By Stephen B. Schott
One justification for a patent office rejection is the brick wall, "It would have been obvious for a person of ordinary skill in the art to combine these references." This is a tough statement to overcome for any would-be patentee hoping to argue that an examiner improperly combined two (or more) references in issuing an obviousness rejection.
But the Federal Circuit just gave applicants a boost in In re Nuvasive, Inc.
Motivation to Combine Background
The Supreme Court, in its 2007 KSR Int’l Co. v. Teleflex Inc. case, considered the standard for when it is acceptable to combine references in forming an obviousness rejection. “[It] can be important to identify a reason that would have prompted [a person having ordinary skill in the art] to combine the elements in the way the claimed new invention does.”
Nuvasive and a Higher Threshold
The Federal circuit stated that "the PTAB “must examine the relevant data and articulate a satisfactory explanation for its action including a rational connection between the facts found and the choice made." As most applicants know, this threshold is a higher bar than the boilerplate sentence that usually justifies the combination of references in a rejection. The Federal Circuit addressed such boilerplate rationale for combinations and found it wanting: "'[C]onclusory statements 'alone are insufficient and, instead, the finding must be supported by a “reasoned explanation.” (citing In re Lee.)
The next time you're faced with a questionable combination of references, don't despair: Cite Nuvasive and question the justification: Ask for the rational connection between the facts found and choice to combine the references.
If you have questions, contact me.
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