# Presentation: 678107

## Determining Obviousness under Graham v. John Deere after KSR v. Teleflex

**TC 3600 – Mechanical EXAMPLES**

## Introduction 

- Reviewing Graham v. John Deere inquiries of a  rejection under 35 USC 103(a).
- We will also be reviewing examples based on Board of Patent Appeals and Interferences decisions that cited KSR v. Teleflex.
- 37 CFR 1.132 Affidavits – Unexpected Results
- Reasons for Allowing Post KSR

## Factual Inquiries ofGraham v. John Deere

- What is the scope and content of the prior art?
- What are the differences between the prior art and the claims at issue?
- What is the level of ordinary skill in the pertinent art at the time the invention was made?
- Does any objective evidence of nonobviousness exist?

## Overview 

- The following examples will show the appropriate fact findings to support rationales cited in KSR and an explanation of how the rationales lead to a conclusion of obviousness under 35 USC 103.
- Example 5 demonstrates fact findings  that do not support a proper rejection under 35 USC 103.

**Notes:**
Example 5 shows a situation where the fact findings were inadequate to support a conclusion of obviousness under 35 USC 103.

## Example 1 – Ladder	

**Notes:**
10635153  3634  Abandoned  
PGPUB 20050029046

## Example 1 – Ladder cont.

- Claim:  A ladder having top and bottom portions, first and second rails, the rails having a first side comprising:
-    Non-slip tape attached to a rail: wherein the non-slip tape has an adhesive layer and a material layer:
- 	said non-slip tape having a thickness of between approximately 1/16 and 1/4  inch.

## Example 1 – Rejection Statement

- The claim is rejected as under 35 U.S.C. 103(a) as being obvious over Thompson in view of 3M Safety Walk TM data sheet.

## Example 1 – Fact Finding

**Notes:**
10635153

## Example 1 –  Fact Finding

- Thompson (U.S. Patent 6,021,865) discloses a ladder having top and bottom portions and first and second rails (56) with the rails having a first side. A non-slip element (55) is attached to the rail (56).
- Element (55) reduces the concentration of load and damage to the structure and reduces the tendency of the ladder to slip sideways.

## Example 1 – Fact Finding

- Thompson further discloses a soft flexible material (55) on the contact surface of the ladder extending from 3 to 5 feet in length, with the soft flexible material having an exterior surface of a high coefficient of friction and can be attached to the ladder using internal adhesive, double stick tape or a hook and loop fastener.

## Example 1 – Fact Finding

- 3M Safety Walktm Slip-Resistant Materials, Technical Data Sheet teaches slip resistant materials that come in pressure sensitive tape form and are applied to structures where stable footing is desired.
- None of the 3M tape-like materials are greater than 1/16 of an inch in thickness.
- The general purpose 600 material is recommended for use on ladders, presumably on the tread or step.

## Example 1 – Fact Finding

- Thompson does not specifically disclose the thickness of the contact material.
- 3M Safety Walk data sheet – discloses thickness not greater than 1/16 of an inch.
- Thickness of the material being between approximately 1/16 and 1/4 inch  would have been an engineering expedient to one of ordinary skill in the art.

## Example 1 - Rationale

- It would have been obvious to one of ordinary skill in the art to substitute the slip resistant material taught by 3M Safety walk data sheet for the soft flexible material of Thompson and providing a thickness selected between 1/16 and 1⁄4 inches as an engineering expedient; the results of the substitution would give predictable slip resistance.

**Notes:**
Note, no significance is given in the specification to this range of values, since one embodiment uses tape that is less than 1/16 inch.

## Example 1 - Rationale

- See MPEP 8, rev. 6, section 2143
- Exemplary Rationale;
- (B) Simple substitution of one known element for another to obtain predictable results.

## Example 2 – Model Train

**Notes:**
10/237,067  3617  RCE Prosecution ongoing
Published as a PGPUB

## Example 2 – Model Train

## Example 2 – Rejection Statement

- The claim is rejected as under 35 U.S.C. 103(a) as being obvious over Young et al. in view of Ireland.

## Example 2 – Fact Finding

## Example 2 – Fact Finding

**Notes:**
Schematic of the electronics of the Train.  Note the Track at the top
Note, the switch 104 allows the train to go forward or reverse and also have an address for identifying the train be programmed into the microprocessor when multiple trains are on the track.

## Example 2 – Fact Finding

- Young et al. teach a controller for model trains that “transmits control signals between a rail of the track (16) and earth ground, generating an electromagnetic field (22) which extends for several inches around the track. A receiver in the locomotive (24) can then pick up signals from this electromagnetic field (22).”         (Col.1, ll 60-66)

## Example 2 – Fact Finding

- Young et al. further disclose that the microcontroller controls a triac switching circuit 86.  One side of the triac switch is connected to the train tracks through leads 88 which pick up power physically from the track and the other side provides power to the wheels to move the train in response to the magnetic field signal.

**Notes:**
A TRIAC, or TRIode for Alternating Current is an electronic component approximately equivalent to two silicon-controlled rectifiers (SCRs/thyristors) joined in inverse parallel (paralleled but with the polarity reversed) and with their gates connected together. This results in a bidirectional electronic switch which can conduct current in either direction when it is triggered (turned on). It can be triggered by either a positive or a negative voltage being applied to its gate electrode. Once triggered, the device continues to conduct until the current through it drops below a certain threshold value, such as at the end of a half-cycle of alternating current (AC) mains power. This makes the TRIAC a very convenient switch for AC circuits, allowing the control of very large power flows with milliampere-scale control currents. In addition, applying a trigger pulse at a controllable point in an AC cycle allows one to control the percentage of current that flows through the TRIAC to the load (so-called phase control).

## Example 2 – Fact Finding

- Summary – Young et al. disclose a model train system including model trains (24), which receives a power signal, a track interface unit (14,20) for comunicating with said model trains (24) and a communication circuit (84) installed in said model trains  (24) for receiving an input communication signal.
- Young et al. do not teach bi-directional communication to and from the track interface unit and the model trains.

## Example 2 – Fact Finding

**Notes:**
Synchronizing link 42 allows Ireland to more precisely monitor changes in Track voltage
Logic 9 detects the transponder signal sent through the voltage in the tracks 4. 

## Example 2 – Fact Finding

- Ireland teaches a control system for scale model railroad layouts (4) and specifically toward improvements in location detection methods and state of the train information that are employed on model railroads (4).  The state of the train information is understood to include the speed of the train. (col. 3,line 63 - col. 4,line 7).

**Notes:**
Rationale A

## Example 2 – Fact Finding

- Ireland teaches track interface unit for    bi-directional communication with model trains (3) and a communication circuit (11) installed in said model trains (3) that communicates with said track interface unit in a bi-directional manner. Said circuit (11) configured to (i) receive an input communication signal and (ii) transmit an output communication signal indicating the current state of the trains.

**Notes:**
as being a key to employing computer automation requiring a method of detecting both the location and identity of the train. 
Ireland teaches a capability of addressing a particular device on a layout, detecting a coded response and determine its location, termed transponding.

## Example 2 – Rationale 

- “The combination of familiar elements according to known methods is likely to be obvious when it does no more that yield predictable results.” (*See KSR Int’l v Teleflex Inc*.)
- It would have been obvious to one of ordinary skill to combine the familiar radio frequency communication of Young et at. with bi-directional communication of Ireland because it does no more than yield predictable results of locating the trains and the state of the trains.

## Example 2 – Rationale

- See MPEP 8, rev. 6, section 2143
- Exemplary Rationales;
- (A) Combining prior art elements according to known methods to yield predictable results and
- (D) Applying a known technique to a known device (method or product) ready for improvement to yield predictable results.

## Example  – 3 Remote Control Parachute Jettison Device	

**Notes:**
10715243 10715243  US Patent number 7,306,188  Issued 12/11/2007

## Claim:  A device for severing an extraction line connected between a cargo load and an extraction parachute when the cargo load fails to eject from an aircraft, the device comprising:
a cutter spaced from and spring-biased in the direction of the extraction line;
a housing for the cutter;
means for mechanically restricting the cutter from engaging and severing the extraction line; and
means responsive to a radio signal from a transmitter on the aircraft for disabling the restricting means so that the cutter is released and severs the extraction line

- _a cutter_ spaced from and _spring-biased_ in the direction of the extraction line;
- a housing for the cutter;
- _means for mechanically restricting the cutter from engaging_ _and severing the extraction line_; and
- _means responsive to a radio signal_ from a transmitter on the aircraft for disabling the restricting means so that the cutter is released and severs the extraction line

- Example  – 3 Remote Control Parachute Jettison Device (Cont.)

## Example  – 3 Remote Control Parachute Jettison Device (Cont.)

- Invention has the following objectives:
- Objective 1: allow safe, easy release of extraction parachutes in case of an airdrop malfunction.
- Objective 2: Handler can activate the cutter device to jettison the extraction parachute remotely without pyrotechnics.

## Example 3 – Rejection Statement

- The claim is rejected as under 35 U.S.C. 103(a) as being obvious over Underwood in view of Kenzie and Tillman.

## Example 3 – Fact Finding

- Underwood
- U.S. 5,816,535

## Example 3 –  Fact Finding

-  Underwood (5,816,535) teaches a control system for the emergency jettison of a cargo container extraction parachute from a cargo container.
- Underwood teaches that the extraction line is cut based on a signal from an electronic device (microprocessor).
- Underwood provides for an emergency backup jettison procedure to allow the system to respond to an emergency jettison request by an automatic jettison or a manual jettison command.
- Underwood provides for an emergency manual override of the electrically controlled parachute jettison system.

## Example 3 –  Fact Finding

- Underwood is silent on the radio signal.
- Underwood does not teach a cutter that is spring biased to cut the extraction line and means to restrict the cutter from cutting the extraction line.

## Example 3 – Fact Finding

- Kenzie
- U.S. 4,513,931

## Example 3  – Fact Finding

- Kenzie (4,513,931) teaches a device to dispatch cargo loads from aircraft.
- In the device of Kenzie a knife (48) is urged by a preloaded spring (60) to cut the reefing line which regulates parachute opening and fully releases the parachute canopy.
- The parachute release system has a timing mechanism including a release "pin 82 [which] is held against the bias of the spring 84 by insertion of the firing pin 126 which moves the sprag 116 into engagement with one of the teeth 114."

**Notes:**
Sprag Clutch Freewheels: A Sprag Clutch is a free-wheel device having an inner race, and an outer race either of which can be the input or output member.

## Example 3 – Fact Finding

- In Kenzie, the sprag includes a projection pin120 engaged with notch 128 of the firing pin. The opening of the parachute releases the firing pin and the timing mechanism releases the stored energy of a spring 60, which is sufficient to break the shear pin 50 and drive the knife edge through the reefing line providing for release of the parachute canopy.

## Example 3 – Fact Finding

## Example 3 – Fact Finding

- Tillman (6,578,885) relates to the art of selectively operable release devices and, more particularly, to improvements in such devices which are remotely operated. Tillman discloses using the release device on a Bull Riding Device.
- Tillman discloses a rope release device which is radio controlled and solenoid actuated.
- The rope release is a latched system with latched and unlatched positions.
- Upon the receipt of a radio signal, a solenoid is actuated to displace a mechanical armature which displaces a kicker arm which disengages a locking arm, and the force of a biasing spring moves a shaft and cam about a pin against the bias of a torsion spring and thus releases the shaft.

## Example 3 – Fact Finding

- Summary of Teaching References:
- Kenzie teaches several mechanical means for mechanically restricting the cutter from engaging and severing the extraction line including the projection pin 120 of the sprag associated with notch 128 of the firing pin, and the timing mechanism releasing spring 60 which cuts the reefing line.
- Kenzie (4,513,931) teaches that a device to restrict a cutter from cutting a line 20 is well known in the art.
- Tillman teaches radio controlled release of mechanical latch system having a holding and release position and a biasing spring comprising similar mechanical components as the release system of Kenzie.

## Example 3 – Rationale

- It would have been obvious to one of ordinary skill in the art at the time the invention was made to have provided Underwood with a remotely controlled cutter system that is spring biased to cut the extraction line and means to restrict the cutter from cutting the extraction line taught by Kenzie and a means responsive to a radio signal for actuating the cutting system to sever the extraction line as taught by Tillman because---.

## Example 3 - Rationale

- --the technique of a mechanically restricted, spring operated cutter system and of a radio controlled release system have been used to improve a similar device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the known techniques is obvious.

## Example 3 – Fact Finding

- Tillman provides one of ordinary skill in the art with knowledge that one can release a mechanical latch system using a radiocontroller.
- One of ordinary skill in the art would have recognized the established function of a radio control to release a mechanicallatch system and predictably would have applied it to improve the mechanical latch system of Kenzie.

**Notes:**
Establishing one of ordinary skill

## Example 3 – KSR vs. Teleflex

- When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one.
- If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.
- If a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.

## Example 3 - Rationale

- See MPEP 8, rev.6, section 2143
- Exemplary Rationales;
-  (C) Use of known technique to improve similar devices (methods, or products) in the same way, and
- (F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art.

## Example 4 – Fishing Connector

**Notes:**
10314495  3643  Abandoned
PGPUB 20040107625

## Example 4 – Fishing Connector

- Claim: A fishing rod reel clip connector comprising:
- _a fishing rod holder_ for mounting a fishing rod and attached fishing reel within a gunwale of a boat,
- _a compartment along said gunwale storing a recoilable_ retractable line of predetermined length therein; and
- _means connecting_ an end of said retractable line to temporarily secure with said attached reel.

## Example 4 – Rejection Statement

- The claim is rejected as under 35 U.S.C. 103(a) as being obvious over Hillcourt in view of VanAssche and Lumpkin.

## Example 4 – Fact Finding

- _Hillcourt_
- U.S. Pat. 3,154,274

## Example 4 –  Fact Finding

- Hillcourt (U.S. Patent 3,154,274) discloses a fishing rod holder with a support that is adapted to frictionally engage a rail of a boat, a cup member and a fastening means.
- Problem 1:  Provide a holder to retain a fishing rod therein during all phases of a fishing venture.
- Problem 2: Provide a means of fastening which does not have to be removed before a fish can be played, but still could be removed.

## Example 4 – Fact Finding

- _VanAssche_
- U.S. 5,301,451

## Example 4 –  Fact Finding

- VanAssche (U.S. Patent 5,301,451) discloses that is known to mount fishing rod holders within gunwales of boats and to provide a shock cord between the gunwale and the a boom holding a fishing rod.
- A fishing rod is typically removed from the holder in a gunwale so that the fish may be played
- Further, Appellant admitted that retractable fishing rod hold-down systems mounted in the gunwale or to the floor are known.

## Example 4 – Fact Finding

- Lumpkin
- U.S. Pat. 4,823,724

## Example 4 –  Fact Finding

- Lumpkin (U.S. Patent 4,823,724) teaches a bumper storage system that includes a storage receptacle fixed to a boat hull and a tether for permanently joining the bumper to the receptacle.
- It is undesirable to leave bumpers lying on the boat deck or in the cockpit because they are likely to be tripped over.

## Example 4 – Fact Finding

- Hillcourt does not disclose attaching the holder to the gunwale of the boat and does not disclose a compartment in the gunwale for storing the recoilable retractable line.
- VanAssche teaches securing a rod holder to the gunwale of a boat by a boom and shock cord.
- Lumpkin discloses a compartment for storing retractable line.

## Example 4 – Fact Finding

- One skilled in the art would readily appreciate that the fishing rod holder of Hillcourt would not prevent loss if the holder was pulled from the socket while the fisherman was playing a fish.

## Example 4 - Rationale

- It would have been obvious to one having ordinary skill in the art to modify Hillcourt to attach the holder and rod to the gunwale of the boat, as taught by VanAssche and Appellant’s admitted prior art hold-down systems, to further secure the rod and holder and prevent loss if the rod and holder are pulled by the fish during play.

## Example 4 – Fact Finding

- One skilled in the art would have appreciated that the tether used to secure the holder of Hillcourt to the boat, such as taught by Van Assche, could present a similar tripping hazard and would have recognized the benefit of providing a receptacle for such tether.

## Example 4 - Rationale

- One of ordinary skill in the art would have been motivated to combine the receptacle for storing the tether line of Lumpkin with the fishing rod holder of Hillcourt, as modified by VanAssche, in order to provide means for securing fishing rods while active and inactive, without cluttering the deck of the boat.

## Example 4 - Rationale

- See MPEP 8, rev.6, section 2143
- Exemplary Rationales;
-  (D) Applying a known technique to a known device (method or product) ready for improvement to yield predictable results, and
- (F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art.

## Example 5  TongueBPAI Reversal – inadequate fact finding

**Notes:**
10162098  3618 Pending
PGPUB 20030075884

## Example 5 – Tongue

**Notes:**
In use, a boot may be tightened by applying tension on cables 50 by means of"
cable tensioning means 60. The force exerted on the sides of tongue 20 will tend to
stretch lower layer 42 and also place upper protective layer 40 in a state of tension. An
air space 44 is maintained between upper protective layer 40 and lower layer 42 which
are separated by a distance of between 50 mrn and 100 rnm. In the described
embodiment, laces 22 may be tightened, but are largely superfluous since the' foot is
retained in the boot by tongue 20. This also provides a far more comfortable
arrangement as the upper portion of the foot and ankle flex against a resilient and
flexible lower layer 42.

## Example 5 – Tongue

- Claim.    A tongue structure for use in a boot, said tongue
- structure comprising _an upper layer_ formed of a rigid
- protective material, _a lower layer _formed of a resilient
- stretchable material, said upper layer being secured to
- said lower layer along marginal side edges thereof, said
- _upper layer being spaced from said lower layer_
- intermediate said side marginal edges to _thereby provide_
- _an air space between said upper and lower layers_, the
- arrangement being such that _when said tongue is used in_
- _a boot_, the foot of a user will contact said lower layer
- with said upper layer being spaced therefrom in a central
- region.

## Example 5 – Rejection Statement

- The claim is rejected as under 35 U.S.C. 103(a) as being obvious over Gabrielli in view of Hoshizaki.

## Example 5 – Fact Finding

**Notes:**
1. Gabrielli discloses a "tongue 16 with an internal lining 64 welded to a
waterproof layer 66 to form the tongue pocket 36 to be filled by
silicone 68" (Gabrielli, col. 4, 11. 6-9).
Appeal 2007- 13 13
Application 1011 62,098
2. Gabrielli describes that once the tongue pocket 36 has been formed,
an injection gun 80 is used to fill the pocket with silicone (Gabrielli,
col. 4, 11. 1 1-2 1).
3. As such, prior to injection of the silicone, Gabrielli's tongue structure
has an inner liner and an outer layer separated by an air space.
4. Gabrielli discloses that once the pocket has been completely filled
with silicone, then the silicone is left to vulcanize for about twenty
minutes (Gabrielli, col. 5,ll. 13- 15).
5. As such, during use of Gabrielli's shoe, the tongue structure has an
inner liner and an outer layer separated by silicone.

## Example 5 – Fact Finding

- 1. Gabrielli discloses a "tongue 16 with an internal lining 64 welded to a waterproof layer 66 to form the tongue pocket 36 to be filled by silicone 68" (Gabrielli, col. 4, 11. 6-9).
- 2. Gabrielli describes that once the tongue pocket 36 has been formed,an injection gun 80 is used to fill the pocket with silicone (Gabrielli, col. 4, 11. 1 1-2 1).
- 3. As such, prior to injection of the silicone, Gabrielli's tongue structure has an inner liner and an outer layer separated by an air space.

## Example 5 – Fact Finding

- 4. Gabrielli discloses that once the pocket has been completely filled with silicone, then the silicone is left to vulcanize for about twenty minutes (Gabrielli, col. 5,ll. 13- 15).
***5. ***As such, during use of Gabrielli's shoe, the tongue structure has an inner liner and an outer layer separated by silicone.

## Example 5 – Fact Finding

- 6. Gabrielli does not disclose that the inner lining is made of a resilient stretchable material or that the outer layer is made of a rigid protective material.

## Example 5 – Fact Finding

## Example 5 – Fact Finding

- 7. Hoshizaki discloses a tongue structure for a skate having "[a] conventional inner liner 84 and leather or the like cover 86 stitched at 88 about the periphery thereof (Hoshizaki, col. 5,ll. 50-53).
- 8. Hoshizaki discloses that two layers are inserted within the sandwich created by the inner liner 84 and cover 86: a base layer 90 of semirigid material, such as molded closed cell polyurethane foam, and a stiff layer 92 made of a rigid thermoplastic material (Hoshizaki, col. 5, 11. 53-63).

## Example 5 – Does not treat all of the claimed limitations.  

- The combination fails to teach *“when said tongue is used in a boot, the foot of a user will contact said lower layer with said upper layer being spaced therefrom”* because Gabrielli teaches to fill its air space with an elastomer and Hoshizaki does not disclose providing an air space in the tongue.

## 37 CFR § 1.132 Practice

- 	**  ****GENERAL INTRODUCTION**

## Topics to be Covered

- 37 CFR 1.132 - objective evidence of nonobviousness
- Analysis
- Types of Declarations under 37 CFR 1.132

**Notes:**
Fourth Factual Inquiry of Graham v. John Deere

## 37 CFR 1.132

**“****When any claim of an application or a patent under reexamination is rejected or objected to, any evidence submitted to traverse the rejection or objection on a basis not otherwise provided for must be by way of an oath or declaration under this section.”**
- 	“Affidavit” and “declaration” are used interchangeably in this presentation.
- The rule permits applicants to provide evidence to overcome a ground of rejection or an objection.
- Anyone may make a declaration under 37 CFR 1.132
- e.g., applicant, applicant’s co-worker, independent expert, or others. No special qualifications required.

**Notes:**
All affidavits and declarations presented which do not fall within or under specific rules are to be treated or considered as falling under this rule.  See MPEP 716.

Applicant may submit affidavits or declarations under 37 CFR 1.132 for the purpose of traversing grounds of rejection.   Note that the showing must be  responsive to the rejection and present sufficient facts to overcome the rejection.  

## Burden Shifts to Applicant

- Once the examiner has established a *prima facie *case of obviousness, the burden shifts to the applicant to show nonobviousness by presenting evidence of secondary considerations.

**Notes:**
The lack of objective evidence of nonobviousness does not weigh in favor of obviousness. Miles Labs. Inc. v. Shandon Inc., 997 F.2d 870, 878, 27 USPQ2d 1123, 1129 (Fed. Cir.1993), cert. denied, 127 L. Ed. 232 (1994). However, where a prima facie case of obviousness is established, the failure to provide rebuttal evidence is dispositive.

## Examples of Types of Declarations under 37 CFR 1.132

- Unexpected results – MPEP 716.02(a)-(g)
- Commercial Success – MPEP 716.03(a)-(b)
- Long-Felt Need and Failure of Others – MPEP 716.04
- Inoperability of References – MPEP 716.07
- Skepticism of Experts – MPEP 716.05
- Copying – MPEP 716.06

##  Timeliness

- A declaration under 37 CFR 1.132 is timely filed if received:
- Prior to a final rejection
- Before appeal in a case with no final rejection
- After final rejection but before or on the same date of filing an appeal (37 CFR 1.116(e))
- Applicant must provide a showing of good and sufficient reasons why the declaration or other evidence is necessary and was not earlier presented
- After appeal, but prior to filing of an appeal brief, if compliant with 37 CFR 41.33(d)
- examiner determines that the affidavit overcomes all rejections under appeal and that a showing of good and sufficient reasons why the affidavit is necessary and was not earlier presented has been made.
- With a properly filed RCE under 37 CFR 1.114
- See MPEP 716.01, Section A.

**Notes:**
An examiner’s denial of entry of a declaration under 37 CFR 1.132 is petitionable under 37 CFR 1.181 (and not appealable).  The petition is decided by the TC Director or the appropriate management official on behalf of the TC Director.

## Declarations Must  Be Addressed In The Next Office Action

- If the evidence is insufficient to overcome the rejection, the examiner must clearly and specifically explain why the evidence is insufficient.  See MPEP 716.01,
- 	section B.
- General statements such as “the declaration lacks technical validity” or “ the evidence is not commensurate in scope with the claims” without an explanation supporting such findings are unacceptable.
- If the examiner is not considering the declaration on the merits, the examiner must provide a clear explanation of the reason.
- e.g., “The declaration under 37 CFR 1.132 filed May 1, 2007, is not timely because . . .” (provide reasons).

**Notes:**
It is the responsibility of the primary examiner to personally review and decide whether affidavits or declarations submitted under 37 CFR 1.132 for the purpose of traversing grounds of rejection are responsive to the rejection and present sufficient facts to overcome the rejection.  (MPEP 716, emphasis added)

“When an applicant puts forth relevant rebuttal evidence . . . the Board must consider such evidence . . .  That is not to suggest that the Board’s finding of obviousness must be overturned in light of the evidence; rather, the Board must give the declarations meaningful consideration before arriving at its conclusion.” In re Sullivan, 2007 U.S. App. 20600 (August 29, 2007). 

## Declarations Must  Be Addressed In The Next Office Action (cont’d)

- If the evidence is sufficient to overcome the rejection, the comments should be consistent with the guidelines for reasons for allowance provided in MPEP 1302.14.
- e.g., “The declaration under 37 CFR 1.132 filed May 1, 2007, is sufficient to overcome the rejection of claims 1-5 under 35 U.S.C. 103 based upon the Smith reference because . . .” (provide reasons).
- Form Paragraphs 7.65, 7.66 and any of form paragraphs 7.66.01 through 7.66.05, may be used as appropriate.

## Analysis of Declarations under 37 CFR 1.132 

- To be of probative value, objective evidence must be **factually** supported by an appropriate declaration.  See MPEP 716.01(c).
- Arguments of counsel cannot take the place of evidence in the record.  See *In re Schulze, *346 F.2d 500, 602, 145 USPQ 716, 718 (CCPA 1965).
- Attorney statements regarding, e.g. unexpected results, commercial success, long-felt need, inoperability of the prior art, skepticism of experts, and copying are not evidence without a supporting declaration.

**Notes:**
The examiner must consider comparative data in the specification which is intended to illustrate the claimed invention in reaching a conclusion with regard to the obviousness of the claims.  See In re Margolis, 785 F.2d 1029, 228 USPQ 940 (Fed. Cir. 1986).  See also MPEP 716.01(a).

## Analysis of Declarations under 37 CFR 1.132 (cont’d)

- Declarations may include statements in the form of:
- Evidence of a fact – comparative test results, sales figures
-  weight is governed by relevance
- An opinion – statement expressing what the declarant thinks, believes, or infers with regard to certain facts.
- weight is influenced by the underlying basis
- An allegation – a totally unsupported or uncorroborated statement; e.g., conclusory statements unsupported by factual evidence
- not entitled to any weight

## Analysis of Declarations under 37 CFR 1.132 (cont’d)

- Examples of types of evidence:
- Comparative test data are used to show unexpected results
- Sales figures are used to show commercial success
- Articles, publications, declarations by one of ordinary skill are used to show long-felt need
- Comparative test data and declarations by one of ordinary skill are used to show inoperability of a reference

## Analysis of Declarations under 37 CFR 1.132 (cont’d)

- Factual evidence is preferable to opinion testimony.
- 	See MPEP 716.01(c), Section III.
- Declarant should lay out facts, supported by evidence.
- Expert opinion supported by documentary evidence may be given weight.  See *In re Carroll*, 601 F.2d 1184, 202 USPQ 571 (CCPA 1979).
- Opinion on the ultimate legal conclusion at issue is not entitled to any weight, although the underlying basis for the opinion may be given some weight.  See *In re Chilowsky, *306 F.2d 908, 134 USPQ 515 (CCPA 1962).
- Any interest of the expert in the outcome of the case should be taken into consideration.

**Notes:**
In re Lindell, 385 F.2d 453, 155 USPQ 521 (CCPA 1967) (Although an affiant’s or declarant’s opinion on the ultimate legal issue is not evidence in the case, “some weight ought to be given to a persuasively supported statement of one skilled in the art on what was not obvious to him.” 385 F.2d at 456, 155 USPQ at 524 (emphasis added))

## Analysis of Declarations under 37 CFR 1.132 (cont’d)

-   To be of probative value, evidence of secondary considerations must be related to the **claimed invention**.  See MPEP 716.01(b).
-   The examiner must determine whether there is a **nexus** between the invention **as claimed **and the evidence of secondary considerations.
**“****Nexus” **designates a legally and factually sufficient connection between the **claimed invention** and the objective evidence of nonobviousness such that the evidence should be considered in the determination of nonobviousness. See *Demaco Corp. v. Von Langsdorff Licensing Ltd., *851 F.2d 1387, 7 USPQ2d 1222 (Fed. Cir.), cert. denied, 488 U.S. 956 (1988).

## Analysis of Declarations Under 37 CFR 1.132 – The Last Step

- The ultimate determination of patentability must be based on consideration of **the entire record** by a preponderance of the evidence.  See *In re Oetiker*, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992).  See also MPEP 716.01(d).
- In other words, an examiner should reject a claim if, in view of the prior art and and any secondary evidence of record, it is “more likely than not” that the claim is unpatentable.

**Notes:**
Each piece of rebuttal evidence should not be evaluated for its ability to “knock down” the prima facie case.  All of the competent rebuttal evidence taken as a whole should be weighed against the evidence supporting the prima facie case.  See In re Piasecki, 745 F.2d 1468, 223 USPQ 785 (Fed. Cir. 1984).

## Analysis of Declarations Under 37 CFR 1.132 – The Last Step (cont’d)

- The submission of objective evidence of patentability **does not mandate** a conclusion of patentability.  See *In re Payne, 606* F.2d 303, 203 USPQ 245 (CCPA 1979).
- A strong case of obviousness may be established such that the objective evidence of nonobviousness is not sufficient to outweigh the evidence of obviousness.  See MPEP 716.01(d).
- See MPEP 2145 for guidance in determining whether rebuttal evidence is sufficient to overcome a *prima facie *case of obviousness.

## Review

- 	Review of the examiner’s decision that the declaration under 37 CFR 1.132 does not overcome a rejection is _by appeal_ to the Board.

## 1.  Unexpected Results

- Any differences between the claimed invention and the prior art may be expected to result in some differences in properties.  The issue is whether the properties differ to such an extent that the difference is **really unexpected**.  See MPEP 716.02.
- Evidence of unexpected results is frequently in the form of a **direct comparison** of the claimed invention **with the closest prior art** which is **commensurate in scope with the claims**. See, e.g., *In re Boesch*, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
- A rejection under 35 U.S.C. 102 cannot be overcome by a declaration attempting to establish unexpected results.
- A showing of unexpected results is only relevant to a rejection based upon obviousness under 35 U.S.C. 103.  See *In re Malagari*, 499 F.2d 1297, 182 USPQ 549 (CCPA 1974).

**Notes:**
An indirect comparison of the claimed invention with the closest prior art may also be made.  See MPEP 716.02(b), Section III.

A prima facie case of obviousness may be rebutted by evidence establishing that applicant’s invention produces unexpected results.  See MPEP 716.02.

## 1.  Unexpected Results (cont’d)

- The declaration should include:
- A description of precisely what was tested.  It must include **both:**
- The invention ***as claimed, ***AND
- The closest prior art
- A description of all of the test conditions.
- Test results.  The results must include **both:**
- The results of the test performed on the invention as claimed, AND
- The results of the test performed on the closest prior art
- An analysis of the test results.

**Notes:**
“Applicant has the burden of explaining the data in any declaration they offer as evidence of nonobviousness.” Ex parte Ishizaka, 24 USPQ2d 1621, 1624 (Bd. of Pat. App. & Inter. 1992.)

## 1.  Unexpected Results (cont’d)

- The comparison must be under the identical conditions except for the novel features of the invention.
- Precisely what was done should be recited in the declaration.  The actual steps carried out, the materials employed, and the results obtained should be spelled out.  Nothing concerning the work relied upon should be left to conjecture.
- Conclusory statements such as “the prior art invention did not perform well” without a showing of the actual results of the test performed on the prior art AND on the claimed invention is insufficient.

## 1.  Unexpected Results (cont’d)

- The claimed invention must be compared with the closest subject matter that *exists* in the prior art. See MPEP 716.02(e).
- Applicant cannot be required to compare the claimed invention with an invention suggested by a combination of references relied upon by the examiner in a 103 rejection. This would be “requiring comparison of the results of the invention with the results of the invention.”  *In re Chapman, *357 F.2d 418, 148 USPQ 711 (CCPA 1966).
- The claimed invention may be compared with prior art that is closer than that applied by the examiner. See *In re Holladay*, 584 F.2d 384, 199 USPQ 5416 (CCPA 1978).

**Notes:**
For example:  Assume that the closest prior art is the Smith reference, and that the examiner cannot apply a 102(b) rejection based on Smith because Smith fails to disclose one of the claimed limitations.  The Jones reference teaches the missing limitation. The examiner applies a rejection of the claims under 35 U.S.C. 103(a) over Smith in view of Jones, which establishes a prima facie case of obviousness.  To rebut the prima facie case of obviousness, the applicant is required to compare the claimed invention with only the Smith reference.  Applicant is NOT required to compare the claimed invention with an invention (e.g., a product, device, or process) suggested by the combination of Smith in view of Jones, since this would be comparing applicant’s invention against itself.  (If the closest prior art reference taught all of the features of the claimed invention, the reference should be applied in a rejection under 35 USC 102(b) and any evidence of secondary considerations, such as unexpected results, would be irrrelevant.)  

Showing unexpected results over one of two equally close prior art references will not rebut prima facie obviousness unless the teachings of the prior art references are sufficiently similar to each other that the testing of one showing unexpected results would provided the same information as to the other.  In re Johnson, 747 F.2d 1456, 223 USPQ 1260 (Fed. Cir. 1984).  An applicant does not have to test all the compounds taught by each reference, however, where an applicant tests less than all cited compounds, the test must be sufficient to permit a conclusion respecting the relative effectiveness of applicant’s claimed compounds and the compounds of the closest prior art.  Id. (quoting In re Payne, 606 F.2d 303, 203 USPQ 245 (CCPA 1979). 

## 1.  Unexpected Results (cont’d)

- The showing of unexpected results must be commensurate in scope with the invention** as claimed.**  See MPEP 716.02(d).
- The results must be due to the ***claimed**** *features, not to ***unclaimed*** features.
- The examiner must also consider whether there are features which are included in the tests reported in the declaration which are not in the claims.

**Notes:**
The showing of unexpected results must be reviewed to see if the results occur over the entire claimed range.  In re Clemens, 622 F.2d 1029, 206 USPQ 289 (CCPA 1980), In re Peterson, 315 F.2d 1325, 56 USPQ2d 1379 (Fed. Cir. 2003).

The nonobviousness of a broader claimed range can be supported by evidence based on unexpected results from testing a narrower range if one of ordinary skill in the art would be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof.  In re Kollman, 595 F.2d 48, 201 USPQ 193 (CCPA 1979).

To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range.  In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).

## 1.  Unexpected Results (cont’d)

- The unexpected property or result _must actually be unexpected_ and of statistical and practical significance. See MPEP 716.02(a).
- Synergism is merely a property like any other property – it may be expected or unexpected depending on the particular art.
- The _burden is on the applicant_ to establish that the results are in fact unexpected, unobvious, and of statistical and practical significance. See MPEP 716.02(b).  See also *Ex parte Gelles*, 22 USPQ2d 1318 (Bd. Pat. App. & Inter. 1992).

**Notes:**
A greater than additive effect is not necessarily sufficient to overcome a prima facie case of obviousness because such an effect can either be expected or unexpected.  Applicants must further show that the results were greater than those which would have been expected from the prior art to an unobvious extent, and that the results are of a significant, practical advantage.  See MPEP 716.02(a), Section I.  See also Ex parte The NutraSweet Co., 19 USPQ2d 1586 (Bd. Pat. App. & Inter. 1991).

The absence of a property which a claimed invention would have been expected to possess based on the teachings of the prior art is evidence of unobviousness.  See Ex parte Mead Johnson & Co., 227 USPQ 78 (Bd. Pat. App. & Inter 1985).

Evidence that a compound is unexpectedly superior in one of a spectrum of properties disclosed by the prior art can be enough to rebut a prima facie case of obviousness.  No set number of examples of superiority is required.  See In re Chupp, 816 F.2d 643, 2 USPQ2d 1437 (Fed. Cir. 1987). See MPEP 716.02(a), Section II. 

## 1.  Unexpected Results (cont’d)

- The specification does not need to teach superiority over the prior art, or the advantage of having or using a feature.
- The feature or property in which the superiority or advantage resides must be disclosed, or must inherently flow from the disclosure.
- The specification need not disclose proportions or values as critical for applicants to present evidence showing the proportions or values to be critical.  *In re Saunders, *444 F.2d 599, 170 USPQ 213 (CCPA 1971).
- 	See MPEP 716.02(f).

**Notes:**
Evidence and arguments directed to advantages, which are not disclosed in the specification, of a claimed feature of a device that is disclosed in the specification cannot be disregarded. See In re Chu, 66 F.3d 292, 298-99, 36 USPQ2d 1089, 1094-95 (Fed. Cir. 1995) (Applicant presented evidence that the use of a claimed feature of the device is not a matter of design choice as argued by the examiner.) 

See In re Slocombe, 510 F.2d 1398, 184 USPQ 740 (CCPA 1975). “There is no requirement that superiority over prior art be disclosed in the application; it is enough if the basic property or utility in which the advantage resides is disclosed.” 

See In re Zenitz, 333 F.2d 924, 142 USPQ 158 (CCPA 1964).  Evidence that claimed compound minimized side effects of hypotensive activity must be considered because this undisclosed property would inherently flow from disclosed use as a tranquilizer.  See also Ex parte Sasajima, 212 USPQ 103 (Bd. App. 1981).  

## 2.  Commercial Success

- The declaration should include at least:
- A description of what was sold.
- It must include the features of invention ***as claimed.***
- A description of the relevant market for the product.
- _Sales results_.  The results should include evidence of market share such as**:**
- Total sales for competing products in the market
- Indicate differences between these products and the applicant’s
- Total sales for products embodying the invention
-  Pricing of the various products.
-  Information on advertising within the relevant market.
-  Any other information relevant to the inquiry.
- The key is to show that the success is linked to the claimed invention and not to some extraneous factor.

**Notes:**
In a declaration of commercial success, the declarant attempts to show that the claimed invention has broad acceptance in the marketplace, which is used as evidence of nonobviousness.

Note that the “total sales” can be used for computing market share.  

## 2.  Commercial Success (con’t)

- The declaration must establish a **nexus** between the claimed features of the invention and the commercial success.  See MPEP 716.03(a).
- The commercial success must be due to the ***claimed*** features, and not due to ***unclaimed*** features.  For example, evidence showing commercial success of “cups” is not commensurate in scope with claims directed to “containers” broadly.
- Merely showing that there was commercial success of an article which embodied the invention is not sufficient.  *Ex parte Remark*, 15 USPQ2d 1498 (Bd. Pat. App. & Inter. 1990).

**Notes:**
Generally speaking, if the claims recite a device having features A, B, C, and D, applicant must show that the commercial success was achieved by selling the device having features A, B, C and D, (and not just A, B, and C.)

“Where . . . the claims are directed to a combination of ranges and procedures not shown by the prior art, and where substantial commercial success is achieved at an apparently typical point within those ranges, and the affidavits definitely indicate that operation throughout the claimed ranges approximates that at the particular points involved in the commercial operation, we think the evidence as to commercial success is persuasive.”  In re Hollingsworth, 253 F.2d 238, 240, 117 USPQ 182, 184 (CCPA 1958).

## 2.  Commercial Success (cont’d)

- The examiner should determine that the commercial success is not derived from other factors (see MPEP 716.03(b)),  for example:
- heavy promotion or advertising, or position as market leader before the introduction of the patented product.  See *Pentec, Inc. v. Graphic Controls Corp.,* 776 F.2d 309, 227 USPQ 766 (Fed. Cir 1985).
- brand name recognition
- recent changes in related technology or consumer demand.  See *In re Fielder*, 471 F.2d 690, 176 USPQ 300 (CCPA 1973).
- consumption by purchasers normally tied to applicant or assignee

**Notes:**
Evidence of licensing is a secondary consideration which must be carefully appraised as to its evidentiary value because licensing programs may succeed for reasons unrelated to the unobviousness of the product or process, e.g., license is mutually beneficial or less expensive than defending infringement suits.  EWP Corp. v. Reliance Universal, Inc., 755 F.2d 898, 225 USPQ 20 (Fed. Cir. 1985).

Compare Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 231 USPQ 81 (Fed. Cir. 1986) (Evidence of advertising did not show absence of a nexus between commercial success and the merits of the claimed invention because spending 25-35% of sales on marketing was not inordinate (mature companies spent 17-32% of sales in this market) and advertising served primarily to make industry aware of the product because this is not kind of merchandise that can be sold by advertising hyperbole.)

In design cases, establishing a nexus between commercial success and the claimed invention is especially difficult.  The evidence must clearly be attributable to the design to be of probative value, and not to brand name recognition, improved performance, or some other factor.  Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423, 221 USPQ 97 (Fed. Cir. 1997).

## 2.  Commercial Success (cont’d)

- Gross sales figures do not show commercial success absent evidence as to market share.  *Cable Electric Products, Inc. v. Genmark, Inc*., 770 F.2d 1025, 226 USPQ 881 (Fed. Cir. 1985)
- Inventor’s opinion as to the purchaser’s reason for buying the product, alone, is insufficient to demonstrate a nexus between the sales and the claimed invention.  *In re Huang, *100 F.3d 135, 40 USPQ 2d 1685 (Fed. Cir. 1996)

## 3.  Long-Felt Need and Failure of Others

- A successful showing of long-felt need should include evidence of **three factors**:
- The need must have been a persistent one that was recognized by those of ordinary skill in the art.  See *In re Gershon, 372 F.2d 535, 152 USPQ 602 (CCPA 1967).*
- The long-felt need must not have been satisfied by another before the invention by applicant.  See *Newell Companies v. Kenney Mfg. Co, *864 F.2d 757, 9 USPQ2d 1417 (Fed. Cir. 1988).
- The invention must in fact satisfy the long-felt need.  See *In re Cavanagh, *436 F.2d 491, 168 USPQ 466 (CCPA 1971).
- See MPEP 716.04

## 3.  Long-Felt Need and Failure of Others (cont’d)

- Applicant’s claim that the problem was “first recognized” by him contradicts a showing of long-felt need.
- “Since the alleged problem . . . was first recognized by appellants, and others have not yet become aware of its existence, . . . there could not possibly be any evidence of either a long felt need in the  . . . art for a solution to a problem of dubious existence or failure of others . . . to solve a problem of which they were not aware.” *In re Gershon, *372 F.2d 535, 152 USPQ 602 (CCPA 1967).
- The evidence must show unsuccessful efforts to solve the problem.
- See *Orthopedic Equipment Co., Inc. v. All Orthopedic Appliances, Inc., *707 F.2d 1376, 217 USPQ 1281 (Fed. Cir. 1983) (Although the claimed invention achieved the desirable result, there was no evidence of any prior unsuccessful attempts to do so.)

**Notes:**
The failure to solve a long-felt need may be due to factors such as lack of interest or lack of appreciation of an invention’s potential or marketability rather than want of technical know how.  Scully Signal Co. v. Electronics Corp. of America, 570 F.2d 355, 196 USPQ 657 (1st. Cir. 1977).

Presence of legislative regulations for controlling sulfur dioxide emissions did not militate against existence of long-flet need to reduce the sulfur content in the air.  Environmental Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 218 USPQ 865 (Fed.Cir. 1983).

Fact that affidavit supporting contention of fulfillment of long-felt need was sworn by a licensee adds to the weight to be accorded the affidavit, as long as there is a bona fide licensing agreement entered into at arm’s length.  In re Tiffin, 443 F.2d 344, 170n USPQ 88 (CCPA 1971)

Long-felt need is analyzed as of the date the problem is identified and articulated, and there is evidence of efforts to solve that problem, not as of the date of the most pertinent prior art references.  Texas Instruments Inc. v. Int’l Trade Comm’n, 988 F.2d 1165, 26 USPQ2d 1018, (Fed. Cir. 1993). 

## 3.  Long-Felt Need and Failure of Others (cont’d)

- The existence of a prior art reference showing a solution to the problem is evidence that there is no long-felt need.
- Evidence of persistent need may be a series of patents or publications showing the problem to be solved and a solution which declarant claims is inoperable.

## 4.  Inoperability of References

- Every patent is presumed to be valid and operable. Allegations that a U.S. patent is inoperative should be treated with **considerable skepticism**. See MPEP 716.07.
- The declaration must show that the steps a person of ordinary skill would take in attempting to achieve the claimed results would not result in an operative invention.
- If a desired result is not immediately obtained, a skilled worker would make certain adaptations. The failures of experimenters who have no interest in succeeding should not be accorded great weight.  See *in re Michalek, *162 F.2d 229, 74 USPQ 107 (CCPA 1947).

**Notes:**
Examiners should not express opinions on the operablility of a patent.  Applicants may attempt to rebut a rejection by saying that the reference relied upon by the examiner is inoperative.

The relevant teachings of the reference must actually be inoperative.

A mere showing that it is possible to operate within the reference disclosure without obtaining the alleged product does not overcome the presumption that a process will produce the product described therein.  See In re Weber, 405 F.2d 1403, 160 USPQ 549 (CCPA 1969).

Declarations must rebut the presumption of operability by a preponderance of the evidence.  In re Sasse, 629 F.2d 675, 207 USPQ 107 (CCPA 1980).

## 4.  Inoperability of References (cont’d)

- Where a declaration asserts inoperability in features of the reference that are not relied upon, **the reference is still effective as to other features which are operative.** See *In re Shephard, *172 F.2d 560, 80 USPQ 495 (CCPA 1949).
- Applicant’s claims must distinguish from the alleged inoperative disclosure.  See *In re Crosby*, 157 F.2d 198, 71 USPQ 73 (CCPA 1946).
- If a patent teaches the claimed invention, a declaration by patentee that he did not intend the disclosed invention to be used as claimed by applicant is immaterial.  See *In re Pio, *217 F.2d 956, 104 USPQ 177 (CCPA 1954).

**Notes:**
For example, if the reference teaches several embodiments or features, one of which is shown to be inoperable, and if the examiner is not relying on the inoperable embodiment or feature to teach the claimed invention, the declaration does not overcome the presumption of operability because the other embodiments or features are operable.  The reference is still effective as to the other embodiments or features.  

Compare In re Yale, 434 F.2d 66, 168 USPQ 46 (CCPA 1970) (Correspondence from a co-author of a literature article confirming that the article misidentified a compound through a typographical error that would have been obvious to one of ordinary skill in the art was persuasive evidence that the erroneously typed compound was not put in the possession of the public.)  

## 5.  Skepticism of Experts

- “Expressions of disbelief by experts constitute strong evidence of nonobviousness.”  *Environmental Designs, Ltd. v. Union Oil Co. of Cal., *713 F.2d 693 218 USPQ 865 (Fed.Cir. 1983).
- “The skepticism of an expert, expressed before these inventors proved him wrong, is entitled to fair evidentiary weight, . . . as are the five to six years of research that preceded the claimed invention.”  *In re Dow Chemical Co., *837 F.2d 469, 5 USPQ 2d 1529 (Fed.Cir. 1988).
- 	See MPEP 716.05.

## 6.  Copying 

- The declaration must show more than the mere fact of copying. The examiner should determine that the copying is not attributable to other factors such as:
- lack of concern for patent property
- contempt for patentees ability to enforce patent
- 	See *Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 226 USPQ 881 (Fed. Cir. 1985).*
- Evidence of copying was persuasive when alleged infringer tried for a substantial length of time to design a product similar to the claimed invention, but failed and then copied the invention instead.  See *Dow Chemical Co. v. American Cyanamid Co., *837 F.2d 459, 2 USPQ2d 1350 (Fed. Cir. 1987).
- 	See MPEP 716.06.

**Notes:**
To show copying, one must show:
  That applicant had invented prior to the copying
B)  That the alleged copier had access to the invention (or description thereof)

In other words, evidence must show that accused copier derived knowledge of the invention from applicant, either directly or indirectly.

## Allowing in a Post-KSR World

- While KSR may provide strong support for obviousness rejections, claims will still be _allowable_ because:
- Insufficient facts, or a persuasive showing by applicant countering one or more findings of fact.
- Consider:
- Have the claims been given their broadest reasonable interpretation?  Is there a special definition?
- Is there confidence in the search?  Did you search for the missing feature by itself?
- Have the references been properly interpreted and considered for common sense conclusions and what they would teach to those in the art?

**Notes:**
Can’t make a prima facie case if facts are missing after references, Official Notice, common sense are all considered.

## Allowing in a Post-KSR World

- ...claims can be _allowable_ because (cont’d):
- Secondary considerations, e.g. commercial success, long felt need, and unexpected results.
- Recall that the KSR rationales rely on “predictable results” or an “expectation of success”.  Secondary considerations may be used to address this.
- See MPEP 716 through 716.04 for tips on evaluating the persuasiveness of secondary considerations.

## Summary

- Examples of Rationales supported by the KSR vs. Teleflex.
- 37 CFR 132 Affidavits
- Allowing in a Post KSR World

## 
Thank you

***Thank you***