35 USC 103 Non-Obviousness

Home » Resources » Patent Prosecution » 35 USC 103 Non-Obviousness

35 USC 103 Non-Obviousness

Section 103 focuses on the obviousness of the invention.  In showing this element, the Examiner is permitted to pull many references together to teach the claimed invention.  Specifically, the M.P.E.P. provides:

An invention that would have been obvious to a person of ordinary skill at the time of the invention is not patentable. See 35 U.S.C. 103(a).  As reiterated by the Supreme Court in KSR, the framework for the objective analysis for determining obviousness under 35 U.S.C. 103 is stated in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966). Obviousness is a question of law based on underlying factual inquiries. The factual inquiries enunciated by the Court are as follows:

(A) Determining the scope and content of the prior art; and

(B) Ascertaining the differences between the claimed invention and the prior art; and

(C) Resolving the level of ordinary skill in the pertinent art.[1]M.P.E.P. § 2141(II).  

The whole focus of 103 is whether the invention as a whole is simply obvious.  If our invention was a chair in the cockpit of a plane, would the prior art sources of a regular chair and a chair in a car be sufficient to show a cockpit chair?  We won’t resolve that question here.  The point is simply that obviousness takes the invention and compares it to the known prior art, and then asks quite succinctly, “is it obvious.”  In summation, “[t]he proper analysis is whether the claimed invention would have been obvious to one of ordinary skill in the art after consideration of all the facts.”[2]M.P.E.P. § 2141(III).

In making this rather seemingly global determination, the M.P.E.P. indicated that “[f]actors other than the disclosures of the cited prior art may provide a basis for concluding that it would have been obvious to one of ordinary skill in the art to bridge the gap.”[3]M.P.E.P. § 2141(III).   Further, one or more rationales may be used for obviousness, including:

(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 same way;

(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;

(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;

(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;

(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.[4]M.P.E.P. § 2141(III).

Additionally, it is helpful to remember who has the burden at this stage of prosecution:

Once Office personnel have established the Graham factual findings and concluded that the claimed invention would have been obvious, the burden then shifts to the applicant to (A) show that the Office erred in these findings or (B) provide other evidence to show that the claimed subject matter would have been nonobvious. 37 CFR 1.111(b) requires applicant to distinctly and specifically point out the supposed errors in the Office’s action and reply to every ground of objection and rejection in the Office action. The reply must present arguments pointing out the specific distinction believed to render the claims patentable over any applied references.

If an applicant disagrees with any factual findings by the Office, an effective traverse of a rejection based wholly or partially on such findings must include a reasoned statement explaining why the applicant believes the Office has erred substantively as to the factual findings. A mere statement or argument that the Office has not established a prima facie case of obviousness or that the Office’s reliance on common knowledge is unsupported by documentary evidence will not be considered substantively adequate to rebut the rejection or an effective traverse of the rejection under 37 CFR 1.111(b). Office personnel addressing this situation may repeat the rejection made in the prior Office action and make the next Office action final. See M.P.E.P. § 706.07(a).[5]M.P.E.P. § 2141(IV).

If you are like me, the first I read through these requirements, I thought, “so the USPTO basically combines prior art sources and says ‘looks obvious to me’ and then the applicant can respond with ‘nope, doesn’t look obvious to me.’”  One of the inherent features of obviousness is that there is some degree of subjectivity.  What I see as obvious may not be what you see as obvious.  For this precise reason, when dealing with 103 rejections, an objective point of view is used.  This mythical objective viewpoint is known as “a person having ordinary skill in the art to which said subject matter pertains.”[6]35 U.S.C. § 103(a).   Commonly, a person having ordinary skill in the art is shortened to the acronym “POSITA” or “PHOSITA.”

The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. Factors that may be considered in determining the level of ordinary skill in the art may include: (1) “type of problems encountered in the art;” (2) “prior art solutions to those problems;” (3) “rapidity with which innovations are made;” (4) “sophistication of the technology; and” (5) “educational level of active workers in the field.” In re GPAC, 57 F.3d 1573, 1579, 35 USPQ2d 1116, 1121 (Fed. Cir. 1995). ” In a given case, every factor may not be present, and one or more factors may predominate.” Id.. See also Custom Accessories, Inc. v. Jeffrey-Allan Industries, Inc., 807 F.2d 955, 962, 1 USPQ2d 1196, 1201 (Fed. Cir. 1986); Environmental Designs, Ltd. V. Union Oil Co., 713 F.2d 693, 696, 218 USPQ 865, 868 (Fed. Cir. 1983).[7]M.P.E.P. § 2141(II)(C).

So the arguments are not based on your perception or my perception of what is obvious but rather are based on the perception of a PHOSITA.

With the above considerations in mind, let’s go over some strategies associated with 103 rejections.  First, let’s work on the organization of our response.  In prior editions of the M.P.E.P., the following teaching-suggestion-motivation (“TSM”) test was given:

“[t]o establish a prima facie case of obviousness, three basic criteria must be met. First, there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify reference or to combine reference teachings. Second, there must be a reasonable expectation of success. Finally, the prior art reference (or references when combined) must teach or suggest all the claim limitations. The teaching or suggestion to make the claimed combination and the reasonable expectation of success must both be found in the prior art, and not based on applicant’s disclosure.[8]M.P.E.P. § 2142-3 (8th ed.).

I would note upfront that the TSM test is no longer the standard test for obviousness.[9]See, e.g., KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) (rejecting the rigid TSM as the standard test).   Nonetheless, this standard TSM test is great because it breaks down the analysis into three distinct and separate inquiries that can be addressed by the practitioner.  For this reason, many practitioners have continued to use this same test as it used to be applied.

To give you a slightly more full perspective, if we do not apply the TSM test, then we go back to the Graham case and apply what was indicated there.  Unfortunately, although the Graham case is beneficial to stepping through the obviousness process, it does not set forth a clear test.[10]See, e.g., “Responding to Post­KSR Obviousness Rejections before the USPTO—What Now?,” Miller Matthais & Hull White Paper, last accessed 04/27/2013, available at … Continue reading  As such, although the TSM may not be a standard test, it is at least some test that can be used to analyze the obviousness of the invention.

In analyzing the first requirement, provide arguments that show that the art of record neither teaches nor suggest all of the limitations of the claim.  Additionally, provide arguments that show that the Examiner has insufficiently shown the motivation to combine the listed prior art sources.  Generally, arguments relating to this subsection are not typically given unless there the two art sources really are not synonymous.  For example, prior art source A may deal with car alarms and source B deals with baby monitoring systems, and they are being combined to teach the claimed invention.  Although there may be some overlap (e.g. both deal with some level of monitoring, etc.), the problems and issues faced in each of those subject areas may not necessarily be harmonious to teaching the claimed invention.  In our above example, a problem/issue solved in the car alarm system (e.g. prevent break-ins, etc.) may be very different than a baby monitoring system (e.g. alert parent of baby activity, etc.).  So look in the listed prior art sources to see if it actually makes sense to combine them.

Some general questions you can use in your analysis are:

  1. Are the prior art sources in the same field (e.g. scientific expertise)?
  2. What problem was each of the sources trying to solve?
  3. Did the prior art source limit the possibility of doing a disclosed embodiment in a different manner (i.e. did the prior source give no indication to do it in a different manner, such as is disclosed in the second reference)?

Some other topics that may arise in your analysis may include:

Teaches Away

If one prior art source actually includes a teaching that is non analogous to the second prior art source, this section may be applied.  M.P.E.P. 2145 provides that “[i]t is improper to combine references where the references teach away from their combination. In re Grasselli, 713 F.2d 731, 743, 218 USPQ 769, 779 (Fed. Cir. 1983).”[11]M.P.E.P. § 2145 (X)(D)(2).

Unsatisfactory for Intended Purpose

If the Examiner construes the prior art source in a certain manner, it may prevent the prior art invention from working as it was intended.  In such an instance, this argument may be used.  “If proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification. In re Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984).”[12]M.P.E.P. § 2143.01(V).

Principle of Operation

This section deals with construing the principle operation of the prior art source.  For example, let’s say the claimed invention is a flexible material whereas the prior art source showed a rigid non flexible material.  To change the prior art source to being flexible would be inconsistent with what the prior art source had been intended for.  “If the proposed modification or combination of the prior art would change the principle of operation of the prior art invention being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious. In re Ratti, 270 F.2d 810, 123 USPQ 349 (CCPA 1959).”[13]M.P.E.P. § 2143.01(VI).

Improper Hindsight

An easy tendency is to view the claimed invention and then to look backwards and reason that it surely would have been obvious to combine reference A and B to produce C.  However, the Examiner is not permitted in any way to use hindsight rationale.  Just because it is obvious presently to combine the references does not mean that it was obvious in the past.  In responding to such an assertion, provide the following:

“[a]ny judgement on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.” In re McLaughlin 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971).[14]M.P.E.P. § 2145(X).

The second Graham requirement deals with whether one reading the prior art sources would have a reasonable expectation of success in modifying/combining the references as proposed by the Examiner.

Obviousness does not require absolute predictability, however, at least some degree of predictability is required. Evidence showing there was no reasonable expectation of success may support a conclusion of nonobviousness. In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976).[15]M.P.E.P. § 2143.02(II).

Additionally, “[w]hether an art is predictable or whether the proposed modification or combination of the prior art has a reasonable expectation of success is determined at the time the invention was made.”[16]M.P.E.P. § 2143.02(III).  

The third Graham requirement deals with whether the prior art sources teach all of the claimed limitations.  This is usually the most straight forward of the three requirements.  The M.P.E.P. explains:

‘All words in a claim must be considered in judging the patentability of that claim against the prior art.’ In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970). If an independent claim is nonobvious under 35 U.S.C. 103, then any claim depending therefrom is nonobvious. In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988).[17]M.P.E.P. § 2143.03.

For example, prior art sources A and B may have been provided to teach elements X1-5.  However, in analyzing your claim set, neither source A or source B provide element X4.  As such, you can make arguments that simply show that neither prior art source teaches the claimed element.

A general outline may be something like:

Examiner has rejected claim X (under 35 U.S.C. § 103(a)) for being unpatentable over REF[1], and further in view of REF[2].

With respect to claim X, the following excerpts were relied on by the Examiner to make a prior art showing of applicant’s claimed “[claim element].”

[Provide prior art excepts that supposedly teach the element.]

However, [excepts (as indicated above)] do not teach claim element X4. Such an outline may not only be used with respect to the just the third requirement of the TSM test but potentially many of your other requirements (e.g. 102 test analysis, etc.) as well.  Hopefully it gives you a general idea of how to structure your argument.


1 M.P.E.P. § 2141(II).
2 M.P.E.P. § 2141(III).
3 M.P.E.P. § 2141(III).
4 M.P.E.P. § 2141(III).
5 M.P.E.P. § 2141(IV).
6 35 U.S.C. § 103(a).
7 M.P.E.P. § 2141(II)(C).
8 M.P.E.P. § 2142-3 (8th ed.).
9 See, e.g., KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) (rejecting the rigid TSM as the standard test).
10 See, e.g., “Responding to Post­KSR Obviousness Rejections before the USPTO—What Now?,” Miller Matthais & Hull White Paper, last accessed 04/27/2013, available at http://www.millermatthiashull.com/inbrief/1/KSRWhitePaper.pdf.
11 M.P.E.P. § 2145 (X)(D)(2).
12 M.P.E.P. § 2143.01(V).
13 M.P.E.P. § 2143.01(VI).
14 M.P.E.P. § 2145(X).
15 M.P.E.P. § 2143.02(II).
16 M.P.E.P. § 2143.02(III).
17 M.P.E.P. § 2143.03.