In an educational opinion today, the Board of Patent Appeals and Interferences (BPAI) reversed a Patent Examiner's 35 U.S.C. §103 obviousness rejection on the grounds that the Examiner did not provide "evidence" of the obviousness of the combination of references. As a Florida Patent Attorney that deals with 103 obviousness rejections on an almost-daily basis, I found this decision of the BPAI illustrates a plan of attack for Appellants. See the decision in Ex Parte General Components Inc. HERE.
The Appellant, an electrical component manufacturer, was appealing a 35 U.S.C. §103 obviousness rejection where the Examiner combined two references and followed it up with the standard boiler-plate language we're accustomed to seeing as patent practitioners - it would have been obvious to have modified the first reference to produce the claimed feature.
The BPAI decided (I'll paraphrase here for simplification): "The Examiner did not provide sufficient evidence to support the determination that it would have been obvious to have modified [the first reference to reflect the claimed feature]." The BPAI continued: "There is no evidence that [modifying the first reference] would [produce the claimed feature] ... The substitution of one element for another is generally considered obvious when there is a reason to make the substitution and when the resulting combination yields a predictable result. See KSR, 550 U.S. 398 at 416, 418. In this case, the Examiner determined it would have been obvious to have substituted [a feature of the second reference for a feature of the first reference] but did not explain how [to do it]. Furthermore, the Examiner did not provide sufficient evidence that [the feature of the second reference], when substituted for [the feature of the first reference], would produce [a requirement of the first reference]. The rejection is therefore reversed."
The important lesson here is that a Patent Examiner must provide some evidence that it would have been obvious to modify a first reference to reflect a claimed feature. A standard, conclusory statement by the Examiner doesn't suffice. Ideally, he would provide literature from other patents, academic papers or from textbooks of the time that support his argument. But that is something I rarely see in 35 U.S.C. §103 obviousness rejections from the USPTO. In short, if an Examiner doesn't provide any evidence as to WHY it would have been obvious to modify a reference, you've got a premise for reversal on Appeal.
The other lesson is that a modification of a reference is NOT obvious if, after the modification, the reference is not able to perform its stated purpose. If the modification destroys or frustrates the purpose of the first reference, then the combination is not proper. This "frustration of purpose" argument is one I've made many times before the BPAI, and it provides yet another premise for seeking a reversal on Appeal.
