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.

Details:  

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.