2141.03
`
`MANUAL OF PATENT EXAMINING PROCEDURE
`
`the art may include: (A) “type of problems encountered
`in the art;” (B) “prior art solutions to those problems;”
`(C) “rapidity with which innovations are made;” (D)
`“sophistication of the technology; and” (E) “educational
`level of active workers in the field. In a given case, every
`factor may not be present, and one or more factors may
`In re GPAC, 57 F.3d 1573, 1579, 35
`predominate.”
`Custom
`USPQ2d 1116, 1121 (Fed. Cir. 1995);
`Accessories, Inc. v. Jeffrey-Allan Industries, Inc., 807
`F.2d 955, 962, 1 USPQ2d 1196, 1201 (Fed. Cir. 1986 );
`Environmental Designs, Ltd. V. Union Oil Co., 713 F.2d
`693, 696, 218 USPQ 865, 868 (Fed. Cir. 1983).
`
`“A person of ordinary skill in the art is also a person of
`ordinary creativity, not an automaton.” KSR International
`Co. v. Teleflex Inc., 550 U.S. ___, ___, 82 USPQ2d 1385,
`1397 (2007). “[I]n many cases a person of ordinary skill
`will be able to fit the teachings of multiple patents together
`like pieces of a puzzle.” Id. Office personnel may also
`take into account “the inferences and creative steps that
`a person of ordinary skill in the art would employ.” Id.
`at ___, 82 USPQ2d at 1396. <
`
`The “hypothetical ‘person having ordinary skill in the art’
`to which the claimed subject matter pertains would, of
`necessity have the capability of understanding the
`scientific and engineering principles applicable to the
`pertinent art.” Ex parte Hiyamizu, 10 USPQ2d 1393,
`1394 (Bd. Pat. App. & Inter. 1988) (The Board disagreed
`with the examiner’s definition of one of ordinary skill in
`the art (a doctorate level engineer or scientist working at
`least 40 hours per week in semiconductor research or
`development), finding that the hypothetical person is not
`definable by way of credentials, and that the evidence in
`the application did not support the conclusion that such
`a person would require a doctorate or equivalent
`knowledge in science or engineering.).
`
`References which do not qualify as prior art because they
`postdate the claimed invention may be relied upon to
`show the level of ordinary skill in the art at or around the
`time the invention was made. Ex parte Erlich, 22 USPQ
`1463 (Bd. Pat. App. & Inter. 1992). Moreover, documents
`not available as prior art because the documents were not
`widely disseminated may be used to demonstrate the level
`of ordinary skill in the art. For example, the document
`may be relevant to establishing "a motivation to combine
`which is implicit in the knowledge of one of ordinary skill
`in the art." National Steel Car Ltd. v. Canadian Pacific
`Railway Ltd., 357 F.3d 1319, 1338, 69 USPQ2d 1641,
`1656 (Fed. Cir. 2004)(holding that a drawing made by an
`engineer that was not prior art may nonetheless “be used
`to demonstrate a motivation to combine implicit in the
`knowledge of one of ordinary skill in the art”).
`>
`
`of patent law, a compound and all its properties are
`inseparable.”).
`
`Obviousness cannot be predicated on what is not known
`at the time an invention is made, even if the inherency of
`In re Rijckaert, 9
`a certain feature is later established.
`F.2d 1531, 28 USPQ2d 1955 (Fed. Cir. 1993). See MPEP
`§ 2112 for the requirements of rejections based on
`inherency.
`
`VI. PRIOR ART MUST BE CONSIDERED IN ITS
`ENTIRETY, INCLUDING DISCLOSURES THAT
`TEACH AWAY FROM THE CLAIMS
`
`A prior art reference must be considered in its entirety,
`i.e., as a whole, including portions that would lead away
`from the claimed invention. W.L. Gore & Associates,
`Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed.
`Cir. 1983), cert. denied, 469 U.S. 851 (1984) (Claims
`were directed to a process of producing a porous article
`by expanding shaped, unsintered, highly crystalline
`poly(tetrafluoroethylene) (PTFE) by stretching said PTFE
`at a 10% per second rate to more than five times the
`original length. The prior art teachings with regard to
`unsintered PTFE indicated the material does not respond
`to conventional plastics processing, and the material
`should be stretched slowly. A reference teaching rapid
`stretching of conventional plastic polypropylene with
`reduced crystallinity combined with a reference teaching
`stretching unsintered PTFE would not suggest rapid
`stretching of highly crystalline PTFE, in light of the
`disclosures in the art that teach away from the invention,
`i.e., that the conventional polypropylene should have
`reduced crystallinity before stretching, and that PTFE
`should be stretched slowly.).
`
`However, “the prior art’s mere disclosure of more than
`one alternative does not constitute a teaching away from
`any of these alternatives because such disclosure does not
`criticize, discredit, or otherwise discourage the solution
`In re Fulton, 391 F.3d 1195, 1201, 73
`claimed….”
`USPQ2d 1141, 1146 (Fed. Cir. 2004). >See also MPEP
`§ 2123.<
`
`2141.03 Level of Ordinary Skill in the Art [R-6]
`
`> I
`
`. < FACTORS TO CONSIDER IN DETERMINING
`LEVEL OF ORDINARY SKILL
`
`**>The person of ordinary skill in the art is a hypothetical
`person who is presumed to have known the relevant art
`at the time of the invention. Factors that may be
`considered in determining the level of ordinary skill in
`
`Rev. 9, August 2012
`
`2100-122
`
`

`

`MANUAL OF PATENT EXAMINING PROCEDURE
`
`2142
`
`that the claimed invention possesses improved properties
`not expected by the prior art. The initial evaluation of
`prima facie obviousness thus relieves both the examiner
`and applicant from evaluating evidence beyond the prior
`art and the evidence in the specification as filed until the
`art has been shown to render obvious the claimed
`invention.
`
`To reach a proper determination under 35 U.S.C. 103,
`the examiner must step backward in time and into the
`shoes worn by the hypothetical “person of ordinary skill
`in the art” when the invention was unknown and just
`before it was made. In view of all factual information, the
`examiner must then make a determination whether the
`claimed invention “as a whole” would have been obvious
`at that time to that person. Knowledge of applicant’s
`disclosure must be put aside
`in
`reaching
`this
`determination, yet kept in mind in order to determine the
`“differences,” conduct the search and evaluate the “subject
`matter as a whole” of the invention. The tendency to resort
`to “hindsight” based upon applicant's disclosure is often
`difficult to avoid due to the very nature of the examination
`process. However, impermissible hindsight must be
`avoided and the legal conclusion must be reached on the
`basis of the facts gleaned from the prior art.
`
`ESTABLISHING A PRIMA FACIE CASE OF
`OBVIOUSNESS
`
`The key to supporting any rejection under 35 U.S.C. 103
`is the clear articulation of the reason(s) why the claimed
`invention would have been obvious. The Supreme Court
`in KSR International Co. v. Teleflex Inc., 550 U.S. ___,
`___, 82 USPQ2d 1385, 1396 (2007) noted that the
`analysis supporting a rejection under 35 U.S.C. 103 should
`be made explicit. The Federal Circuit has stated that
`"rejections on obviousness cannot be sustained with mere
`conclusory statements; instead, there must be some
`articulated reasoning with some rational underpinning to
`support the legal conclusion of obviousness.” In re Kahn,
`441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir.
`2006). See also KSR , 550 U.S. at ___ , 82 USPQ2d at
`1396 (quoting Federal Circuit statement with approval).
`
`>It remains true that “[t]he determination of obviousness
`is dependent on the facts of each case.” Sanofi-Synthelabo
`v. Apotex, Inc., 550 F.3d 1075, 1089 (Fed. Cir. 2008)
`(citing Graham, 383 U.S. at 17-18 (1966)).< If the
`examiner determines there is factual support for rejecting
`the claimed invention under 35 U.S.C. 103, the examiner
`must
`then consider any evidence supporting
`the
`patentability of the claimed invention, such as any
`evidence in the specification or any other evidence
`submitted by the applicant. The ultimate determination
`of patentability is based on the entire record, by a
`
`II. < SPECIFYING A PARTICULAR LEVEL OF
`SKILL IS NOT NECESSARY WHERE THE PRIOR
`ART ITSELF REFLECTS AN APPROPRIATE
`LEVEL
`
`If the only facts of record pertaining to the level of skill
`in the art are found within the prior art of record, the court
`has held that an invention may be held to have been
`obvious without a specific finding of a particular level of
`skill where the prior art itself reflects an appropriate level.
`Chore-Time Equipment, Inc. v. Cumberland Corp., 713
`F.2d 774, 218 USPQ 673 (Fed. Cir. 1983). See also
`Okajima v. Bourdeau, 261 F.3d 1350, 1355, 59 USPQ2d
`1795, 1797 (Fed. Cir. 2001).
`
`> I
`
`II. < ASCERTAINING LEVEL OF ORDINARY
`SKILL IS NECESSARY TO MAINTAIN
`OBJECTIVITY
`
`“The importance of resolving the level of ordinary skill
`in the art lies in the necessity of maintaining objectivity
`in the obviousness inquiry.” Ryko Mfg. Co. v. Nu-Star,
`Inc., 950 F.2d 714, 718, 21 USPQ2d 1053, 1057 (Fed.
`Cir. 1991). The examiner must ascertain what would have
`been obvious to one of ordinary skill in the art at the time
`the invention was made, and not to the inventor, a judge,
`a layman, those skilled in remote arts, or to geniuses in
`the art at hand. Environmental Designs, Ltd. v. Union
`Oil Co., 713 F.2d 693, 218 USPQ 865 (Fed. Cir. 1983),
`cert. denied, 464 U.S. 1043 (1984).
`
`2142 Legal Concept of Prima Facie Obviousness [R-9]
`
`prima facie obviousness is a
`The legal concept of
`procedural tool of examination which applies broadly to
`all arts. It allocates who has the burden of going forward
`with production of evidence in each step of the
`examination process. See In re Rinehart, 531 F.2d 1048,
`In re Linter, 458 F.2d
`189 USPQ 143 (CCPA 1976);
`1013, 173 USPQ 560 (CCPA 1972); In re Saunders, 444
`F.2d 599, 170 USPQ 213 (CCPA 1971); In re Tiffin, 443
`F.2d 394, 170 USPQ 88 (CCPA 1971), amended, 448
`F.2d 791, 171 USPQ 294 (CCPA 1971); In re Warner,
`cert.
`379 F.2d 1011, 154 USPQ 173 (CCPA 1967),
`denied, 389 U.S. 1057 (1968). The examiner bears the
`initial burden of factually supporting any prima facie
`conclusion of obviousness. If the examiner does not
`produce a prima facie case, the applicant is under no
`obligation to submit evidence of nonobviousness. If,
`however, the examiner does produce a prima facie case,
`the burden of coming forward with evidence or arguments
`shifts to the applicant who may submit additional evidence
`of nonobviousness, such as comparative test data showing
`
`2100-123
`
`Rev. 9, August 2012
`
`