We received a request to address the topic of art-recognized equivalents and, in particular, the substitution of equivalents known for the same purpose. MPEP 2144.06 II.
This issue arises in obviousness rejections during prosecution. Specifically, an Examiner might substitute Element A from the primary reference with Element B from the secondary reference, on the rationale that Elements A and B are equivalents. (There are other rationales for substitution; we are only addressing the “equivalents” rationale here.)
First, the Examiner cannot rely on Applicant’s disclosure to support this rationale. In re Ruff, 256 F.2d 590 (CCPA 1958). “To rely on an equivalence known only to the applicant to establish obviousness is to assume that his disclosure is a part of the prior art. The mere statement of this proposition reveals its fallaciousness.” Id. at 598.
Second, the equivalency “cannot be based on . . . the mere fact that the components at issue are functional or mechanical equivalents.” MPEP 2144.06 II. “That two things are actually equivalents, in the sense that they will both perform the same function, is not enough to bring into play the rule that when one of them is in the prior art the use of the other is obvious and cannot give rise to patentable invention.” Ruff at 597.
Rather, “the equivalency must be recognized in the prior art.” MPEP 2144.06 II (emphasis supplied). Thus, the Examiner has a burden to search for documentary evidence prior to Applicant’s invention supporting that Elements A and B are equivalents.
This evidence, however, need not explicitly teach the substitution of Element B for Element A. In re Fout, 675 F.2d 297 (CCPA 1982). The evidence merely must support a (relevant) equivalency.
So far, we focused on procedural aspects of establishing an obviousness rejection based on substitution of equivalents. This last note, regarding a relevant equivalency, begins the substantive consideration of the rationale.
For example, an Applicant can present effective arguments, if the equivalency demonstrated by the Examiner is not relevant. That is, the Examiner cannot merely show any equivalency: it generally makes no sense for an Examiner to insist Elements A and B are equivalents, merely because they can be the same color. The Examiner must show an equivalency relevant to the obviousness inquiry.
If Modal PLLC can assist you in considering whether an argument about art-recognized equivalents makes sense for your application, or if you would like to request a topic for the blog, please contact us.