What is a Section 103 Rejection?
The Graham factors, what KSR changed about combining references, the arguments that actually work (motivation, teaching away, unexpected results), and the ones that do not.
Definition
A Section 103 rejection is an examiner's determination that a claimed invention, while not identically disclosed in any single reference, would have been obvious to a person having ordinary skill in the art at the time of filing in view of one or more prior art references, and is therefore unpatentable under 35 U.S.C. § 103. It is the most common substantive rejection in US prosecution.
Key Facts
- Statute: 35 U.S.C. § 103; the analysis follows Graham v. John Deere (1966) and KSR v. Teleflex (2007)
- Graham factors: The scope and content of the prior art, the differences between the art and the claim, the level of ordinary skill, and objective evidence of non-obviousness
- Combining references: The examiner must articulate a reason a skilled person would have combined or modified the references with a reasonable expectation of success; hindsight is not permitted
- KSR rationales: Combining known elements to yield predictable results, simple substitution, obvious to try among a finite number of predictable solutions, and design incentives or market forces, among others
- Frequency: Obviousness appears in the majority of US office actions and is the ground most often appealed
- Also in litigation and IPR: Obviousness is the dominant invalidity theory at the Patent Trial and Appeal Board
Anatomy of the Rejection
The examiner cites a primary reference that discloses most of the claim, one or more secondary references for the missing elements, and a rationale for combining them. A proper rejection identifies where each element is found, acknowledges what is missing, and explains why a skilled person would have supplied it. Rejections that skip any of these steps are vulnerable on their face.
Arguments That Work
- Missing element: The combination still lacks a claim element, or the examiner's reading of an element is unreasonable
- No motivation to combine: The stated reason is conclusory, or the references address different problems and nothing in the art suggests joining them
- Teaching away: A reference discourages the proposed modification or leads in a different direction
- Inoperability or changed principle: The combination would not work, or would destroy the primary reference's purpose
- No reasonable expectation of success: Especially in unpredictable arts such as chemistry and biotechnology
- Secondary considerations: Unexpected results, long-felt but unsolved need, failure of others, commercial success tied to the claimed features, industry praise, and copying, supported by declaration evidence and a nexus to the claims
Arguments That Do Not
Attacking references individually when the rejection relies on the combination; arguing that the references are old; asserting the invention is better without evidence; and pointing to features in the specification that are not in the claim.
Amend or Argue
Amending to add a limitation missing from every cited reference usually wins allowance faster than argument, at the cost of scope and a prosecution history that narrows the claim. Arguing preserves scope but often takes a request for continued examination or an appeal. Examiner-level data settles the choice: some examiners allow after a strong argument, others only after an amendment. Examiner analytics show which kind you have, and ArcPrime's office action response tooling drafts the element-by-element comparison and the motivation-to-combine analysis from the cited references.
Frequently Asked Questions
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What are the Graham factors?
From Graham v. John Deere (1966): the scope and content of the prior art, the differences between the prior art and the claims, the level of ordinary skill in the art, and secondary considerations such as commercial success, long-felt need, and unexpected results. Every obviousness determination is supposed to work through them.
What did KSR change about obviousness?
KSR v. Teleflex (2007) rejected a rigid requirement that the prior art contain an explicit teaching, suggestion, or motivation to combine references. Examiners and courts may rely on common sense and the predictable use of known elements, but must still articulate a reason with a rational basis, and hindsight remains impermissible.
How do you respond to an obviousness rejection?
Check that every claim element is actually found in the cited combination; challenge the stated motivation to combine; look for a reference that teaches away; and, where available, submit declaration evidence of unexpected results or other secondary considerations tied to the claimed features. If the art is too close, amend to add a limitation none of the references disclose.
What is a person having ordinary skill in the art?
A hypothetical person presumed to know all the relevant prior art and to have the typical education and experience of a practitioner in the field, such as an engineer with a bachelor's degree and a few years of experience. Obviousness is judged from this person's perspective at the time of filing, not from the inventor's.
What are secondary considerations of non-obviousness?
Objective evidence that the invention was not obvious: commercial success, long-felt but unsolved need, failure of others, unexpected results, industry praise, licensing by competitors, and copying. The evidence must have a nexus to the claimed features, and it must be considered whenever presented.
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