When searching claims, an Examiner might begin with a primary reference showing the state of the art prior to Applicant’s invention. Of course, the reference lacks Applicant’s modification (i.e., the “hook”) that produces the inventive effect. So, the Examiner might turn to a different art to search for a secondary reference describing something like the “hook.”
The Examiner might then issue an obviousness rejection over a combination of the primary reference and the secondary reference. Such a rejection might concern Applicant, because the secondary reference is from a different art.
The Applicant might argue the combination would not have been obvious, because the secondary reference is nonanalogous art. MPEP 2141.01(a).
Such arguments generally are not effective. Why?
“Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320 (Fed. Cir. 2004) (citing In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986)).
The Examiner likely used the problem solved by the inventor to perform the search for the secondary reference. Thus, although the secondary reference is not within the same field of endeavor as the application (nor the primary reference), the Examiner can argue the secondary reference is reasonably pertinent. That is, the Examiner can argue the secondary reference is sufficiently analogous.
So, because Applicant cannot argue effectively that the secondary reference is nonanalogous, must Applicant accept that the invention is obvious?
No. The Applicant can present arguments that no reference discloses a functional or structural similarity between the structures of the primary reference and the structures of the secondary reference.
Let’s assume Applicant’s “hook” relates to how a processor drops (i.e., stops processing) a data packet, based on the content of a particular field of the packet. The primary reference might relate to processing the data packet: the primary reference lacks the ability to drop the packet, based on the particular field. Let’s assume the secondary reference is quite different: let’s say the secondary reference relates to rejecting damaged fruit in a food processing facility.
The Examiner proposes to modify the processing of the primary reference to include the rejection operation of the secondary reference. In doing so, the Examiner further proposes to modify the primary reference’s data packet in view of the secondary reference’s damaged fruit.
Applicant might first argue that no reference individually discloses dropping the data packet, based on the content of the field. Thus, the combination of references likewise does not teach dropping the data packet, as claimed.
Next, the Applicant might argue the damaged fruit is neither structurally nor functionally similar to the data packet or its particular field. Thus, there is no suggestion to modify the primary reference in view of the secondary reference.
These arguments are consistent with precedent that emphasizes “the similarities and differences in structure and function of the inventions.” In re Ellis, 476 F.2d 1370, 1372, 177 USPQ 526, 527 (CCPA 1973).
In our experience, these arguments are more effective than merely arguing the secondary reference is nonanalogous. Still, Examiners might not find these arguments persuasive, although their reviewers and the PTAB might.
Accordingly, an Applicant might best use these arguments to generate leverage in combination with a minor amendment. The Applicant effectively tells the Examiner, “Your rejection was improper for this reason, but we’re further amending on this issue to make the deficiency even clearer.”
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