The most typical rejection is due to “obviousness” under 35 U.S.C. 103. Such an office action usually requires the applicant filing a response and amendment to overcome this type of rejection.
Under 35 U.S.C. 103(a), if a claimed invention, as a whole, would have been obvious to a person of ordinary skill in the field of the invention, the claims are rejected. Whether an invention would have been obvious to one of ordinary skill in the art is a legal determination based on underlying findings of fact. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 427 (2007); In re Gartside, 203 F.3d 1305, 1316, 319 (Fed. Cir. 2000) (citing Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966)).
The scope and content of the prior art, as well as whether the prior art teaches away from the claimed invention, are determinations of fact. See Para-Ordnance Mfg., Inc. v. SGS Importers Int’l, Inc., 73 F.3d 1085, 1088 (Fed. Cir. 1995). Furthermore, where “a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR, 550 U.S. at 416.
Furthermore, a patent application may be rejected if it would have been obvious for one of ordinary skill in the field of the invention to take one invention and combine the elements of other patented inventions to yield predictable results.
An inventor can rebut an obviousness rejection by showing that the prior art “teaches away” from the claimed invention. DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326-27 (Fed. Cir. 2009). Based on facts, prior art “may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). However, the “mere disclosure of alternative designs does not teach away.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
The Court of Appeals for the Federal Circuit recently decided In re Mouttet, 2011-1451, 2012 WL 2384056 (Fed. Cir. June 26, 2012). The decision affirmed a rejection by the Board of Patent and Interferences (“Board”) for all 20 claims in inventor Mouttet’s utility patent application No. 11/395,232, “Crossbar Arithmetic Processor.” Id. at 2. The application “discloses a computing device for processes such as addition, subtraction, multiplication, and division using nanoscale materials in a crossbar array.” Id. The Board upheld the original PTO Examiner’s rejection of the application under 35 U.S.C. 103(a) as unpatentable over five prior art patents. Basically, one patent contained all but three components of the claims provided in Mouttet’s application. Further combining the elements of the other prior art patents yielded the same results as Mouttet’s claimed invention—rendering it obvious. Id. at 5-6.
The Board found that an ordinarily skilled artisan—in this case an electrical engineer—would have easily been able to substitute in the elements from one prior art patent with another to predict the claims included in Mouttet’s application. Id. at 10. “[T]he Board noted that there is no requirement that the examiner show how to physically incorporate [such substitutions] because obviousness focuses on what the combined teachings would have suggested. Id. at 11. Mouttet’s arguments on appeal were that (1) combing the elements of the prior art patents would have destroyed the principal of operation of the prior art; and (2) the prior art teaches away from the presently claimed invention. Id. at 13.
The main prior art patent that rendered Mouttet’s claimed invention obvious utilized optical paths rather than the electrical paths included in Mouttet’s claims. Mouttet argued that substituting optical paths for electrical paths would have destroyed the principal operation of the prior art invention. Id. at 14. The Board disagreed, finding “that the principle of operation of [the] computing device is its high level ability to receive inputs into a programmable crossbar array and processing the output to obtain an arithmetic result.” Id. The principal of operation can be accomplished via optical or electrical paths, and an ordinarily skilled electrical engineer would understand this.
As for Mouttet’s argument that the prior art “teaches away” from the claimed invention, the board was not persuaded with this argument. Whether prior art teaches away from a claimed invention is a question of fact. In re Napier, 55 F.3d 610, 613 (Fed.Cir.1995). Here, the prior art specifically discussed the differences in optical and electrical paths, noting that an optical path is the preferential embodiment. Discussing an inferior or non-preferential method does not “teach away” because “the mere disclosure of an alternative design does not teach away.” Id. at 17. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
If an application does get rejected under 35 U.S.C. 103, the applicant may present arguments based on facts, and references should be included when making an argument that prior art teaches away from the claimed invention, or that the principal element of the invention would have been destroyed.