Editing MPEP 2145

<noinclude>{{MPEP Section|2144|2100|2146}}</noinclude>

==[[MPEP 2145|2145 Consideration of Applicant’s Rebuttal Arguments]]==

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===I. ARGUMENT DOES NOT REPLACE EVIDENCE WHERE EVIDENCE IS NECESSARY===

Attorney argument is not evidence unless it is an 
admission, in which case, an examiner may use the 
admission in making a rejection. See [[MPEP_2129|MPEP § 2129]] and [[MPEP 2144#2144.03 Reliance on Common Knowledge in the Art or "Well Known" Prior Art|§ 2144.03]] for a discussion of admissions as prior art. 

The arguments of counsel cannot take the place of 
evidence in the record. In re Schulze, 346 F.2d 600, 
602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 
116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) 
(“An assertion of what seems to follow from common 
experience is just attorney argument and not the kind 
of factual evidence that is required to rebut a prima 
facie case of obviousness.”). See MPEP § 716.01(c)
for examples of attorney statements which are not evidence 
and which must be supported by an appropriate 
affidavit or declaration.

===II. ARGUING ADDITIONAL ADVANTAGES OR LATENT PROPERTIES===

Prima Facie Obviousness Is Not Rebutted by Merely 
Recognizing Additional Advantages or Latent Properties 
Present in the Prior Art

Mere recognition of latent properties in the prior art 
does not render nonobvious an otherwise known 
invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 
658 (CCPA 1979) (Claims were directed to grooved 
carbon disc brakes wherein the grooves were provided 
to vent steam or vapor during a braking action. A 
prior art reference taught noncarbon disc brakes 
which were grooved for the purpose of cooling the 
faces of the braking members and eliminating dust. 
The court held the prior art references when combined 
would overcome the problems of dust and overheating 
solved by the prior art and would inherently overcome 
the steam or vapor cause of the problem relied 
upon for patentability by applicants. Granting a patent 
on the discovery of an unknown but inherent function 
(here venting steam or vapor) “would remove from 
the public that which is in the public domain by virtue 
of its inclusion in, or obviousness from, the prior art.” 
596 F.2d at 1022, 201 USPQ at 661.); In re Baxter 
Travenol Labs., 952 F.2d 388, 21 USPQ2d 1281 (Fed. 
Cir. 1991) (Appellant argued that the presence of 
DEHP as the plasticizer in a blood collection bag 
unexpectedly suppressed hemolysis and therefore 
rebutted any prima facie showing of obviousness, 
however the closest prior art utilizing a DEHP plasticized 
blood collection bag inherently achieved same 
result, although this fact was unknown in the prior 
art.).

“The fact that appellant has recognized another 
advantage which would flow naturally from following 
the suggestion of the prior art cannot be the basis for 
patentability when the differences would otherwise be 
obvious.” Ex parte Obiaya, 227 USPQ 58, 60 (Bd. 
Pat. App. & Inter. 1985) (The prior art taught combustion 
fluid analyzers which used labyrinth heaters to 
maintain the samples at a uniform temperature. 
Although appellant showed an unexpectedly shorter 
response time was obtained when a labyrinth heater 
was employed, the Board held this advantage would 
flow naturally from following the suggestion of the 
prior art.). See also Lantech Inc. v. Kaufman Co. of 
Ohio Inc., 878 F.2d 1446, 12 USPQ2d 1076, 1077 
(Fed. Cir. 1989), cert. denied, 493 U.S. 1058 (1990) 
(unpublished — not citable as precedent) (“The recitation 
of an additional advantage associated with 
doing what the prior art suggests does not lend patentability 
to an otherwise unpatentable invention.”).

In re Lintner, 458 F.2d 1013, 173 USPQ 560 
(CCPA 1972) and In re Dillon, 919 F.2d 688, 
16 USPQ2d 1897 (Fed. Cir. 1990) discussed in MPEP 
§ 2144 are also pertinent to this issue.

See MPEP § 716.02 - § 716.02(g) for a discussion 
of declaratory evidence alleging unexpected results.

===III. ARGUING THAT PRIOR ART DEVICES ARE NOT PHYSICALLY COMBINABLE===

“The test for obviousness is not whether the features 
of a secondary reference may be bodily incorporated 
into the structure of the primary reference.... 
Rather, the test is what the combined teachings of 
those references would have suggested to those of 
ordinary skill in the art.” In re Keller, 642 F.2d 413, 
425, 208 USPQ 871, 881 (CCPA 1981). See also In reSneed, 710 F.2d 1544, 1550, 218 USPQ 385, 389 
(Fed. Cir. 1983) (“[I]t is not necessary that the inventions 
of the references be physically combinable to 
render obvious the invention under review.”); and In 
re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 
1973) (“Combining the teachings of references does 
not involve an ability to combine their specific structures.”).

However, the claimed combination cannot change 
the principle of operation of the primary reference or 
render the reference inoperable for its intended purpose. 
See MPEP § 2143.01. 

===IV. ARGUING AGAINST REFERENCES INDIVIDUALLY===

One cannot show nonobviousness by attacking references 
individually where the rejections are based on 
combinations of references. In re Keller, 642 F.2d 
413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 
Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).

===V. ARGUING ABOUT THE NUMBER OF REFERENCES COMBINED===

Reliance on a large number of references in a rejection 
does not, without more, weigh against the obviousness 
of the claimed invention. In re Gorman, 933 
F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991) (Court 
affirmed a rejection of a detailed claim to a candy 
sucker shaped like a thumb on a stick based on thirteen 
prior art references.).

===VI. ARGUING LIMITATIONS WHICH ARE NOT CLAIMED===

Although the claims are interpreted in light of the 
specification, limitations from the specification are 
not read into the claims. In re Van Geuns, 988 F.2d 
1181, 26 USPQ2d 1057 (Fed. Cir. 1993) (Claims to a 
superconducting magnet which generates a “uniform 
magnetic field” were not limited to the degree of magnetic 
field uniformity required for Nuclear Magnetic 
Resonance (NMR) imaging. Although the specification 
disclosed that the claimed magnet may be used in 
an NMR apparatus, the claims were not so limited.); 
Constant v. Advanced Micro-Devices, Inc., 848 F.2d 
1560, 1571-72, 7 USPQ2d 1057, 1064-1065 (Fed. 
Cir.), cert. denied, 488 U.S. 892 (1988) (Various limitations 
on which appellant relied were not stated in 
the claims; the specification did not provide evidence 
indicating these limitations must be read into the 
claims to give meaning to the disputed terms.); Ex 
parte McCullough, 7 USPQ2d 1889, 1891 (Bd. Pat. 
App. & Inter. 1987) (Claimed electrode was rejected 
as obvious despite assertions that electrode functions 
differently than would be expected when used in nonaqueous 
battery since “although the demonstrated 
results may be germane to the patentability of a battery 
containing appellant’s electrode, they are not germane 
to the patentability of the invention claimed on 
appeal.”).

See MPEP § 2111 - § 2116.01, for additional case 
law relevant to claim interpretation.

===VII. ARGUING ECONOMIC INFEASIBILITY=== 

The fact that a combination would not be made by 
businessmen for economic reasons does not mean that 
a person of ordinary skill in the art would not make 
the combination because of some technological 
incompatibility. In re Farrenkopf, 713 F.2d 714, 
219 USPQ 1 (Fed. Cir. 1983) (Prior art reference 
taught that addition of inhibitors to radioimmunoassay 
is the most convenient, but costliest solution to 
stability problem. The court held that the additional 
expense associated with the addition of inhibitors 
would not discourage one of ordinary skill in the art 
from seeking the convenience expected therefrom.).

===VIII. ARGUING ABOUT THE AGE OF REFERENCES===

“The mere age of the references is not persuasive of 
the unobviousness of the combination of their teachings, 
absent evidence that, notwithstanding knowledge 
of the references, the art tried and failed to solve 
the problem.” In re Wright, 569 F.2d 1124, 1127, 193 
USPQ 332, 335 (CCPA 1977) (100 year old patent 
was properly relied upon in a rejection based on a 
combination of references.). See also Ex parte Meyer, 
6 USPQ2d 1966 (Bd. Pat. App. & Inter. 1988) (length 
of time between the issuance of prior art patents relied 
upon (1920 and 1976) was not persuasive of unobviousness).

===IX. ARGUING THAT PRIOR ART IS NONANALOGOUS===

A prior art reference is analogous if the reference is 
in the field of applicant’s endeavor or, if not, the reference 
is reasonably pertinent to the particular problem 
with which the inventor was concerned. In re Oetiker, 
977 F.2d 1443, 1446, 24 USPQ2d 1443, 1445 (Fed. 
Cir. 1992). 

See MPEP § 2141.01(a) for case law pertaining to 
analogous art.

===X. ARGUING IMPROPER RATIONALES FOR COMBINING REFERENCES===

====A.Impermissible Hindsight====

Applicants may argue that the examiner’s conclusion 
of obviousness is based on improper hindsight 
reasoning. However, “[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). 
Applicants may also argue that the combination of 
two or more references is “hindsight” because 
“express” motivation to combine the references is 
lacking. However, there is no requirement that an 
“express, written motivation to combine must appear 
in prior art references before a finding of obviousness.” 
See Ruiz v. A.B. Chance Co., 357 F.3d 1270, 
1276, 69 USPQ2d 1686, 1690 (Fed. Cir. 2004). For 
example, motivation to combine prior art references 
may exist in the nature of the problem to be solved 
(Ruiz at 1276, 69 USPQ2d at 1690) or the knowledge 
of one of ordinary skill in the art (National Steel Car 
v. Canadian Pacific Railway Ltd., 357 F.3d 1319, 
1338, 69 USPQ2d 1641, 1656 (Fed. Cir. 2004)). See 
MPEP § 2143.01 for a discussion of proper motivation 
to combine references.

====B.Obvious To Try Rationale====

An applicant may argue the examiner is applying 
an improper “obvious to try” rationale in support of 
an obviousness rejection.

“The admonition that ‘obvious to try’ is not the 
standard under § 103 has been directed mainly at two 
kinds of error. In some cases, what would have been 
‘obvious to try’ would have been to vary all parameters 
or try each of numerous possible choices until one 
possibly arrived at a successful result, where the prior 
art gave either no indication of which parameters 
were critical or no direction as to which of many possible 
choices is likely to be successful.... In others, 
what was ‘obvious to try’ was to explore a new technology 
or general approach that seemed to be a promising 
field of experimentation, where the prior art 
gave only general guidance as to the particular form 
of the claimed invention or how to achieve it.” In reO’Farrell, 853 F.2d 894, 903, 7 USPQ2d 1673, 1681 
(Fed. Cir. 1988) (citations omitted) (The court held 
the claimed method would have been obvious over 
the prior art relied upon because one reference contained 
a detailed enabling methodology, a suggestion 
to modify the prior art to produce the claimed invention, 
and evidence suggesting the modification would 
be successful.). See the cases cited in O’Farrell for 
examples of decisions where the court discussed an 
improper “obvious to try” approach. See also In re Eli 
Lilly & Co., 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 
1990) and In re Ball Corp., 925 F.2d 1480, 
18 USPQ2d 1491 (Fed. Cir. 1991) (unpublished) for 
examples of cases where appellants argued that an 
improper “obvious to try” standard was applied, but 
the court found that there was proper motivation to 
modify the references. 

====C.Lack of Suggestion To Combine References====

As discussed in MPEP § 2143.01, 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 or 
combine reference teachings. The Federal Circuit has 
produced a number of decisions overturning obviousness 
rejections due to a lack of suggestion in the prior 
art of the desirability of combining references, as discussed 
in the aforementioned section.

====D.References Teach Away from the Invention or Render Prior Art Unsatisfactory for Intended Purpose====

In addition to the material below, see MPEP 
§ 2141.02 (prior art must be considered in its entirety, 
including disclosures that teach away from the 
claims) and MPEP § 2143.01 (proposed modification 
cannot render the prior art unsatisfactory for its 
intended purpose or change the principle of operation 
of a reference).

'''1.The Nature of the Teaching Is Highly Relevant'''

A prior art reference that “teaches away” from the 
claimed invention is a significant factor to be considered 
in determining obviousness; however, “the 
nature of the teaching is highly relevant and must be 
weighed in substance. A known or obvious composition 
does not become patentable simply because it has 
been described as somewhat inferior to some other 
product for the same use.” In re Gurley, 27 F.3d 551, 
554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994) (Claims 
were directed to an epoxy resin based printed circuit 
material. A prior art reference disclosed a polyester-
imide resin based printed circuit material, and taught 
that although epoxy resin based materials have 
acceptable stability and some degree of flexibility, 
they are inferior to polyester-imide resin based materials. 
The court held the claims would have been obvious 
over the prior art because the reference taught 
epoxy resin based material was useful for applicant’s 
purpose, applicant did not distinguish the claimed 
epoxy from the prior art epoxy, and applicant asserted 
no discovery beyond what was known to the art.).

Furthermore, “the prior art’s mere disclosure of 
more than one alternative does not constitute a teaching 
away from any of these alternatives because such 
disclosure does not criticize, discredit, or otherwise 
discourage the solution claimed….” In re Fulton, 
391 
F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. 
Cir. 2004).

'''2.References Cannot Be Combined Where Reference Teaches Away from Their Combination'''

It 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) (The claimed catalyst which contained 
both iron and an alkali metal was not suggested 
by the combination of a reference which taught the 
interchangeability of antimony and alkali metal with 
the same beneficial result, combined with a reference 
expressly excluding antimony from, and adding iron 
to, a catalyst.). 

'''3.Proceeding Contrary to Accepted Wisdom Is Evidence of Nonobviousness'''

The totality of the prior art must be considered, and 
proceeding contrary to accepted wisdom in the art is 
evidence of nonobviousness. In re Hedges, 783 F.2d 
1038, 228 USPQ 685 (Fed. Cir. 1986) (Applicant’s 
claimed process for sulfonating diphenyl sulfone at a 
temperature above 127ºC was contrary to accepted 
wisdom because the prior art as a whole suggested 
using lower temperatures for optimum results as evidenced 
by charring, decomposition, or reduced yields 
at higher temperatures.).

Furthermore, “[k]nown disadvantages in old 
devices which would naturally discourage search for 
new inventions may be taken into account in determining 
obviousness.” United States v. Adams, 383 
U.S. 39, 52, 148 USPQ 479, 484 (1966).

<noinclude>{{MPEP Section|2144|2100|2146}}</noinclude>