How Do You Overcome a 35 U.S.C. 103 Patent Obviousness Rejection?
- Alan Yomtobian
- Mar 30
- 6 min read
By Alan Yomtobian, Esq. - Patent Bar No. 81,255
KEY TAKEAWAYS
A patent obviousness rejection under 35 U.S.C. 103 means the USPTO examiner believes your claimed invention would have been obvious to a person having ordinary skill in the art (PHOSITA) based on a combination of prior art references. Overcoming this rejection requires demonstrating that the examiner either failed to establish a proper motivation to combine the references, mischaracterized the teachings of the prior art, or overlooked objective indicia of non-obviousness such as unexpected results, commercial success, or long-felt but unsolved need. Since the Supreme Court's decision in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), examiners have broader latitude to combine references, making well-reasoned arguments more critical than ever. Approximately 70% of all substantive patent rejections involve obviousness.
What Does a 35 U.S.C. 103 Obviousness Rejection Actually Mean?
An obviousness rejection means the examiner has identified two or more prior art references that, when combined, would allegedly render your claimed invention obvious. The examiner must articulate a reason why a person of ordinary skill would have been motivated to combine the references in the way claimed by your invention.
Under the framework established by KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), the examiner is not limited to rigid teaching-suggestion-motivation (TSM) analysis. The Supreme Court held that "common sense" and "ordinary creativity" of a skilled artisan can provide motivation to combine. However, the examiner must still provide an articulated reasoning with a rational underpinning — conclusory statements that it would have been "obvious to combine" are insufficient under MPEP 2143.
The Graham v. John Deere Co., 383 U.S. 1 (1966), framework requires the examiner to determine: (1) the scope and content of the prior art, (2) the differences between the claims and the prior art, (3) the level of ordinary skill in the art, and (4) objective indicia of non-obviousness (secondary considerations).
What Are the Five Best Strategies to Overcome a Patent Obviousness Rejection?
The five most effective strategies are: (1) challenge the motivation to combine, (2) show teaching away, (3) demonstrate unexpected results, (4) argue missing claim limitations, and (5) present secondary considerations of non-obviousness.
Strategy 1: Challenge the Motivation to Combine
Even after KSR broadened the standard, the examiner must explain why a skilled artisan would combine the specific teachings in the specific way claimed. If the references are from different technical fields, address different problems, or would require significant modification to combine, the motivation argument weakens. Under In re Kahn, 441 F.3d 977 (Fed. Cir. 2006), there must be "some articulated reasoning with some rational underpinning."
Strategy 2: Show Teaching Away
If either reference explicitly discourages or teaches away from the combination the examiner proposes, the rejection fails. Under In re Fulton, 391 F.3d 1195 (Fed. Cir. 2004), a reference need not expressly forbid the combination, but if it "criticizes, discredits, or otherwise discourages" the approach, that weighs against obviousness.
Strategy 3: Demonstrate Unexpected Results
Under MPEP 716.02, evidence that the claimed combination produces results that would not have been predicted by a skilled artisan is powerful evidence of non-obviousness. The results must be "truly unexpected" and commensurate in scope with the claims.
Strategy 4: Argue Missing Claim Limitations
Carefully map every claim limitation to the cited references. If any element is missing and the examiner relies on "common knowledge" without citation, challenge that reliance under In re Zurko, 258 F.3d 1379 (Fed. Cir. 2001).
Strategy 5: Present Secondary Considerations
Objective indicia including commercial success, long-felt but unsolved need, failure of others, copying by competitors, licensing activity, and industry praise all weigh against obviousness under Graham v. John Deere. These are especially powerful when supported by declarations under 37 CFR 1.132.
How Do You Draft a Persuasive Claim-by-Claim Response?
Draft your response by addressing each rejected claim individually, mapping every limitation to the specific prior art passage the examiner cited, and explaining precisely where the examiner's reasoning fails. A structured, methodical response is far more persuasive than general arguments.
Follow this framework for each claim:
1. Quote the exact claim language at issue
2. Quote the exact passage from each cited reference the examiner relies upon
3. Explain why the cited passage does not teach or suggest the claim limitation
4. If amending, show the original specification support for the new language
5. Explain why the amended claim overcomes the specific combination
The remarks section should be organized rejection by rejection, not claim by claim, when multiple claims share the same rejection basis. This avoids redundancy and keeps the examiner focused on your strongest arguments.
When Should You Amend Claims vs. Argue Without Amendment?
Amend claims when the prior art genuinely discloses the broad claim language but does not disclose a narrower, commercially valuable embodiment described in your specification. Argue without amendment when the examiner has mischaracterized the prior art or failed to establish proper motivation to combine.
Arguments without amendment are preferred because they preserve the broadest claim scope and avoid prosecution history estoppel under Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002). However, targeted amendments that add specific distinguishing features can be more efficient when the prior art coverage is strong.
The decision matrix:
· Prior art clearly covers broad claim: Amend to narrower embodiment
· Examiner misreads the reference: Argue with detailed rebuttal
· Motivation to combine is weak: Argue with technical reasoning
· Prior art is close but missing a specific feature: Amend to add that feature
· Multiple rejections on same claim: Amend + Argue in combination
Should You Request an Examiner Interview for Obviousness Rejections?
Yes. Examiner interviews are particularly effective for obviousness rejections because the core dispute often involves the examiner's interpretation of highly technical prior art. A 15-minute phone call can clarify misunderstandings that would require pages of written argument.
During the interview, present a side-by-side visual comparison of your invention versus the cited prior art combination. Highlight the specific technical differences that make the combination non-obvious. If the examiner agrees that certain amended claim language would overcome the rejection, document that agreement in the interview summary and incorporate it into your formal response.
According to USPTO data, examiner interviews in the context of obviousness rejections result in allowance approximately 25-35% more often than written-only responses. The key is preparation: enter the interview with proposed amendments already drafted and ready for the examiner to review.
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FAQ: Patent Obviousness Rejections
Q: What is the KSR standard for obviousness?
A: KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), expanded the obviousness analysis beyond the rigid teaching-suggestion-motivation test. Examiners can now rely on common sense, design incentives, and market forces to argue that combining prior art references would have been obvious.
Q: How many prior art references can an examiner combine?
A: There is no statutory limit, but combining more than three references raises the risk of impermissible hindsight reconstruction. The more references needed, the stronger the argument that the combination was not obvious. See In re Gorman, 933 F.2d 982 (Fed. Cir. 1991).
Q: What are secondary considerations of non-obviousness?
A: Objective indicia including commercial success, long-felt but unsolved need, failure of others, copying, licensing, industry praise, and unexpected results. These must have a nexus to the claimed invention under In re Huai-Hung Kao, 639 F.3d 1057 (Fed. Cir. 2011).
Q: Can I submit a declaration to overcome an obviousness rejection?
A: Yes. Under 37 CFR 1.132, you can submit expert or inventor declarations presenting evidence of unexpected results, commercial success, or other secondary considerations that weigh against obviousness.
Q: What if the examiner issues a final rejection maintaining the 103 rejection?
A: Your options include filing a Request for Continued Examination (RCE), appealing to the Patent Trial and Appeal Board (PTAB), or negotiating with the examiner through a post-final interview. PTAB reversal rates for obviousness rejections range from 30-40%.
Q: Is hindsight bias a valid argument against obviousness?
A: Absolutely. Under In re Dembiczak, 175 F.3d 994 (Fed. Cir. 1999), "hindsight reconstruction" — using the inventor's own disclosure as a roadmap to combine references — is impermissible. This is a powerful argument when the examiner's combination mirrors your exact invention too precisely.
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Legal Disclaimer: This article is for informational purposes only and does not constitute legal advice. No attorney-client relationship is formed by reading this content. Patent law is complex and fact-specific; consult a qualified patent attorney for advice on your particular situation.
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