Originally published in Law360, New York (June 15, 2012, 12:46 PM ET)
We are often confronted with an obviousness rejection from a patent examiner that is based on only a legal principle that the examiner has been taught, but does not completely understand. The examiner merely repeats that legal principle as the basis of the rejection and without applying it to the facts of the rejection, and we are left to argue against that position (often unsuccessfully). In such a scenario, I will often counter with an explanation of the legal principle from the Manual of Patent Examining Procedure.
But the U.S. Patent and Trademark Office Board of Patent Appeals and Interferences just gave us additional ammunition to use in these scenarios. In May, the board reversed an obviousness rejection because it relied solely on a legal principle. Ex Parte Nakhamkin, Appeal No. 2012- 003291 (B.P.A.I. May 23, 2012). Citing to In re Ochiai, 71 F. 3d 1565, 1572 (Fed. Cir. 1995), the board specifically held that reliance solely on a per se rule of obviousness is improper. The board ruled that when rejecting a claim as obvious over the prior art, the examiner must compare the claimed invention — including all its limitations — with the teachings of the prior art rather than relying on the legal principle alone.
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