Obviousness Rejections with Several References

We received a question about responding to obviousness rejections with several (e.g., 3 or more) references. 

Such a rejection complicates drafting a response.  The natural inclination is to focus on the increased number of references.  However, our suggestion is to avoid focusing on the references and instead to focus on the claims.

This shift in focus makes sense.  After all, if the Examiner rejected a claim over fewer references, then the Examiner would have relied on each reference for relatively more claim elements.  Instead, in rejecting the claim over more references, the Examiner is relying on each reference for relatively fewer claim elements.  Thus, a successful amendment likely has to overcome fewer relevant teachings in the applied references.  Of course, one would expect relatively more irrelevant teachings in those references, as well.

Identifying a successful amendment for an obviousness rejection with 3+ references is basically the same as for a two-reference obviousness rejection.  We typically begin our analysis by analyzing the so-called “hook” of the invention (usually the “characterizing” or “tokuchotosuru” portion). 

In rejecting the hook, did the Examiner rely on a single reference or multiple references?  If the Examiner relied on multiple references, could the Examiner’s division of the hook make sense?  In many situations, the issue is merely a “condition precedent” issue.

If the Examiner relied on a single reference, does that reference present the hook in the same context (e.g., technical area) as does the invention?  If not, could the tie between the hook and the other claim elements be tightened?  For many Japanese practitioners, such a tie can be established by reviewing the antecedent basis. 

If the reference does present the hook in the same context, then it might be easier to consider how the Examiner could have made a rejection using fewer references.  This situation commonly arises when a senior Examiner (e.g., a Supervisory Primary Examiner) instructs a junior Examiner to make a rejection using a specific reference, without explaining how to apply that reference.  In this situation, it’s easier to consider a stronger rejection that leaves out some of the references.

If additional assistance for responding to such a rejection would be beneficial, please contact us.

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