Tuesday, November 12, 2013

Losing obviousness arguments: no Graham factors, no TSM, no articulated reasoning

Summary: When fighting an obviousness rejection, some Applicants argue the "formalities" of the rejection instead of, or in addition to, the merits of the rejection. The argument most readily identifiable as aimed at formalities and avoiding the merits is the argument that the Examiner failed to comply with Graham v. Deere, which requires an obviousness analysis to include specific factual findings. Another common argument is that the Examiner failed to provide "articulated reasoning with some rational underpinning." If offered without further explanation that deals with the merits of the rejection, this conclusory argument can be viewed as merely arguing the formalities. Finally, another common argument against obviousness is that the references do not include a suggestion or motivation to combine. Once again, if offered without explanation, I consider this a formalities argument. The real problem with this last argument, however, is that's it's simply wrong: KSR makes it clear that the rationale for combining does not have to come from the references themselves.

The cases covered in today's post show that the PTAB isn't easily persuaded by any of these arguments. The Board usually finds that the Examiner, in laying out the rejection, implicitly made the underlying factual findings required by Graham. This strongly suggests that there is no requirement for the Examiner to specifically refer to them as Graham factors. The Board also usually finds that the Examiner did "articulate" a rationale for combining references and that the rationale does have a "rational underpinning." Finally, even if the Examiner relies on a specific statement in a reference as a rationale, if there is anything at all in the record that suggests an alternative rationale (substitution, predictable results, etc.) the Board will often affirm.


Ex parte Foster (PTAB 2010) illustrates a typical "Graham factors" argument against obviousness. On appeal, the Applicant argued that "[t]he Office Action must make explicit an analysis of the factual inquiries set out in Graham" and that the rejection was in error because "the Office Action does not even mention the factual inquiries set forth in Graham." 

The Board was not persuaded, and explained why:
The Examiner found that either Li or Wang discloses all the limitations of claim 2 except a flat heat pipe, and that Quisenberry discloses a flat heat pipe. Ans. 5-6. As such, the Examiner made findings as to the scope and content of the prior art and differences between the prior art and the claimed invention under Graham. Though the Examiner did not make a specific finding regarding the level of skill in the art, Appellants have not argued that the proposed modification was beyond the level of skill in the art (Br. passim), and we consider the prior art to be reflective of the level of skill in the art. Against this background, the Examiner determined the obviousness of claim 2.4 Ans. 6. Hence, contrary to Appellants’ assertion, the Examiner analyzed claim 2 in light of the factual inquiries set forth in Graham.
In Ex parte Holloway (PTAB 2011), the Board tore apart the Applicant's Graham factors argument, by pointing to specific statements in the Examiner's Answer that corresponded to Graham factors. The obviousness rejection was fairly typical, consisting of an assertion that the primary reference disclosed a particular element, followed by other assertions about how teachings in the remaining references related to other claim elements. In explaining the rationale for combining, the Examiner made this statement:
Once it was known to provide such markings, the particular information one chooses to convey by using markings is seen to have been an obvious matter of choice. The purpose of markings or indicia is to convey information. It is not seen that patentability can be predicated on the type of information one chooses to convey through markings or indicia; especially when, as shown by the art taken as a whole, the information was known and thus conventional.
(Emphasis added.)
In the Reply Brief, the Applicant characterized the statement quoted above as one showing that the Examiner used his own subjective standard, rather than the objective analysis required by Graham.

The Board disagreed, and found that the Examiner performed a proper obviousness analysis.
     Indeed, the Examiner assessed the scope of the admitted and applied prior art, finding that Paravano and Liger [disclose] containers having markings which respectively represent the volume of alcoholic beverage ... dispensed as well as the alcohol content of that volume. Ans. 4-5. The Examiner further finds that each of Velho, Davis, Prieto,Manaka, Dor, Rhee, Pauli, and Christiaens [disclose] that it was known in the art to mark containers to convey information with respect to ... the character of the dispensed volume with respect to alcoholic beverages and other ingestible compositions. Ans. 5-6. ... It is apparent that the Examiner further factually determined the difference between ... representative claim 1, and the level of ordinary skill in the art as reflected in the admitted and applied prior art. Ans. 4-6.
     Thus, the Examiner applied the Graham factors in reaching the determination that it would have been obvious to one of ordinary skill in the art to mark an alcoholic beverage container to indicate the volume thereof which represents a “standard drink,” and thus, the number of drinks based on that “standard” which remain in the container as well as the number of such “standard” drinks dispensed to a consumer. Ans. 6-7; see also Ans. 7-8.
Ex parte Brown (PTAB 2009) is another case illustrating a losing Graham factors argument. Here's the Board summarizing the Applicant's argument:
Appellants also contend that … the Examiner fails to address "all of the Graham factors to establish the required background for an obviousness rejection" and also "fails to apply all four Graham factors to establish the necessary background elements for determining obviousness" (App.Br. 14); [and] “In the complete absence of any mention or consideration of the Graham factors, the Final Office Action cannot support an obviousness rejection." (App. Br. 15)
And here's the Board explaining how the rejection did indeed comply with Graham:
In the instant case, we find that the Examiner does use the Graham factors to ascertain the scope of Bottom such that Bottom does not explicitly disclose a BIOS program in each server (Ans. 12-13). We also find that the Examiner ascertains the scope of AAPA and the difference between AAPA and the claimed subject matter of the present invention, i.e., "BIOS is well known to persons of skill in the design and use of information handling systems of the general types here described" and a similar BIOS program is employed in the present invention (Ans. 13, FF7). We further find that the Examiner resolves the level of skill in the art such that it would have been obvious to one having ordinary skill in the art at the time the invention was made to combine the teaching of the BIOS in AAPA into the server of Bottom to detect and signal occurrences of events affecting the respective server since the BIOS was conventionally used to test hardware at startup, to start an operating system, and to support data transfer among hardware devices (Ans. 13).
The obviousness rejection in Ex parte Slovisky (PTAB 2011) relied on a single reference in view of Office Notice that "it was known in the art to angle injection passages that feed the gas path." The Examiner even provided an additional reference as evidence of angled injection passages. The Applicant argued that the Examiner's reasoning was conclusory and thus failed to comply with KSR or any of the obviousness rationales listed in the MPEP.

The Board said this argument missed the point:
In arguing that the Examiner's conclusion of obviousness is "conclusory," Appellants do not particularly set forth which factual findings they believe the Examiner erred in making or why. Appeal Br. 15-16. While Appellants argue that the Examiner has not made factual findings with respect to the claimed angles (see Issue lb), the Examiner's analysis is not premised on a finding that prior art discloses the claimed angles but rather a conclusion that the prior art disclosures render the claimed angles obvious. "[W]hile an analysis of obviousness always depends on evidence . . . it also may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference." Perfect Web Tech., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). As such, the proper inquiry is whether the Examiner's conclusion of obviousness is reasonable and based on rational underpinning, not whether the Examiner's rejection fits within any of the enumerated rationales in the Manual of Patenting Examining Procedure (MPEP) as argued by Appellants (Appeal Br. 16-17). See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring "some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.") (cited with approval in KSR, 550 U.S. at 418) (rejecting rigid rules that limit the obviousness inquiry). Appellants' arguments with respect to the rationales not used by the Examiner (Appeal Br. 16-17) are not persuasive because they do not tend to show error in the Examiner's articulated rejection. 
Finally, Ex parte Rothschild (PTAB 2012) is a reminder from the Board that strict adherence to the Teaching, Suggestion, Motivation (TSM) test is not required under KSR:
Appellant argues that (1) there is “no teaching, suggestion, or motivation in either Walker or Steeg to combine the references” ... [T]he Examiner did not apply the “teaching, suggestion, or motivation” test; rather, the Examiner applied the Adams test of simple substitution of one known element for another to yield no more than a predictable result (Ans. 4); see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (citing U.S. v. Adams, 383 U.S. 39, 40 (1966) for this proposition).
Conclusion: While it can be challenging to fight an obviousness rejection that is sparse or hard to understand, Applicants are more successful when addressing the merits of the rejection and rebutting the Examiner's findings and/or rationale, rather than attacking the rejection itself in order to avoid the merits.

Many patent prosecutors are wary of putting any more on the record than in absolutely necessary to get allowed claims. So you might be tempted to argue formalities, without reaching the merits, if you feel that the Examiner didn't fully comply with the law.

If so, you're betting the farm that the Board say that the Examiner didn't follow the rules. If the Examiner literally didn't provide a rationale for combining, the Board may indeed reverse the rejection. (See my post BPAI reverses when Examiner fails to give any reason whatsoever to combine.)

But the cases in this post show that a typical obviousness rejection – assertions about references followed by a statement of rationale – is enough for the Board to find the Examiner complied with Graham v Deere. And even a sloppy ratonale can lead to an affirmance if left unrebutted by the Applicant.

A final note: Some of the cases discussed in this post are several years old. But they're consistent with more recent cases. 


  1. Not much to see here. Sparse arguments rarely overcome sparse rejections. It just goes to show that the level of representation of clients oftentimes is not much better than the level of examination.

    What I find amusing is that the PTAB will ignore a good argument on the merits if it is poorly written yet will prop up a bad rejection by the Examiner if at all possible.

    Then again, whether or not a particular argument will fly with the PTAB is HIGHLY DEPENDENT upon the APJ you get.

    None of the arguments you identified are "bad arguments" per se. They just need to be properly supported and explained. Also, bad facts will usually get you an affirmance no matter how good your arguments.

    Finally, some clients will go to appeal (even if there is <10% chance of prevailing) because they really want the patent. In those situations, you are stuck making lousy arguments because they are all you have.

  2. >None of the arguments you identified are "bad arguments" per se.

    "Examiner didn't articulate his rationale" isn't necessary a bad argument -- if the Examiner truly didn't articulate his rationale. But in the vast majority of rejections, the Examiner did articulate a rationale.

    >They just need to be properly supported and explained
    Theoretically, I suppose that's true. But I just don't come across many scenarios where you could explain how the Examiner didn't articulate a rationale, since the scenarios I see almost always involve some sort of rationale that the Examiner put in the record.

    Nothing wrong with arguing against the rationale proferred by the Examiner. That can be a good argument if you rebut the Examiners particular findings. The Applicants here didn't do that.

    So, I maintain that the arguments made by Applicants in these particular cases were bad/weak, because the Examiner *did* articulate a rationale and did make factual findings, and the Applicants argument was that he didn't.

  3. But I just don't come across many scenarios where you could explain how the Examiner didn't articulate a rationale
    There is a difference between articulating a reasoning and articulating a reasoning with some rational underpinning Don't mix up your terminology. The articulated "reasoning" could be anything. The key question, however, is whether or not that reasoning is based upon a rational underpinning. The statement that it would have been obvious to modify A in view of B because the sky is blue includes an articulated reasoning (i.e., "the sky is blue"). However, you can argue that "the sky is blue" does not present a rational underpinning for the modification.

    As another example, the Examiner might write "it would have been obvious to modify A in view of B because B would improve the efficiency of A." Sounds like a much better reasoning. However, you can still attack this on the basis that the Examiner has provided no evidence that B would improve the efficiency of A. For example, B's stated efficiency increase is based upon a comparison of B to something very different from A or B's stated efficiency increase is based upon replacing Y part which does not exist in A.

    Just because the Examiner articulated a reasoning doesn't mean that it cannot be attacked.

    1. >difference between articulating a reasoning and
      >articulating a reasoning with some
      >rational underpinning
      >Don't mix up your terminology.

      Good point. I was a bit sloppy there.

      Agreed that "the sky is blue" is articulated but not rational. And you'd have a good chance of winning if you attacked on this basis. So perhaps that is one case where you really could argue that the Examiner's rationale is not rational, and you wouldn't have to do much more than make that assertion.

      In most cases I see, the rationale isn't quite so irrational, so you need more than a naked assertion that it's not rational, you need some sort of explanation.

      >because B would improve the efficiency of A.

      Agreed that this rings higher on the rationality meter. And I would attack along the lines you suggest.

      If the Examiner really did make this statement without pointing to *something* in the reference that talks about efficiency, then I might limit my argument to "Examiner didn't provide evidence". Unless the entire record suggested that the Examiner relied on something else to fill in the gap here ("common sense", "creative inferences", etc.) -- in which case I'd try to deal with whatever the Examiner was relying on.

      If the Examiner cited to something in the reference, I'd definitely go farther and explain why that statement was deficient. As you did in your example.

      In such a case, there *is* evidence, the two sides just disagree about what the evidence means. The fact-finder gets to decide who's right.

  4. Just because the PTAB says that the Examiner met the Graham requirements does not mean that the Federal Circuit won't slap the PTAB silly in its own opinion. However, why let it get that far if you can nip it in the bud.

    1. "...does not mean that the Federal Circuit won't slap the PTAB silly in its own opinion."

      Yes, but how often does that happen? Not very often. If whoever writes the Board opinion is smart enough to make explicit the examiner's "implicit" factual findings, then the Federal Circuit is working with the "substantial evidence" standard. Good luck getting reversal.

    2. If whoever writes the Board opinion is smart enough to make explicit the examiner's "implicit" factual findings, then the Federal Circuit is working with the "substantial evidence" standard.
      Have you seen PTAB decisions these days? They are pretty skimpy.

    3. They really are skimpy. The last of my cases to come back included the board making their own "implicit" findings, if they made any at all. It's difficult to say since they neglected to make any findings at all.

  5. When is a rational based on "logic, judgment, and common sense" and when is based on improper hindsight? What if the rational used for combining the references is only found in the pending application? How about when the rational is not expressed in either the prior art or the application?

    1. >When is a rational based on "logic, judgment, and common sense"

      Good question. We don't have a lot of guidance from the Fed Cir about what the limits are on this.

      KSR first introduced the "common sense" language, holding that an invention was likely to be "common sense" when "design need or market pressure to solve a problem" exists as well as "a finite number of identified, predictable solutions."

      Perfect Web v InfoUSA was next to use this ratoinale, affirming because "the claim as a whole, simply recites repetition of a known procedure until success is achieved," which was merely common sense.

      Wyers v Master Lock (Fed Cir 2009) affirmed on the basis of common sense: "It is simply a matter of common sense that the sleeve used in Down, in a towing attachment quite similar to a hitch receiver/tow bar arrangement, could be combined with a barbell-shaped hitch pin lock in order to address the known problem of different aperture sizes in standard hitch receivers and the shelf-space problem experienced by retailers." But in that case, the reference did teach the sleeve and it looked like more of a substitution rationale. I didn't really see the need to resort to common sense in Wyers.

      Trimed v Strkyer (Fed Cir 2010) reversed, finding that the District Court's record did not explain *why* "replacing a cast normally used to stabilize a pin with a subcutaneous metal plate to be a logical, commonsense solution" to the known problem.

      Certainly this rationale is one that can be easily abused by the fact finder. Trimed cautioned against this: "Merely saying that an invention is a logical, commonsense solution to a known problem does not make it so."

      But how do you convince the Board of this?