Requirements for a Patent
One of the requirements for patentability is that the claims (i.e., the invention), are not obvious. Based upon somewhat recent case law, the ease by which an Examiner can characterize the claims as obvious has become easier. One such rationale by which an Examiner can characterize your claims as obvious is the “predictable results” rationale. Under this rationale, an Examiner can simply combine pieces of prior art to arrive at the claimed invention based upon the conclusion that the results of the combination would be predictable. For example, adding wheels to a table makes it movable. If this does seem like a shortcut to an obviousness determination, that is because it really is just that.
Much like the table example, Examiners are simply formulating a conclusion. Obvious rejections based upon “predictable results” often lack any written rationale and make this determination in a conclusory fashion. That is, the Examiner’s rationale lacks any articulation of how or why this would be predictable. Without such an articulation, Applicants are left with an assumption that any determination of obviousness is generally based upon hindsight and the Applicant’s own specification, for example.
To reject a claim based on a “predictable results” rationale, an Examiner must articulate the following:
- a finding that the prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference;
- a finding that one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately;
- a finding that one of ordinary skill in the art would have recognized that the results of the combination were predictable; and
- whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
Many rejections based upon the “predictable results” rationale seem to lack any articulation with respect to (3). If one of ordinary skill in the art would have recognized that the results of the combination were predictable, then the Examiner should be able to articulate this with particular references to the prior art. Instead, many Examiners fail to articulate this, leaving Applicants to assume that such a finding is based upon their own teachings in the application.
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