The most common type of rejection that patent applications receive is a so called “obviousness” rejection.  I.e., the Examiner asserts that it would have been “obvious to one of skill in the art” to produce the claimed invention.  However, the process taken by the USPTO in making obviousness rejections is somewhat divorced from a layperson’s understand of what it means to be obvious.

Ideally, obviousness would mean that one of skill in the art would be able to recognize the problem and come up with the same solution.  In reality, recognizing a problem is normally the first inventive step and even then, many potential solutions would be appropriate.  Nevertheless, the USPTO simply looks for prior art references that disclose the same elements that you are claiming.  I.e., your claim has parts A, B and C.  They are looking for references with parts A, B and C (either together or separately).  The PURPOSE or intended uses of the elements as disclosed in the references are irrelevant (this is well established in both the law and by the courts).  So for example, a machine that includes part A is relevant as prior art, even though the intended use of the part is different.  Likewise a prior art element that is not used explicitly for the same result but could be is considered to disclose the element.  This often falls short of the ideal; however, it is a simple system to implement and train Examiners in and the USPTO expects applicants to note when the process is leading to an unintended result (i.e., they would rather the applicant pay to challenge the rejection rather that implementing more costly processes make sure that each rejection is completely sound).

Generally speaking, the Examiner will simply state the combination of references renders the claims obvious unless the references are nonanalagous to one another (or the claimed invention) or unless the Examiner has to use the combination of too many references (which usually means more than 4-5).  I.e., if the Examiner needs six references to make a rejection based on obviousness he/she will normally instead issue the claims.  So the strategy sometimes becomes making the claims narrow enough that the Examiner has to use more references than he/she is comfortable using.

This is critical for inventors to understand.  Otherwise, we may receive a rejection and the inventors will feels that because the Examiner is pulling from portions of multiple references that the Examiner doesn’t understand the invention or that the reference aren’t applicable.  In contrast, when a client understands the process, it often becomes clear how to overcome the rejection when the process does lead to incorrect results.

Registered with the USPTO, first as a patent agent and then as a patent attorney, since April 10, 2006 and licensed in Washington as an attorney since November 16, 2006. I have worked for a large firm and now have a solo practice.