don't bother, except maybe in an Appeal Brief.

Up to now, I haven't seen see this issue — how to deal with "can't attack individually" — discussed elsewhere. But I found a new post (here) at The Patent Prospector blog that does.

The Patent Prospector guest post, written by John M. DeBoer, agrees with my basic position — that you don't need to address the combination unless the Examiner actually relies on it. Better yet, John goes farther, explaining that In re Keller is applicable only to a specific fact situation, and is not applicable to the general case as used by many Examiners. If you spend a lot of your time doing prosecution, you should read John's Patent Prospector post. The comment thread for that post is worth reading too.


  1. I really like your ideas. I truly appreciate your effort in publishing this article. Keep it up and God bless.

  2. Hi, any updated link to Mr. DeBoer's blog posting? I am getting a 404 error. Thanks much!