DONNER Combating Obviousness Rejections

I. Introduction

Accordingly, the Examiner has not made the initial requisite factual findings and as such, we agree with Appellants that the Examiner failed to “establish prima facie obviousness” as required for a proper rejection under § 103(a). App. Br. 6. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (the examiner has the initial duty of supplying the requisite factual basis and may not, because of doubts that the invention is patentable, resort to speculation, unfounded assumptions, or hindsight reconstruction to supply deficiencies in the factual basis).

A. Supreme Court Reviews Obviousness: Suggestion/Motivation Test Should Not Be Applied Rigidly, But the Reason for the Combination Should Be Explicit
B. Examination Guidelines for Determining Obviousness Under 35 USC 103 in View of the Supreme Court Decision in KSR International Co. v. Teleflex Inc.
1. Rationales for Issuing an Obviousness Rejection
a. Combining Prior Art Elements According to Known Methods to Yield Predictable Results
b. Simple Substitution of One Known Element for Another to Obtain Predictable Results
c. Use of Known Technique to Improve Similar Devices (Methods, or Products) in the Similar Way
d. Applying a Known Technique to a Known Device (Method, or Product) Ready for Improvement to Yield Predictable Results