Conclusory Obviousness Statements

Second, regarding the Examiner’s obviousness argument, the MPEP requires explicit analysis, and not conclusory statements. As MPEP § 2142 states:
The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. ___, ___, 82 USPQ2d 1385, 1396 (2007) noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Federal Circuit has stated that "rejections on obviousness cannot be sustained with mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). See also KSR, 550 U.S. at ___ , 82 USPQ2d at 1396 (quoting Federal Circuit statement with approval).
One conclusory statement made by the Examiner in support of the obviousness rejection is, “However, it would have been obvious to one of ordinary skill that Shoff-Schein would have been motivated to limit the number of times an icon is shown during a particular broadcast if the user did not respond the first time.” This conclusory statement is not supported by explicit analysis or "articulated reasoning with some rational underpinning." The statement merely concludes that one would be motivated to conceive the invention of claim 25. The Examiner’s subsequent two sentences at the bottom of page 6 of the Action do not provide explicit analysis as they are totally unrelated to the claim language (for example, see the emphasized language from claim 25 above), instead they are related to options available on a television guide display.
It appears that the Examiner is trying to establish a prima facie case of obviousness under one of the exemplary rationales illustrated in MPEP § 2143. Specifically, the Examiner appears to be relying on rationale (E) or (F). Rationale (E) requires the following findings, and “If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.” MPEP § 2143(E):
(1) a finding that at the time of the invention, there had been a recognized problem or need in the art, which may include a design need or market pressure to solve a problem;
(2) a finding that there had been a finite number of identified, predictable potential solutions to the recognized need or problem;
(3) a finding that one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success; and
(4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
Under rationale (E), the Examiner has not established at least findings (1) and (2). Regarding finding (1), the Examiner has not provided any evidence that there was a recognized problem or need in the art, such as a need to not unduly disrupt the viewer by repeated display of an icon indicating auxiliary content. Applicants recognized this problem (Application, original claim 9 and page 16, lines 3-15). However, relying on Applicant’s recognition of this problem to satisfy (1) would be impermissible hindsight. As MPEP § 2142 states (emphasis added):
To reach a proper determination under 35 U.S.C. 103, the examiner must step backward in time and into the shoes worn by the hypothetical "person of ordinary skill in the art" when the invention was unknown and just before it was made. In view of all factual information, the examiner must then make a determination whether the claimed invention "as a whole" would have been obvious at that time to that person. Knowledge of applicant's disclosure must be put aside in reaching this determination, yet kept in mind in order to determine the "differences," conduct the search and evaluate the "subject matter as a whole" of the invention. The tendency to resort to "hindsight" based upon applicant"s disclosure is often difficult to avoid due to the very nature of the examination process. However, impermissible hindsight must be avoided and the legal conclusion must be reached on the basis of the facts gleaned from the prior art.
Regarding finding (2), the Examiner has not provided any evidence that there were a finite number of identified solutions to the problem. First, there is no evidence that the prior art even recognized the problem (see previous paragraph). Second, even if the prior art did recognize the problem, the identified solutions were to display an icon throughout a program or fade it out after a set time period (Shoff at col. 9, lines 41-53), or to generally display an icon on a television screen (Schein at col. 20, lines 29-44). The Examiner has not pointed to any evidence describing the claimed solution as an identified, predictable potential solution in the prior art. For at least these reasons, the Examiner has failed to establish a prima facie case of obviousness under Rationale (E).
Rationale (F) requires the following findings, and “If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.” MPEP § 2143(F):
(1) a finding that the scope and content of the prior art, whether in the same field of endeavor as that of the applicant's invention or a different field of endeavor, included a similar or analogous device (method, or product);
(2) a finding that there were design incentives or market forces which would have prompted adaptation of the known device (method, or product);
(3) a finding that the differences between the claimed invention and the prior art were encompassed in known variations or in a principle known in the prior art;
(4) a finding that one of ordinary skill in the art, in view of the identified design incentives or other market forces, could have implemented the claimed variation of the prior art, and the claimed variation would have been predictable to one of ordinary skill in the art; and
(5) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
Under rationale (F), the Examiner has not established at least findings (2) and (3). Regarding finding (2), the Examiner has not identified any design incentives or market forces which would have prompted adaptation to result in the invention of claim 25. In the Action, page 8, the Examiner concludes that design incentives or market forces exist, but does not provide any evidence of either. The Examiner merely points to Applicants identification of a problem and Applicants claimed solution (need to not unduly disrupt the viewer by repeated display of an icon indicating auxiliary content). The Examiner’s approach is not valid because it uses impermissible hindsight by relying on the Application.
Regarding finding (3), once again the Examiner has not provided any evidence of known variations or principles that would encompass differences between claim 25 and the prior art. The only options pointed to by the Examiner were to display an icon throughout a program or fade it out after a set time period (Shoff at col. 9, lines 41-53), or to generally display an icon on a television screen (Schein at col. 20, lines 29-44). For at least these reasons, the Examiner has failed to establish a prima facie case of obviousness under Rationale (F).
For at least the reasons discussed above, the Examiner has not established a prima facie case of obviousness with regards to claim 25. Because the Examiner has not established a prima facie case, Applicants are under no obligation to provide evidence of nonobviousness. As MPEP § 2142 states:
The examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness. If the examiner does not produce a prima facie case, the applicant is under no obligation to submit evidence of nonobviousness.