There are at least six strategies for overcoming rejections for obviousness.
1. An applicant may try to point out the element or limitation that is not obvious.
2. An applicant may amend the claims to cover a nonobvious invention.
3. An applicant may attempt to swear behind one of the references.
4. An applicant may provide secondary evidence of nonobviousness.
5. An applicant may attempt to establish that one or more of the references were made by the same inventive entity.
6. An applicant may attempt to establish that one of the references is nonanalogous art.
Again, statements that are made during prosecution can limit the scope of the claims. Consequently, the latter four strategies are the most desirable strategies to pursue.
Overcoming Obviousness Rejection
Thomas Joseph is a patent attorney in Pittsburgh, Pa. He maintains a solo practice in all areas of intellectual-property law. He has been practicing since 2001. Before starting his solo practice, Joseph was the General Counsel of Grant Street Group, a financial software firm. At Grant Street Group, he managed the company’s patent litigation against its primary competitors in the online-auction markets for tax certificates, foreclosures, tax deeds and municipal bonds. Joseph received a Bachelor of Science in Metallurgical Engineering and Materials Science from Carnegie Mellon University, a Master of Science in Materials Science and Engineering from the University of Florida and a Juris Doctorate from George Washington University.
You can contact him at www.joseph-iplaw.com.
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