Obviousness USC 103 Rejections


"Known disadvantages in old devices which would naturally discourage search for new inventions may be taken into account in determining obviousness." United States v. Adams, 383 U.S. 39, 52, 148 USPQ 479, 484 (1966).

The Office has quoted the statute from 35 USC 103(a), which is referenced herein. The Office has rejected claim X, X, XX, and XX – XX as being unpatentable over REFERENCE in view of OTHER REFERENCES. Applicant has carefully considered the Office rejections and respectfully submits that the amended claims, as supported by the arguments herein, are distinguishable from the cited reference.

According to the MPEP §2143.01, "

obviousness can only be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found in either the references themselves or in the knowledge generally available to one of ordinary skill in the art."

A useful presentation for the proper standard for determining obviousness under 35 USC §103(a) can be illustrated as follows:
1.    Determining the scope and contents of the prior art;
2.    Ascertaining the differences between the prior art and the claims at issue;
3.    Resolving the level of ordinary skill in the pertinent art; and
4.    Considering objective evidence present in the application indicating obviousness or unobviousness.

The Office rejected Claim X under 35 USC 103(a) as being unpatentable over REFERENCE (US X,XXX,XXX) in view of OTHER REFERENCE (US X,XXX,XXX). The Applicant has carefully reviewed the cited references and respectfully disagrees.

Claim 1 recites A.  The examiner has cited no teaching or suggestion of A in the cited references.
Claim 1 recites A.  The examiner cited Reference X as teaching A'.  However, A' is not A.  Reference X neither teaches nor suggests A.
Claim 1 recites A.  The examiner cited Reference X as teaching A.  Reference X does not teach A but instead teaches A'.Type your paragraph here.


Objective indicia “can be the most probative evidence of nonobviousness in the record, and enables the court to avert the trap of hindsight.” Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294, 1310 (Fed. Cir. 2010) (internal quotation marks omitted).

The length of the intervening time between the publication dates of the prior art and the claimed invention can also qualify as an objective indicator of nonobviousness. See Ecolochem, Inc. v. S. Cal. Edison Co., 227 F.3d 1361, 1376–77 (Fed. Cir. 2000).