I first overviewed the misapplication of In re Keller back in 2010 on The Patent Prospector. At that time practitioners were faced with the tail end of a 3-4 year steep decline in patent allowance rate. While current allowance rates (about 65%, depending on who you might ask) do not match pre-KSR rates of the 90’s and early 00’s, PTO has rebounded off the ~2009 bottom and is very reasonably close to historical norms.
Still, years later I continue to cringe whenever I receive an office action (or read a PTAB decision) that continues the facade of In re Keller, especially when the case is otherwise in condition for allowance.
II. Office Action - Response
In an office action there stands a good chance of finding a §103(a) obviousness rejection for one or more claims. And it’s a fair argument that the ‘stronger’ patent is one that has been through the ringer a bit (and often times as practitioners we draft claims intended to bump up against the boundary of patentability).
Once a prima facie (initial) case of obviousness is properly established by an Examiner, the burden shifts to the Applicant to rebut it with objective evidence of nonobviousness. There are any number of ways to formulate a response to an obviousness rejection, with most having tried some form of this rationale along the way in their career:
- amend an independent claim to include an element or limitation believed not taught or suggested by the cited art;
- explain to the Examiner that Primary Reference A does not teach the element/limitation, and that Secondary Reference B does not teach the element/limitation; and
- argue the claims are patentable over the References for a number of reasons, including that the references do not teach all of the elements and limitations.
That is, while the prior art need not teach or suggest all of the claim limitations explicitly, it is a common strategy to form a response that includes evidence in the form of argument directed against each reference, and an explanation why the invention as claimed should be patentable thereover. The Applicant is not precluded from stating that none of the references, separately or in combination, teach the invention as claimed. After all, the MPEP expressly states, "[t]he reply [to the office action] must present arguments pointing out the specific distinction believed to render the claims patentable over any applied references."
On occasion a subsequent office action might be sent to the Applicant that states nothing more than what was recited in the first office action, with an added blurb of "can't attack references individually" followed by a citation to In re Keller (or its counterpart, In re Merck).
Examiner's use software that provides boilerplate rejection language from the MPEP, including Form Paragraph ("FP") 7.37.13, which states "[i]n response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references." The case law cited in support of the FP are In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); and In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
III. In Re Keller
FP 7.37.13 is erroneous and in contradiction to MPEP 2141(II)(C)(IV). While true that In re Keller (and related) states “one cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references”, this phrase did not follow “[i]n response to applicant's arguments against the references individually,” (emphasis on the inclusion of plural ‘s’). Instead, Keller et al. referred to a ‘reference’ (singular). This is a critical distinction that is lost in translation.
In re Keller (and In re Merck, for that matter) stands for the proposition that, where a rejection under 35 U.S.C. § 103 is based on a combination of references (expressly or impliedly), the § 103 cannot be overcome by providing rebuttal evidence against the rejection in the form of attack against only an individual (secondary) reference.
Looking closer at the facts of In re Keller, the Appellant requested reissue of U.S. Patent 3,557,796 because of newly discovered prior art previously not examined during the initial prosecution. The Examiner rejected claims under 35 U.S.C. § 251 because of an insufficient reissue declaration, and also rejected claims as obvious under 35 U.S.C. § 103. In making the obviousness rejection, the Examiner relied upon the teachings of two primary references, each one combined with a secondary reference. In response, the Appellant submitted evidence of non-obviousness to rebut the prima facie case of obviousness that consisted only of a single affidavit that was only in regard to the secondary reference.
The CCPA affirmed the Board's decision that, under the facts of the case, one cannot show objective evidence of non-obviousness by "attacking references individually" when the rejection is based upon a combination. In other words, the rebuttal evidence that consisted only of a single affidavit that only attacked the single secondary reference was insufficient evidence of non-obviousness to overcome the rejection.
IV. Digging Deeper
The MPEP is not erroneous by stating “One cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references”, with citation to In re Keller. Even so I would argue that it should more clearly match what the Keller court was saying, which is:
One cannot show nonobviousness by only attacking an individual reference where the rejection(s) is based on a combination of references.
The problem comes with the conversion of the MPEP wording into FP 7.37.13 by the addition of “In response to applicant’s arguments against the references individually”, which results in the Examiner being led to a false narrative. One can hardly fault an Examiner for an error in a PTO form paragraph resulting from a misreading of the case law.
In digging deeper, the Keller court cited to In re Young, which provides, “
“Appellants have failed to appreciate that they cannot show nonobviousness by attacking the references individually where the rejection is based on a combination of references”
Alas neither Goepfrich nor Mapelsden have anything to do with rebuttal evidence that attacked references individually.
V. The Wrap-up
Regrettably an argument against a rejection made (or held) by an Examiner in connection with In re Keller is likely to go nowhere (hard to blame the Examiner when the tools he/she are provided are in error), and I have yet to encounter a case where an appeal on the point of Keller makes sense. And so the facade continues.
© 2017 John M. DeBoer
John DeBoer is an attorney admitted with the Texas State Bar. He is a Partner with Rao DeBoer Osterrieder, a law firm in Houston, Texas specializing in intellectual property law. Contact John via Email.
The views expressed in this article are those of the author and do not reflect the views of Rao DeBoer Osterrieder, PLLC, or any of its clients. All rights reserved.
 642 F.2d 413 USPQ 871 (CCPA 1981)
 KSR Int'l v. Teleflex Inc., 127 S.Ct. 1727, 1739, 75 U.S.L.W. 4289 (2007)
 Typically with multiple references, such as Primary Reference A and Secondary Reference B
 Repeating the process for all other cited references
 MPEP 2141(II)(C)(III)
 MPEP 2141(II)(C)(IV)
 Keller at 422-23
 Id. at 425-426
 56 CCPA 757, 403 F.2d 754, 159 USPQ 725 (1968)
 136 F.2d 918, 30 CCPA 1181 (1943)
 329 F.2d 321, 51 CCPA 1123 (1964)