Using Secondary Considerations for Responding to Obviousness Rejections. Episode 49

Overview of Obviousness Rejection Responses

This is the third episode covering responses to obviousness rejections. In the first episode, I explained the basics of an obviousness rejection. In the last episode, I discussed the All Elements Test, which applies when the examiner combines prior art, but the combination still does not include all the elements of your invention. In this episode, I will cover a scenario where the prior art does, in fact, disclose all the features of your invention in separate references, but you have combined them in a unique way that you believe still warrants patent protection.

In Graham v. John Deere, the Supreme Court established a three-part test for determining obviousness. First, prior art must be gathered. Second, differences between the prior art and the claimed invention must be analyzed. Third, the level of skill of a person having ordinary skill in the art (PHOSITA) must be evaluated to determine whether modifying the prior art to arrive at the invention would have been obvious.

After this three-part test, the Court explained that secondary considerations can also be used to argue against an obviousness rejection. The primary secondary considerations are:

1. Commercial success

2. Long-felt but unsolved need

3. Failure of others

There are other secondary considerations that may support patentability, but let’s explore these three first. Keep in mind that in an actual response to the patent office, you cannot simply state, “Secondary consideration of commercial success—please grant my patent.” You must back up your arguments with facts and legal precedent.

Commercial Success

Commercial success means that although all the components of your invention may have existed separately before, your product—when combined in a novel way—became highly successful in the market. If your product achieved significant commercial success, that supports its patentability.

However, you must establish a clear nexus between the commercial success and the inventive combination of features. If the success is due to external factors—such as superior advertising—rather than the novelty of the invention itself, then this argument will likely fail.

Long-Felt but Unsolved Need

If your invention addresses a long-standing problem that others have attempted but failed to solve, this weighs in favor of non-obviousness. For example, suppose you developed a medical device that improves wound healing, and doctors had been searching for a better solution for years without success. If you can demonstrate that your invention successfully addressed this long-felt need, it strengthens your case for patentability.

Failure of Others

If multiple inventors or companies have tried and failed to solve a particular problem, but your invention provides the first successful solution, this supports non-obviousness. Evidence that others have attempted and failed to achieve what your invention accomplishes can be a compelling argument for patentability.

Other Secondary Considerations

Skepticism by Experts

If experts in the field doubted that a solution like yours could work, but you proved them wrong, this supports non-obviousness. If literature or expert statements indicate skepticism about whether your invention was feasible, and you can demonstrate that it works, this strengthens your case.

Teaching Away

If prior art explicitly discourages the combination of certain elements, this is strong evidence of non-obviousness. If references state that combining elements A and B with C and D would not work or would create undesirable results, but you successfully combined them, this is one of the strongest arguments you can make against obviousness.

Copying by Others

If competitors have copied your invention, this can be evidence that your invention was not obvious. If the industry saw your product and rushed to imitate it, that suggests your invention was not an obvious solution that anyone could have arrived at independently.

Praise by Others

If experts in your field have publicly praised your invention as groundbreaking, that may be used to argue non-obviousness. Typically, this requires supporting evidence, such as affidavits from experts, which I will discuss in a later episode.

Synergistic Effects

If your invention produces results that exceed the expected sum of its parts, that supports patentability. This is particularly common in pharmaceuticals. For example, if Drug A improves hair regrowth by 5% and Drug B also improves hair regrowth by 5%, one might expect their combination to improve regrowth by 10%. But if the combination instead produces 100% regrowth, that would be unexpected and could support a patent.

A similar example could involve migraine treatment. If Drug A reduces migraines by 50% for a year and Drug B also reduces migraines by 50% for a year, combining them might be expected to yield a similar 50% reduction. However, if the combination completely eliminates migraines permanently, that would be strong evidence of a synergistic effect, supporting patentability.

Inoperative Combinations

If prior art references disclose all elements of your invention but their combination would not work in practice, that can be an argument against obviousness. Similarly, if combining the elements requires substantial modifications that are not suggested in the prior art, that may also support non-obviousness.

Lack of Suggestion to Combine

This argument relates to the Teaching, Suggestion, or Motivation (TSM) Test. Previously, if an examiner found elements A, B, and C in one reference and element D in another, they had to show some explicit teaching, suggestion, or motivation to combine them.

However, in KSR v. Teleflex (2007), the Supreme Court ruled that the TSM test is not the sole standard for obviousness. Examiners now need only provide a reasoned articulation of why a PHOSITA would combine the references. This change made obviousness rejections harder to overcome, as examiners can argue that a combination is merely a predictable variation.

Still, you should challenge the examiner’s rationale. Examiners must provide a clear reasoning for why the references would have been combined, rather than merely asserting that the combination is obvious.

Final Thoughts on Obviousness Arguments

These are some of the primary approaches to arguing against obviousness. I have not gone into detail about drafting responses with case law citations and references to the Manual of Patent Examining Procedure (MPEP), as that would make this episode overly long. However, these are key points to discuss with your patent attorney when contesting an obviousness rejection.

Another important point to consider is that even if the examiner is correct in rejecting your claims as obvious, you may be able to amend your claims to make them non-obvious. In the next episode, I will discuss the mechanics of making claim amendments, including the proper format for submitting them to the examiner.

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