We received a question about an Examiner broadly interpreting the prior art by generalizing its teachings and then applying a species within the generalized teachings against the claim. We’ve covered this topic before, but it might be time to revisit it.
There are three steps to an Applicant’s counterargument. These counterarguments are most common in biological or chemical arts. However, this example will consider an electrical example. Specifically, we will use an example of our claim being directed to a touchscreen, but the prior art teaching a mouse and a joystick.
In the first step, we confirm that the prior art does not teach the claimed species (a touchscreen). This step could seem trivial. However, it is important to clarify the Examiner is not relying on the actual teachings of the prior art. We must clarify the Examiner is modifying the prior art. As always, modifications require supporting evidence.
In the second step, we explain the prior art does not teach a relevant genus. In our example, the art merely describes a few species (i.e., a mouse and a joystick), and the Examiner says these species form a genus (e.g., input devices). We can rebut this argument by first pointing out that disclosing a few examples is insufficient to disclose a particular genus. For example, is the genus handheld input devices, computer peripherals, or electronic devices made of plastic? Ideally, we identify a broad genus that is taught by the prior art but does not include our species. For example, a mouse and a joystick might form a genus of input-only devices: they do not necessarily form a class of mixed input-output devices like a touchscreen. If the Examiner wants to propose a genus from a mouse and a joystick, then he will need additional evidence that indicates to what genus these species belong.
In the third step, we point out that, even if the prior art does teach a relevant genus, the Examiner still needs additional evidence to select, within that genus, the species claimed by the Applicant. In this regard, we cite to MPEP 2144.08 (e.g., “When a single prior art reference which discloses a genus encompassing the claimed species or subgenus but does not expressly disclose the particular claimed species or subgenus, Office personnel should attempt to find additional prior art to show that the differences between the prior art primary reference and the claimed invention as a whole would have been obvious.”). That is, even if the art teaches a class of mixed input-output devices, then the Examiner must supply evidence that it would have been obvious to select a touchscreen, specifically, rather than a headset including a microphone and headphones, for example.
As a reminder, we must be careful in the second step: sometimes, the prior art does teach a relevant genus. In that situation, we can still argue the first and third steps.