Japanese-Style Arguments at the USPTO

Japanese-style obviousness arguments typically are ineffective at the USPTO.  Why?

Initially, during prosecution, “the patent examiner must first set forth a prima facie case . . . showing why the claims at issue would have been obvious in light of the prior art. [Then], the burden shifts to the [Applicant] to provide evidence . . . or argument . . . . ” MPEP 2142 (quoting ACCO Brands Corp. v. Fellowes, Inc., 813 F.3d 1361, 1365–66, 117 USPQ2d 1951, 1553-54 (Fed. Cir. 2016)).

The MPEP’s concise summary establishes that the inquiry includes two stages.  The first stage considers whether a prima facie case of obviousness has been established.  The second stage considers whether the Applicant has provided evidence or argument successfully rebutting the prima facie case of obviousness.

That is, in the first stage, the Applicant responds to the Examiner by arguing there is no prima facie case of obviousness.  These arguments are the primary strategy for predictable arts, like mechanical, electrical, software, and business technologies.  This type of argument is sometimes called a “missing element” argument.

If the Applicant does not assert the prima facie case is incomplete for lacking a claim element, then the Applicant basically concedes the Examiner has established their prima facie case.  Thus, the Applicant must attempt to overcome the obviousness determination by providing evidence (e.g., via affidavit) or argument (e.g., arguing the references “teach away” from the combination). 

So, let’s assume an Examiner rejects a claim as obvious over a combination of reference A in view of reference B.  That is, the Examiner believes they have established a prima facie case of obviousness over references A and B.

A typical Japanese-style reply to this rejection might be, “The combination of A and B appears obvious.  However, it is not obvious, because the combination attains an inventive effect not taught by A nor B.”

This argument does not allege there is a missing element and, thus, no prima facie case of obviousness.  Therefore, the Applicant basically has conceded that a prima facie case of obviousness has been made. 

Accordingly, the Applicant is considered to have conceded that the claimed invention was “known.”  Subsequently, the Examiner can rely on the tenet that, “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention.” MPEP 2145 II (citing In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979)). 

That is, the Applicant’s Japanese-style arguments are considered to merely recognize a latent property of the combination of A and B.  “The fact that [the Applicant] has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious.” MPEP 2145 II (citing Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985)).

Therefore, arguing that the combination of A and B lacks an inventive effect cannot be the basis for patentability (i.e., overcome the combination of A and B).  So, Japanese-style arguments are generally discouraged as a primary way of attacking an obviousness rejection.  Of course, they still can be submitted as a back-up argument to a “missing element” argument.

If there are any questions, please feel free to contact at any time.

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