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.

Another reminder to address the combination

Recently I posted here about the need to actually address the combination of references when that's what the Examiner has relied on. The Board made this point again in a mechanical case, Ex parte Albert. (Appeal 2009-0001486; Application 10/616,018; Technology Center 3600.)

One claim was directed to "a plastic control plate of a hydraulic gearbox control device", the plate comprising "at least one channel running through the plastic control plate". The Applicant agreed that the pin-grid-array (the alleged "control plate") in the primary reference Chia was made of plastic. (Brief, p. 6.) But the Applicant argued that adding the secondary reference Lindberg to Chia did not result in a plastic plate with a channel because Lindberg taught that plate was metal rather than plastic. (Brief, p. 7.)

The Board chastised the Applicant for arguing that Lindberg did not teach a plastic plate:

However, the Examiner does not rely on Lindberg to describe a plastic control plate. See Ans. 3. Lindberg was used to describe a channel (Ans. 4), not a plastic plate. Appellants' argument is directed to Lindberg in isolation, rather than in combination with Chia, and thus is not persuasive. Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
(Decision, pp. 10-11.)

Don't forget to address the combination

In dealing with obviousness rejections, my preference is to always argue that the combination of references doesn't teach all the claimed elements. [As long as the facts support this position, of course. If the combination really does teach the claim, then you're left with arguing that the combination isn't obvious – and that's usually an uphill battle.]

In the vast majority of my cases with a claim including elements X and Y, the Examiner relies on one reference for teaching element X and a different reference for teaching Y. That is, the Examiner doesn't usually rely on the combination as teaching a particular element. In such a case, I can make the following logical argument that the claim isn't obvious because X isn't taught:

• Reference #1 doesn't teach X.
• Neither does Reference #2. 
• Therefore the combination doesn't teach X.

This simplistic approach is not appropriate when the Examiner instead relies on the combination for teaching a particular element. For example, suppose my claim includes "a green widget." If the Examiner relies on Reference #1 for teaching a widget, and on Reference #2 for teaching a green wiki, then the allegation is really that the combination teaches "green widget." In such cases, arguing that the Examiner didn't make a prima facie case of obviousness requires you to go farther than the conclusory statement "therefore the combination doesn't teach," and instead to actually explain why the combination doesn't teach.

The BPAI made this point recently in Ex parte Parmelee (Appeal 2008-2907, Application 09/683,943, Technology Center 2400). Rejected claim 1 included a "data store including digital safe deposit accounts stored therein," where "each of the digital safe deposit accounts is associated with at least one private key." The Board noted that the Examiner relied on Wheeler for multiple stored digital accounts with public/private keys, and on Cohen for electronic safe deposit accounts. (Decision, p. 10.) The Board also found that the Examiner provided a compelling motivation for modifying Wheeler's method to use an electronic safe deposit account instead of a digital account. (Decision, p. 10.)

In addition to upholding the rejection, the Board criticized the Applicant for not addressing "the combined teachings as set forth by the Examiner." (Decision, p. 12, emphasis added.) "Repeatedly, Appellants' arguments include a portion of the subject matter relied upon by the secondary reference [Wheeler] in each limitation which is argued to not be taught or suggested by each of the individual references." (Decision, p.12, emphasis added.)

After reviewing the appeal brief, I find I agree with the Board. The closest thing I see to an argument addressing the combination is a statement that neither reference contained a suggestion to combine. [And as I see it, "no suggestion" goes to overcoming prima facie obviousness, not to arguing there is no prima facie obviousness.] There are instead several statements that amount to "neither reference teaches digital safe deposit accounts, where each is associated with at least one private key." (See, e.g, Brief, 2nd para. on p. 17 and last para. on p. 19.)

Ex parte Parmelee is a good reminder to make sure that your arguments truly address the combined teachings when appropriate.