Fletcher YoderWhen fighting an obviousness rejection based on a combination of references, one should argue against the motivation to combine and/or the outcome of the proposed combination.
Arguments that claims are obvious in light of prior art must be based on proper evidentiary support.
A reference that contains an obvious typographical error that would have been apparent to a person of ordinary skill in the art such that the person would disregard or correct the error does not disclose the subject matter contained in that error.
It is not sufficient to rely exclusively on evidence of general skepticism about the field of the invention to find a lack of motivation to combine.
In determining obviousness, the plain and ordinary meaning of claim language found in the specification is not altered by use of passive voice and plural language in the claims.
Claims are obvious if a person of ordinary skill in the art would have been motivated to combine/modify prior art systems with predictable results. Findings of obviousness are a matter of law and thus reviewed de novo.
In determining the presumption of nexus for secondary considerations, a patent claim is not coextensive with a product that includes a “critical” unclaimed feature that materially impacts the product’s functionality.
Inherency may supply a missing claim limitation in an obviousness analysis where the limitation issue is the natural result of the combination of prior art elements.
Inherency may supply a missing claim limitation in an obviousness analysis where the limitation issue is the natural result of the combination of prior art elements.
Invocation of common sense properly accompanied by reasoned analysis and evidentiary support serves a critical role in determining obviousness.