Novel Arguments That Don’t Work Against a 103 Rejection

MARK TERRY, ESQ.

In Ex parte Scherschel, the Board of Patent Appeals and Interferences rejected an applicant’s attempt to overcome a 35 U.S.C. §103 obviousness rejection primarily through a “market forces” argument.

The application concerned cellular communications technology. On rehearing, the applicant argued that KSR required the Board to consider market forces and demands known to the design community when evaluating the examiner’s proposed combination of prior-art references.

The Board rejected that reading. Although evidence such as long-felt need and commercial success may qualify as secondary considerations, those factors do not substitute for invention and generally cannot carry the primary burden of proving non-obviousness.

The practical lesson is to focus first on the foundations of the rejection: whether the references disclose every claimed element, whether there is a supported reason to combine them, and whether the proposed combination would actually produce the claimed invention. Market forces and long-felt need may supplement that analysis, but they should not be the main argument.