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Hodgson Russ's Clean and Green Law

Keeping Your Application Aloft: Fighting Obviousness Rejections at the Patent Office

Posted in Intellectual Property

While the likelihood of a mass post-election American migration to Canada seems less likely, trying to move to the northernmost regions of Canada can be difficult. Canada may be a land of friendly locals and breathtaking scenery, but much of Canada’s Arctic territory is not served by paved roads. The only transportation in these areas may be by ice road, plane, or boat. This poses a major logistics problem that many innovators are trying to solve. One such solution may take a page from the history books. Airships are being touted as a potential solution to transport goods in regions without regional airports, and not just in Canada. For example, the “flying bum” airship is being tested in England. What once was a stylish and popular mode of transport is potentially making a comeback.
Revisions or improvements to old technology are important in the world of cleantech, and not just with airships. Lithium-ion batteries continue to develop from those in the 1970’s. Solar cells advanced from the junction semiconductor solar cell patented in 1946. The U.S. Patent and Trademark Office grants thousands of patents every month that improve existing technology. However, remember that there also are thousands of rejections issued every month on patent applications that are considered obvious. Under U.S. patent practice, a patent cannot be granted if differences between the claimed invention and previous technology are such that the claimed invention as a whole would have been obvious to a person of ordinary skill in the art.

There are multiple reasons that a patent examiner may reject a patent application for obviousness. Turning back to airships, an examiner could determine that an improved airship design is obvious because the inventor applied a known technique to a known airship design which yielded (in the examiner’s mind) predictable results. For example, if an inventor designs an airship with a more rigid outer skin, fire-suppression systems, or improved means for evacuation, an examiner may point to known avionics technology and determine that airships were ready for such improvements after the Hindenburg disaster. The burden then shifts to the inventor to argue why his or her improved airship design is not obvious. The inventor or the inventor’s patent attorney could then argue that, for example, the examiner’s rationale for combination is faulty, that the references actually suggest against the examiner’s proposed combination, or that the combination would render a reference unsatisfactory for its intended purpose.

Not every argument against obviousness will fly. Arguments about unclaimed features or the difficulty inherent in a physical combination of the references will not carry weight. Complaining about the number of references used in the rejection, the age of the references used in the rejection, or why the combination of references in the rejection does not make business sense won’t get off the ground. Likewise, an examiner will not get on-board with arguments against individual references when the examiner combined pieces of the references together in the obviousness rejection.

Before needing to make any arguments against obviousness, you can prepare your patent application to counter the examiner’s inclinations. Tell a good story in the text of your patent application that explains why your improvement was not easy to complete or why others thought it would fail. Throw in data that compares your invention to previous techniques, showing how much of an improvement your invention offers. Describe the deficiencies of the previous system that might lead one away from improving it. Or, if the situation merits it, carefully claim and describe your improvement to make it seem like your invention is a narrow and optimized result of your research.

Fighting with examiners over obviousness is very common. Technology advances based on improvements to older designs are especially prone to an obviousness rejection. Preparing for potential obviousness concerns can prevent disappointments at the Patent Office and can help keep your dreams of a patent airborne.