Obviousness of Species

US patent attorneys focused on chemical and biological arts are familiar with the idea that a prior art genus does not necessarily render obvious a claimed subgenus or species.  MPEP 2144.08.  This concept applies to electrical and mechanical arts, as well.  How do attorneys recognize when electrical and mechanical Examiners present this issue?  How should attorneys respond?

First, we cannot recall seeing an electrical or mechanical Examiner explicitly assert a prior art genus renders obvious a claimed subgenus or species.  That is, such Examiners typically raise this issue by implication.

For example, let’s assume Applicant’s invention pertains to wirelessly sending an initialization packet from a receiver, based on a measured (wireless) network demand.  An Examiner might begin a rejection with a reference that teaches an adjacent technology.  For example, the Examiner might reject Applicant’s claim as obvious over a prior art reference that describes a step of sending a packet over a wired network, based on a (different) measured network demand.

If the US attorney conducts an interview, the Examiner might characterize her reliance on the reference “merely” for teaching sending a packet, based on a network demand.  That is, the Examiner might ignore arguments about the explicit teachings of the prior art.  Thus, the Examiner might attempt to generalize the teachings of the prior art. 

This generalization, in itself, is problematic, but it is not our current focus (maybe next week?).

Once the Examiner has generalized the prior art as teaching sending a packet, based on a measured network demand, the Examiner has selected a species within that teaching.  Specifically, the Examiner has selected 3 species: a species of sending (i.e., a wireless sending), a species of packet (i.e., the initialization packet), and a species of network demand (i.e., one pertaining to a wireless network).  This framing makes the Examiner’s modifications clearer. 

The Examiner then should follow the procedures outlined in MPEP 2144.08 II A (relating to the Graham factors) to support a position that it would have been obvious to select, within the genus of the prior art, Applicant’s claimed species.  And because electrical and mechanical Examiners often are unfamiliar with this genus/species issue, the Examiners seldom have adequately supported their position.

If Modal can assist you with this type of analysis, please contact us.

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