1. What Is MPEP 2143?
2. The Seven Tests of Obviousness
3. Can I Appeal a 103 Rejection?
4. What Should I Do to File a 103 Appeal?

What Is MPEP 2143?

MPEP 2143 is about "the basic requirements of a prima facie case of obviousness." MPEP stands for "Manual of Patent Examining Procedure," and section 2143 discusses how unique an invention has to be to get a patent

Not every new idea deserves a patent. For instance, think of a table fan that can oscillate 120 degrees. If you invent a fan that oscillates 180 degrees but is exactly the same otherwise, that's too obvious to patent even if it hasn't been done before. You might get a patent if you invent a fan that oscillates a full 360 degrees, but that's because you'd have to invent a new gear system to make it work.

"Obviousness" is hard to pin down, and that's by design. New inventions can be very subjective, so the patent office wants examiners and courts to have plenty of leeway. After all, too few patents means no innovation since no one can protect their inventions. However, too many means no one will want to manufacture their inventions out of fear of infringement lawsuits. Passing the obviousness test can be easy or hard depending on when you apply. If you fail, you'll get a 35 U.S.C. § 103 rejection notice.

The first obviousness test came from the 1851 Supreme Court case Hotchkiss v. Greenwood. This case said that ceramic doorknobs were too obvious to get a patent since metal and wooden doorknobs already existed. Congress created the first obviousness law in 1952, stating an invention is too obvious if a person with normal skill could have used prior art (existing inventions and processes) to come up with it. This is still the backbone of today's rules.

The Supreme Court determined the three big rules for deciding obviousness in Graham v. John Deere Co.:

  1. Research the scope and content of the prior art.
  2. Figure out how it relates to the patent in question.
  3. Decide what an "average skill level" means for the field.

After this, the Court of Customs and Patent Appeals came up with the teaching-suggestion-motivation (TSM) test. Until recently, this test was the gold standard for obviousness. However, that changed in 2007 with the Supreme Court ruling on KSR v. Tieleflex. The Court determined the TSM test shouldn't be a strict measuring stick, leading to a revision to MPEP 2143 that stands to this day. They also redefined the Person Having Ordinary Skill In The Art (PHOSITA) standard as someone willing to try any combination of prior arts to solve a problem instead of only the prior arts used to solve the problem before.

In 2017, the Supreme Court ruled again, this time to say that "obvious to a skilled artisan" can mean different things in different fields, especially if the things to combine are obscure instead of common. Just because a programmer could combine two programs doesn't mean he or she would have without hindsight. If few people have heard of a prior art program, someone who adds it to a common program could make a case for a patent.

The Seven Tests of Obviousness

Right now, the MPEP has seven "exemplary rationales," or tests, that can help people understand whether an invention is obvious or not.

  1. If you combine existing inventions and processes and end up with something anyone could have predicted, it's too obvious. So if you put a tweeter and woofer speaker in the same case and get a big speaker with a great sound range, that's too obvious for a patent.
  2. If you replace one part of an invention with something else and get a predictable result, that's too obvious. For instance, replacing the cooling system of a refrigerator with a more efficient cooling system will get you a more efficient refrigerator, but it won't get you a patent.
  3. If you use a known technique to improve a product the same way another product has improved, that's too obvious. So if you use potassium to strengthen a pane of glass and a glass bottle, those don't get separate patents.
  4. If you use a known technique on a known product, even if it's the first time, you don't get a patent if the result is predictable. Let's say you have a new kind of cloth that's extra strong and you decide you can use it for extra-strong seat belts. You can have a patent on the cloth, but not on the seat belts.
  5. "Obvious to try." This one is a little hard to explain, but if you choose a new but known and predictable answer to a problem, you don't get a patent. So if you rebuild a vending machine so snack bags don't snag as often but you don't use any new parts, that probably won't get a patent.
  6. If you apply knowledge from one field in a different field, if anyone in your field could have done it, and if the results are predictable, that isn't enough for a patent. For instance, using car painting chemicals and techniques on a model car to give it a realistic coat won't earn a patent, although you might get a patent if you invent new tools to paint the models.
  7. The teaching-suggestion-motivation test: Something in the prior art is enough to suggest an improvement someone with normal skill could work out. The table fan example fits in this category. This test used to be the most important one, but now it's seven out of seven.

It's worth pointing out that this list isn't exclusive. The patent office and trial juries can and will use other tests if these aren't enough to say if an invention is obvious or not.

The "obvious to try" argument can become complicated when it comes to fields like genetics. The case of In re Kubin was about using a known protein and known DNA strands, which would qualify as "obvious to try," but the unpredictability of biology complicates things. As such, the Federal Circuit ruled that "obvious to try" doesn't apply when there are many possible solutions but no way of knowing which ones will work and the prior art offers general guidance instead of specific ideas.

This decision applies to "unpredictable arts" like biology and pharmacology, fields where you can't know what will happen until you do a lot of testing and you need plenty of patients because each person can react differently. The Federal Circuit also defined "a finite number of solutions" as "small or easily traversed" in the case Ortho-McNeil Pharm. v. Mylan Labs. This means if there are technically a set number of solutions to a problem but it's hard and expensive to test them all, that won't count against you for obviousness.

The case In re Brimonidine Patent Litigation put these definitions to the test. The appellee wanted separate patents for its products Alphagan and Alphagan P (an improved version of Alphagan). The second product added chemicals from a third product, Refresh Tears, which was often prescribed at the same time. It also changed the pH balance in a way many people wanted. However, the Federal Circuit upheld the patents since combining drugs is too risky to be obvious even if many people use both drugs at the same time. If failure is very possible in an unpredictable art, you cannot "anticipate success."

"Anticipating success" is also important in how it's different from the USPTO's "reasonable expectation of success." "Anticipating success" can be a higher bar to reach, and so a patent lawyer can sometimes use this difference to reverse a rejection. So long as the prior art teaches or suggests something other than the invention's success, even if it's not by much or other references predict success, this skepticism can be enough to overturn a rejection.

Can I Appeal a 103 Rejection?

If the U.S. Patent and Trademark Office (USPTO) rejects your patent application under 35 U.S.C. § 103, your examiner has decided your invention is too obvious. You can work on your invention to make it more unique, but you can also appeal this decision if you think the examiner made a mistake. MPEP 2143 also has several examples for how you can make your case.

  • Combining existing inventions demands new techniques and exceptional skill. Imagine you have an existing smartphone and an existing battery pack that has more power than the one in the smartphone. Only swapping them out won't get a patent. However, if you need to figure out how to get rid of all the extra heat the new battery puts out, solving that problem will earn you a patent.
  • The new invention would be useless based on how the prior art worked. The example in MPEP 2143 is a blood filter that works like an upside-down gasoline filter. The gasoline had to flow down through the filter so the impurities would settle at the bottom and pure gas would leave the filter. However, the blood filter had to face up to let gasses collect at the top. Because an upside-down gasoline filter wouldn't work, the blood filter counts as a new invention.
  • The new invention combines existing products for an unusual result. You can combine a laser range-finder and a computer mouse, but using that to create an optical mouse isn't (or wasn't) an obvious result.
  • Just because someone with a normal skill level can combine existing products into a new invention doesn't make the combination obvious. If you come up with a crazy idea like building a bottle rocket out of household items, you can patent it without having to be a rocket scientist.
  • A "reasonable expectation of success." For a new invention to be predictable, the new design needs a reasonable expectation of success. This means the inventor was sure the new product would work at that time. That last part is important, because there are plenty of things that are obvious in hindsight (like combining chocolate and peanut butter). Let's say you invent a bungee cord that can tow a car using existing materials. There's a reasonable chance the cord will snap or fall off, but if the cord works perfectly, it can seem obvious in hindsight that it would.
  • The "all elements" test. Prior art has to suggest or predict all the claims and limitations of a new invention. If one part of it is unusual or unexpected, it can earn a patent. If the efficient refrigerator from before somehow works as an air filter even though the existing refrigerator and cooling system don't, that's worthy of a patent.
  • The "prior art" isn't actually prior art. There's a year's delay between filing an application and publishing it publicly, plus approving or rejecting a patent can take years. If an examiner doesn't check the dates, he or she might reject your application based on one submitted after yours.

Something else the USPTO has to do with a 103 rejection is tell you what's too obvious about your invention. This lets you argue against their points in an appeal. However, sometimes inventors get a rejection without an explanation. When this happens, you can ask the examiner for a new office action, a new rejection notice that explains the examiner's ruling. This can also work in the inventor's favor since a second rejection won't be a prima facie, or first look at the invention.

Another way to handle an incomplete 103 rejection is to cite decisions made by the Board of Patent Appeals and Interferences (BPAI) that overturn rejections that have no explanations. In decisions like In re Wada and Murphy, the BPAI says examiners have to include prior art examples and point out how they teach or suggest all the features and limitations of the invention. A 2007 Supreme Court decision for the case KSR Int'l v. Teleflex Inc. also says an obviousness rejection needs "articulated reasoning" that spells out what makes the invention obvious.

What Should I Do to File a 103 Appeal?

  • The first thing you should do is read the reasons and take a good look at the prior art examples the examiner gives you. Patents are all about information, so arm yourself well. If the rejection doesn't have enough information, you can ask for a new office action. The examiner needs to give you concrete, logical reasons to make a rejection valid.
  • Next, approach each point and use the tests in MPEP 2143 for yourself to see if the examiner is right. If they are, you don't have to argue against it. Remember, your invention only needs one unique and non-obvious quality to get a patent.
  • If you think the examiner is wrong, explain why point-by-point.
  • If the examiner is right on all points, your best bet is to redesign your invention and send in a new application.
  • A possible but weak defense is secondary considerations. These include a strong and unmet demand for your invention, the chance for commercial success, or the fact that all other attempts to create your invention failed. This is a weak defense because it doesn't address the obviousness problem, but it was part of the Supreme Court's Graham ruling and can sometimes help.
  • A better argument is to suggest the examiner is using hindsight and the combination of designs wasn't obvious before your invention. This is particularly effective if one of the designs suggests the combination would be bad, like the gasoline filter above.
  • Keep in mind the overall purpose and design of prior art examples and emphasize this in your rebuttal. This can help because it lets you point out that taking part of an invention out of context and combining it with something very different is less obvious. You can also use this to argue that changing the purpose of an invention is not obvious.
  • The best defense is to find a new and unique function your product offers that the examiner may have overlooked.

Before you file your appeal, you should speak to your patent lawyer and get help for ironing out the details. And if you don't have a patent lawyer yet, you should definitely get one. Fortunately, you can find the best around waiting for you to post your job here on UpCounsel. Only the top 5 percent of lawyers are part of UpCounsel's marketplace, and the average experience level is 14 years.