The All Elements Test Response to Obviousness. Episode 48

Understanding Obviousness Rejections

In the last episode, I provided a broad overview of what you’re likely to see in an obviousness rejection. The examiner will typically find something similar to your invention that contains almost all of the features you are claiming. Then, the examiner will locate another reference that includes the missing piece and conclude that your invention is obvious because a person having ordinary skill in the art would combine those two references.

In most cases, the examiner will cite two or more patents to form an obviousness rejection. Occasionally, an examiner may rely on a single reference, particularly when making the argument that certain modifications—such as adding a design element or changing a dimension—are merely design choices. For instance, if you are claiming a pink polka dot pencil that is exactly 6.372 inches long, the examiner does not need to find prior art that explicitly discloses a pink polka dot pattern or a pencil of exactly 6.372 inches. The examiner can simply argue that choosing a specific color or slightly adjusting the length is an obvious design choice and does not make the invention patentable.

Example: Mechanical Pencil Improvement

Let’s go back to the mechanical pencil example since it has simple parts. Suppose you are claiming a particular type of mechanical pencil where the clicking button is on top, and there’s an eraser that covers a hole at the top, allowing the user to drop in more pencil lead.

Before your invention, all mechanical pencils had a slide-clicking button, and the only way to add lead was to insert it through the small hole at the tip where the lead comes out. Your invention improves upon this design by allowing for easier lead replacement through a larger hole at the top of the pencil.

Your claim states that the pencil has a long cylindrical body, a tip with a hole for lead to exit, a button at one end with a hole through it, and a removable eraser positioned on top of the button.

Now, let’s say the prior art already includes a mechanical pencil with a long cylindrical body, a tip with a hole for lead, a button on the side, and an eraser at the end. This prior art does not disclose all of your claimed features. The examiner will cite this reference and then search for another reference, such as a pen that has a clickable button on the top.

You receive a rejection in which the examiner combines the mechanical pencil reference with the pen reference, arguing that your invention is obvious.

Applying the All Elements Test

The issue with the examiner’s rejection is that even if you combine all the features of the mechanical pencil and the pen, the prior art still does not disclose all of the features of your invention. Specifically, it lacks the button with a hole through it that allows pencil lead to be dropped in.

Mathematically speaking, if your claim requires elements A, B, C, and D, and the examiner finds a prior art reference with elements A and B and another reference with element C, they have still not accounted for element D. Since element D is missing from the prior art, your invention is not obvious under 35 U.S.C. §103.

How to Respond

To address this type of rejection, you should cite the relevant section of the Manual of Patent Examining Procedure (MPEP)—Section 2143.03, titled All Claim Limitations Must Be Considered. This section states that

"Examiners must consider all claim limitations when determining the patentability of an invention." It elaborates on the requirement that an examiner cannot ignore any limitation in a claim and provides supporting examples and case law.

In your response, you might write:

In the office action, the examiner rejected the claims under Patent 1 and Patent 2 (list the inventors' names and patent numbers for the cited references). In the present invention, Claim 1 requires a button with a hole covered by a removable eraser. Neither Patent 1 nor Patent 2 discloses the claimed invention’s elements. Section 2143.03 requires that ALL limitations must be considered. The examiner failed to consider the limitation of the button with a hole and removable eraser, and the prior art does not disclose this limitation. Thus, no prima facie case for obviousness has been established. Applicant requests reconsideration of the claim and withdrawal of the rejection. A notice of allowance is respectfully requested.

You may want to expand on this argument with further discussion, but this is the essential approach.

Key Takeaways

When responding to an obviousness rejection, carefully review all the limitations in your claims and verify whether they are present in the prior art. If the examiner has overlooked a limitation, the rejection is improper under the All Elements Test.

This type of response is relatively straightforward compared to other obviousness arguments because it is a black-and-white issue: did the examiner consider each and every limitation in your claim? If the answer is no, then the rejection should be withdrawn.

However, if the answer is yes—meaning all of your claimed features exist separately in the prior art—you must argue that your specific combination of those elements is non-obvious. That type of argument requires a more nuanced approach, which I will cover in the next episode.

I’m Adam Diament, and until next time—keep on inventing!