Is Obviousness Obvious – How to Deal with U.S. Patent Examiners

(IPRinfo 3/2010)

If a patent examiner is one of ordinary skill in the art of any given application, then he should be capable of determing what is obvious and what is not.

As a U.S. Patent Examiner, the United States patent system was relatively straightforward to me. I examined claims, conducted a search of the prior art, and decided in my opinion if the claims were patentable.

Since my opinion of patentability was generally based on my own knowledge of the art, determining patentability often came down to what was obvious or not to me. As a practitioner, dealing with the U.S. patent system is far more complex. Unlike an examiner, a practitioner cannot rely solely on his or her knowledge of an art to argue non-obviousness.

Who decides what inventions are obvious and what are non-obvious? U.S. courts say that it is ”one of ordinary skill in the art”. So, are patent examiners one of ordinary skill in the art?

Patent examiners, by definition of their job title, determine if inventions are patentable. Therefore, they determine if each invention meets the three basic components of patentability in the U.S.: utility, novelty and non-obviousness.

Thus, a patent examiner should be one of ordinary skill in the art which they are determining patentability. Anyone who has dealt with patents will quickly realize this is not normally the case.

When trying to decipher rejections from U.S. examiners based on obviousness, a real question becomes, ’of what skill level is this patent examiner?’ The logical follow-up question becomes ’how does the level of skill of the patent examiner affect the patent prosecution?’

The following will provide some tools to answer these questions and hopefully make obviousness more obvious.

What is skill in an art?
Putting aside for the moment what ordinary skill is, an examiner’s skill level can fall into one of three groups: that of ordinary skill, that of less than ordinary skill and that of more than ordinary skill in an art.

At the United States Patent and Trademark Office (USPTO), there are over 6 000 patent examiners. Consider that patents in the U.S. are organized in to well over 100 000 different categories or class/subclasses. Each examiner is therefore responsible for numerous different categories or arts. Therefore, not only does the level of skill vary between the 6 000+ patent examiners, but it also varies for each examiner depending on the specific art in question.

If an examiner is one of ordinary skill in the art of any given application, then he should easily be capable of determing what is obvious and what is not. If something is obvious to them, then it is inherently obvious to one of ordinary skill in the art.

When prosecuting an application in front of an examiner of ordinary skill in the art, then any obviousness rejection made should be valid. In this scenario, often times the only way to proceed is to amend the claims or abandon the application. However, patent examiners normally fall into the other categories: of less or more than ordinary skill in the art.

Dealing with examiners with less than ordinary skill
Examiners having less than ordinary skill in a particular art will commonly put forward combining two things as obvious when someone of ordinary skill would know otherwise. Many times the combination will be from two entirely different arts. This is one clue an examiner is not of ordinary skill. When handled properly though, this scenario can have several unique benefits.
It is helpful to begin by laying out what the level of ordinary skill was in the particular art when the application was filed. This will often be informative to the examiner and can increase that examiner’s own level of skill in the art.

The key is that it allows the practitioner to define the skill in the art in a way favorable for the applicant. This also preempts the examiner from defining the level of ordinary skill in a detrimental way. Follow up by pointing out how those of ordinary skill have gotten around using the new invention or why one of ordinary skill would not have found the claims obvious.

While this approach will seem counter-intuitive to those who wish to keep the prosecution history as short as possible, it has its advantages. Examiners of less than ordinary skill can be thought of as loose cannons. They are prone to put repeated opinions on record that are not valid and which require lengthy argumentation and possible documentation to overcome.
Being proactive and preventing these invalid opinions in fact often reduces the overall potential prosecution history.

Dealing with examiners having more than ordinary skill
Take a look at the theory several centuries ago that the earth was flat. For a long time, one of ordinary skill in the art knew that there were two unproven theories. Scriptures and common belief pointed towards a flat world while mathematics and observation pointed towards a spherical earth.

Therefore, to one of only ordinary skill, neither theory would be obvious over the other. However, someone of less than ordinary skill, one who only knew about scripture and common belief, would tell you it is obvious the earth is flat. On the other hand, one of expert skill who had made observations and calculations would tell you the world is obviously a sphere.

It is easy to show the man having less than ordinary skill about the alternate theory. By increasing his level of skill he will soon realize that neither theory is as obvious as originally thought.

Convincing the man who is an expert that he is wrong is much more difficult, and often impossible, considering that he may in fact be right.

Don’t try to teach an expert!
If an examiner is an expert in the art, then many times he will believe deeply that something is obvious. In many cases, as with the second theorist, he may even be correct. Telling this examiner he is wrong will most likely result in an unnecessarily long prosecution. Additionally, unlike with an examiner of less than ordinary skill, educating an expert in the art is not beneficial.

In this scenario, a long prosecution history is often times extremely damaging. An expert examiner can present reasons why the invention is obvious but which is not obvious to one of ordinary skill. These rejections will often be well formulated and may even be along the lines which the inventor used in the first place. The key to this situation is presenting the facts in as compact a manner as possible.

Remember, the only opinion that matters is that of ”one of ordinary skill in the art.” It is essential to focus only on what knowledge one of ordinary skill is limited to and why that limited knowledge renders the invention non-obvious.

An application is prosecuted before an individual
Pointing out to an examiner that their opinion of obviousness appears to be based on that of a person with expert skill in the art can be beneficial. This is especially true when an examiner uses obscure non-patent literature references which can be shown to be outside the realm of one of ordinary skill.

The greatest tool to determine the level of skill of any particular examiner is the internet. Putting an examiner’s name into a search engine will quickly provide you with statistics such as how long he/she has been an examiner, how many patents he/she has issued and in what art.

Going a little further will undoubtedly show when they graduated university, with what degree and what work experience they had prior to becoming an examiner. This information, along with the content of their rejection should provide a clear idea of their level of skill in the particular art.

Although the U.S. concept of obviousness appears far from obvious, it is still easily manageable. In reality each patent application is prosecuted in front of an individual examiner and not the USPTO as a whole.

Therefore, it is important to use the tools available to prosecute each application the most effective way for each examiner based on their level of skill in the particular art. Dealing with each individual examiners concept of obviousness then becomes much more obvious than considering the system as a whole.

The patent application process before the USPTO is presented on the web site of the office with relevant links: http://www.uspto.gov/patents/process/index.jsp