103 strategies

Effective Response Tactics
• (1) Combining prior art elements according
to known methods to yield predictable
results
– One or more element not in prior art
– Combination not according to known methods
– Results not predictable

(2) Simple substitution of one known
element for another to obtain predictable
results
– One or more element not in prior art
– Substitution not “simple”
• Requires inventive activity; modification of other
elements
• Contrary to common sense
• Destroys intended purpose of one or both references
– Results not predictable

(3) Use of known technique to improve
similar devices
– Technique is not known
– Devices not similar
– Technique not applicable to this device
• Requires inventive activity; modification of other
elements
• Contrary to common sense
• Destroys intended purpose of reference

(6) Known work in one field of endeavor may
prompt variations of it for use in either the same
field or a different one based on design
incentives or other market forces if the variations
would have been predictable to one of ordinary
skill in the art
– Work not actually known
– No recognition of problem to prompt variation
– Application of known work to different field
contravenes common sense in context of proposed
combination / modification of prior art
– Variations not predictable

(7) Some teaching, suggestion, or motivation in
the prior art that would have led one of ordinary
skill to modify the prior art reference or to
combine prior art reference teachings to arrive at
the claimed invention (similar to old test)
– Modification / combination contravenes common
sense
– Modification / combination destroys intended purpose
of prior art
– No TSM shown in prior art, and examiner provides no
convincing line of reasoning to support

(4) Applying a known technique to a known
device ready for improvement to yield
predictable result
– Device is not known
• At least one element missing
– Technique is not known, or
– Application of known technique to this device
contravenes common sense
– Result not predictable

• (5) “Obvious to try”—choosing from a finite
number of identified, predictable solutions,
with a reasonable expectation of success
– Number of solutions not finite
– Solution not identified
– No reasonable expectation of success
• Solution contravenes common sense in the context
of the proposed combination/modification of prior
art

Prima facie obviousness still requires showing
apparent reason for combination
– Contest this if not shown by examiner
– Do not accept conclusory statements of obviousness

• Dispute all un-supported assertions by examiner
– Legal conclusions
• Existence of TSM
• Common sense
• Level of skill in the art
– Factual conclusions
• Finite number of known solutions
• Known work in field
• Predictability of results
• Rule 1.104(d)(2)
– Allows applicant to request affidavit from Examiner in support of
statements made based on personal knowledge
– Often forces Examiner to find additional prior art and issue new,
non-final office action