The Most Effective Way of Reversing a 103 Obviousness-Type Rejection

MARK TERRY, ESQ.

In Ex parte Peng, the Board of Patent Appeals and Interferences reversed an obviousness rejection involving a GPS receiver and a claim requiring particular data storage and memory reallocation steps.

The examiner asserted that the disputed limitation appeared in the cited reference. The applicant focused on a straightforward point: the reference did not actually disclose the claimed storage location or the required reallocation.

The Board agreed, finding that the examiner’s reading stretched the reference beyond reasonable limits. Because the cited art did not teach the disputed element, the rejection could not stand.

The article notes that this element-by-element argument had been especially successful in electrical appeals, outperforming more abstract arguments about motivation to combine or articulated reasoning.

Practical takeaway: Before relying on broader nonobviousness theories, practitioners should test whether every claimed limitation is actually present in the cited references.