Secondary considerations of nonobviousness

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Is your examiner repeatedly insisting that your patent application claims are obvious?  One option: “reboot” your examiner by submitting at least one Rule 132 declaration providing “secondary considerations of nonobviousness”.

 Obviousness rejections are needed to prevent trivial patents.  Obviousness is legally determined by considering if the invention would be obvious from the standpoint of an imaginary Person Having Ordinary Skill In The Art (PHOSITA). This is ultimately just legal guesswork, and as previously discussed, such determinations are often unduly influenced by hindsight bias.

There is an alternative mechanism. The patent legal system also allows applicants to rebut obviousness rejections by submitting “objective indicia of nonobviousness”, which we will call “outside evidence”. This outside evidence can include unexpected results, commercial success, long-unsolved needs, failure of others, professional approval, skepticism of experts, and the like.

Although allowed, such outside evidence has a rather second-class status.  You can even see this in the terminology: “secondary considerations of nonobviousness”.  The patent legal system actually prefers its imaginary PHOSITA reasoning over actual real-world evidence! Sounds silly, but remember that they are skeptical because applicants are constantly trying to game the system.

Submission of outside evidence is not done often.  You might think that with the 2007 KSR removal of anti-hindsight rules, it would be more frequently used, but it isn’t. However, in my opinion, it is a useful “in an emergency, break glass” kind of tool.  You use it when you want to try to break the examiner out of a mental “rut”, or even a mental “infinite loop” of obviousness rejections.

When to use it?  Obviousness rejections are routine.  It usually takes at least two office actions to see if the examiner is showing signs of having a non-negotiable “I still think it’s obvious” position.  If this seems to be the case, outside evidence can potentially be used to try to “reboot” the examiner and break out of the loop. This is because according to the USPTO examination rules MPEP 716.01(d)   Weighing Objective Evidence…“When an applicant timely submits [outside] evidence traversing a rejection, the examiner must reconsider the patentability of the claimed invention.”

Outside evidence is submitted as various “Rule 132 declarations”.  Here the identity and the credentials of an outside declarant (someone other than the attorney, and preferably other than the applicant) are presented, the relevant outside facts are given, and the declaration is signed by the declarant. It is important to try to find credible individuals for this and to submit the best evidence available.

Due to USPTO concerns that the outside evidence is unreliable, this is not a sure tactic.  The rules state that there must be a “clear nexus” between the outside evidence and the invention’s claims. The examiner may rebut by arguing that no such clear nexus exists, proposing alternative explanations, and/or looking for other ways to discount the declaration.  Still, if you do have good evidence, why not use it?

Obviousness, hindsight, KSR

Training the human neural network: by Novasdid (CC BY-SA 4.0)

The 2007 KSR v. Teleflex Supreme Court (SCOTUS) decision is why the patent examiner, ignoring hindsight issues, just used your own teaching against you to reject your patent application claims as being “unpatentable” (obvious) under 35 USC 103.  Unfortunately, the US patent “obviousness” rules and regulations still have some “bugs”. 

The patent examiner has just reviewed your patent application, and has sent you a response. What are all these “rejected under 35 USC 103 as being unpatentable over (various citations)” statements? It almost looks like the examiner just copied your claim, interspersed it with various citations matching some of the claim words, and concluded with “therefore it would have been obvious to one of ordinary skill in the art…

This might even look to you like a standard formula that could be used to reject almost anything. Why does the USPTO work this way?

Some background: Without obviousness rejections, your patent could soon be swamped by many other competitor patents that claim the smallest, most trivial changes to your work. To keep the patent system healthy, there needs to be some “shielding”, some sort of “force field” that keeps competitors from getting too close to your work. In the US, the depth of the “shielding” or “force field” is set by trying to legally determine, often years later, what a person having ordinary skill in the art (PHOSITA) would think was obvious.

The big problem is “hindsight bias”. Lots of non-obvious things look obvious in hindsight. Here the legal system is attempting to cope, with varying success, with a very complex underlying problem of pattern recognition. Once you see the solution to a puzzle, it is hard to see anything else.

Prior to 2007, the USPTO used anti-hindsight rules in an attempt to minimize hindsight problems. However, in the 2007 KSR v. Teleflex case, SCOTUS made what, in my opinion, was a key error. Dictionaries define hindsight somewhat incompletely as: “understanding of a situation or event only after it has happened or developed”. SCOTUS ran this incomplete dictionary definition into the ground. They argued that the earlier anti-hindsight rules were too “rigid”, and that “common sense” should be used. They held that hindsight could be avoided by just considering if the invention would be obvious “at the time of the invention”.

This is an almost meaningless statement.  Who would file a patent application if it could be invalidated by later filed patent applications?

In reality, the patent applicant has just shown the examiner the solution to a puzzle, thus “training the examiner’s neural net” to subsequently view this solution as “obvious”.  However, the examiner is told to examine with 100% hindsight bias.  The examiner can also dismiss “hindsight” rebuttals by merely stating that under the newer, post-KSR, USPTO rules (MPEP 2141.01 III): “Content of the prior art is determined at the time the invention was made to avoid hindsight.”

In other words, thanks to the KSR ruling, the present USPTO rules can be paraphrased as Don’t bother us about “hindsight”, we’re not listening, and SCOTUS says that we don’t have to!

Fortunately, there are other ways to rebut obviousness rejections. Examiners often misquote the citations, have gaps in their reasoning, and their proposed combination is often a Frankenstein monster that differs significantly from the claim.  Secondary considerations can also be raised. So things can be done, but this hindsight “bug” (or feature) in US obviousness patent law is annoying.