Single-Reference Obviousness Rejections

We previously discussed “broadest reasonable interpretation” claim construction as featured in, but distinct from, obviousness rejections.  Let’s consider one uncommon situation that clarifies this distinction.

Examiners sometimes make single-reference obviousness rejections.  Most typical grounds for these rejections are described in MPEP 2144.  For mechanical or electrical arts, these rejections tend to focus on Official Notice under MPEP 2144.03 or the rationales set forth in MPEP 2144.04.  Additional grounds for single-reference obviousness rejections are set forth in MPEP 2144.05-09, although these rationales are more typically applied to chemical and biological arts. 

When Examiners rely on the MPEP 2144 rationales, the rationale behind their rejections tends to be clearer.  For example, a dependent claim might recite that an apparatus includes a communication unit that transmits data corresponding to a result of the invention’s novel processing.  If an Examiner were to reject this claim by broadly interpreting “corresponding” data, the Examiner might simply cite to a prior art paragraph describing a processor processing unrelated data.  A foreign applicant might be confused, since a processor superficially is not a communication unit, nor does the cited paragraph describe the result of the novel processing.  The Examiner leaves it to the applicant to understand the application of the broadest reasonable interpretation.

In contrast, in a single-reference 103 rejection, an Examiner might simply take Official Notice that transmitting data using a network interface was well-known.  This position might make more sense to a foreign applicant.  Such an applicant can appreciate that the claimed communication unit is more like a network interface than the aforementioned processor.  In addition, it is clearer that the Examiner has interpreted “corresponding” data as any data, rather than the specific, unrelated data described in the cited prior art paragraph.

Thus, single-reference 103 rejections are evidence that the broadest reasonable interpretation is a distinct consideration from obviousness.

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