Non-Obviousness Arguments That Don’t Work at The Board of Patent Appeals

MARK TERRY, ESQ.

A Section 103 rejection commonly relies on a combination of references. When that happens, an applicant generally cannot defeat the rejection by showing only that one reference does not disclose the entire claimed invention.

In Ex Parte Lim, the Examiner combined two references directed to mobile communications. The applicant attacked one reference individually but did not address the second reference or the Examiner’s proposed combination.

The Board rejected that approach because obviousness is evaluated based on the combined teachings identified by the Examiner. The relevant question is whether the references together disclose or suggest the claimed subject matter and whether the proposed combination is supported by adequate reasoning.

An effective response should therefore identify what remains missing from the combination, explain why the references would not have been combined as proposed, challenge the Examiner’s rationale, or demonstrate that the combined system would not operate as asserted.

Arguments directed only to isolated references risk missing the central theory of the rejection and may be treated as nonresponsive on appeal.