Secondary considerations of nonobviousness

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.”

Without “obvious” type rejections, we would have a lot of trivial patents. So such rejections are needed, but the problem is that the USPTO usually goes too far. The USPTO determines obviousness by considering if the invention would be evident from the standpoint of an imaginary Person Having Ordinary Skill In The Art (PHOSITA). This test is ultimately just legal guesswork. As previously discussed, such determinations are often unduly influenced by hindsight bias.

35 USC 103 rejections

Does your examiner keep rejecting your patent under 35 USC 103 as being “unpatentable?” These 35 USC 103 rejections are another term for obviousness-type rejections.

Objective indicia of nonobviousness (outside evidence)

If you are getting stuck, you should know that you can also rebut obviousness rejections by submitting “objective indicia of nonobviousness.” (outside evidence). This external evidence can include unexpected results, commercial success, long-unsolved needs, failure of others, professional approval, skepticism of experts, and the like.

Although allowed, the USPTO considers such outside evidence to have a second-class status.  You can even see this in the terminology: “secondary considerations of nonobviousness.”

The patent legal system prefers its imaginary PHOSITA reasoning over actual real-world evidence! Sounds silly, but remember that they are skeptical because applicants are always trying to game the system.

A rare but useful trick

Applicants don’t submit outside evidence very often. Indeed, given the 2007 KSR removal of anti-hindsight rules, the tactic is underused. 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, and before an appeal. Outside evidence can also work for design patent rejections as well.

When to submit “outside evidence?”

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, you can submit outside evidence and try to “reboot” the examiner. Your secondary considerations of nonobviousness might break the examiner out of this infinite loop.

USPTO rules on outside evidence

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.”

You submit outside evidence as various “Rule 132 declarations.” These Rule 132 declarations should first state the identity and the credentials of an outside declarant. The declarant should ideally be an expert who is not a member of your company and is not a co-inventor. Next, your declaration should then state the relevant outside facts. Finally, the declarant must sign the statement. You should try to find credible individuals for this, and to submit the best evidence available.

Expect the USPTO to be skeptical.

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 extrinsic evidence and the invention’s claims. The examiner may rebut by arguing that no such clear nexus exists, proposing alternative explanations, and looking for other ways to discount the declaration.  Still, if you do have good evidence, why not use it?