Generalizing Species

Our friend, Nüni, pointed out we did not follow-up from our blog post regarding Obviousness of Species.  Specifically, we explained that USPTO Examiners (particularly, mechanical and electrical Examiners) sometimes improperly generalize prior art teachings.  Why does this occur, what does this look like, and how can Applicants respond?

First, Examiners commonly reject claims as obvious over a combination of references.  In an obviousness rejection, the primary reference ideally describes the prior art context for the invention.  The secondary reference ideally teaches the improvement in a different, but analogous, context and provides a motivation for applying the improvement to the primary reference.

Because Examiners frequently view references in this framework, they may be accustomed to considering references as teaching general contexts, rather than specifics.  Certainly, many references do teach genuses.  However, many references do not: they teach only species.

Confronted with a reference merely teaching one or more species, Examiners might attempt to generalize these species.  However, unlike a biological or chemical reference that might teach hundreds of species, a mechanical or electrical reference might teach one species or only a handful of species.  It can be difficult to correctly generalize a small number of species.

For example, perhaps a reference describes an input using a keyboard or mouse.  What is the proper genus to which these species belong?  Do they belong to a genus of manual input devices that also includes joysticks?  Do they belong to a genus of human input devices that also includes a microphone?  Do they belong to a genus of input devices that also includes a modem?  Do they belong to a genus of input/output computer peripherals that also includes a monitor?

This consideration can determine the reasonableness of the obviousness rejection.  For example, the Examiner’s motivation might be relevant to a member of one genus (e.g., input/output computer peripherals) but not another (e.g., manual input devices).

Applicants can respond to an improper generalization with arguments focused on why the genus selected by the Examiner is not correct.  For example, an Applicant might point to alternative embodiments of the prior art that do not fit the Examiner’s genus.

Next, the Applicant can consider arguments about what genus the reference does teach.  That is, the arguments focus on what genus the Examiner should have selected.  For example, an Applicant might suggest a genus that does fit the alternative embodiments.

Admittedly, because Examiners are often unaware of their fallacies, these arguments often are not successful before junior Examiners.  However, these arguments can be persuasive to more experienced Examiners, such as some primary Examiners and supervisory Examiners, as well as to the Patent Trial and Appeal Board.

If Modal PLLC can assist your application by constructing arguments against an improper generalization, please contact us.