Of course, this three-prong approach is much
easier to enunciate than to practice. Consequently,
much time and effort is typically spend during the
prosecution of a patent application trying to con-
vince the Examiner that the rejection of the claims
onthe basis ofobviousness is incorrect becauseone
or more of the Deere prongs has failed. Steps (1)
and (2) of the Deere analysis tend to be fairly
straightforward. However, it is in the third step
that a judgment call must be made by the Examiner
which presents the most problems. Even if the
applicant and Examiner agree on steps (1) and
(2), the conclusion to be drawn therefrom is rarely
easily agreed upon. Obviousness, like beauty,
appears to be more often than not in the eye of
the Examiner-beholder. The matter is made worse
by the organization of patent applications, which
are usually drafted by first stating the background
of the invention, which may include a description
of the closest prior art and some unresolved pro-
blem therewith, followed by a statement of the
invention. It should not be too surprising that an
Examiner, presented with both a statement of a
problem and the solution to the problem, would
respond by concluding that the solution is obvious.
Most of us have probably had a similar response
upon being shown the solution to a trivial geo-
metric puzzle, which, of course, up to that moment
had completely baffled us. Hindsight in deciding
the question of obviousness, as in many other
endeavors, is 20/20. (In Europe, the Examiner’s
approach to a determination of obviousness is
based on ‘the problem to be solved’. The pro-
blem/solution organization just described makes
it easier for the European Examiner to find the
claims ‘lacking in inventive step’.)
The task then is to convince the Examiner to
reconsider the obviousness rejection. Many
approaches are possible. (In the following exam-
ples, the claimed invention is a compound and the
prior art discloses structurally similar compounds.
However, analogous arguments can be made for
process claims, composition claims, etc.)
The simplest arguments are based on structural
differences. For example, the reference compound
contains an alkyl substituent at the position where
the claimed compound contains an aryl group. The
argument is that alkyl does not suggest aryl.
Similarly, arguments can be made that ‘C’ does
not suggest ‘S’; ‘2-phenyl’ does not suggest
‘3-phenyl’; ‘S’ does not suggest ‘O’; ‘S’ does not
suggest ‘SO 2 ’ and so on.
An argument based on structural differences
becomes more compelling if related to physical
properties such as biological activity. For example,
the reference compound had no activity, had a
different activity, had the same but less activity or
had a side effect not exhibited by the claimed
compound. Note that as the rejection is based on
what is disclosed in the prior art, the applicant can
use what is disclosed in the art to construct an
argument. Thus, if the reference discloses that the
compound has an ED 50 of 100mg/kg and the
claimed compound has an ED 50 of 10mg/kg, an
argument based on the enhanced activity of the
claimed compound can be made without actually
having to generate data to determine the already
disclosed ED 50 of the reference compound.
Another argument may be that the prior art
actually taught away from the invention; for exam-
ple, the compounds were known to be toxic or
unstable, or there was a progression in the refer-
ences away from the invention (e.g. the claimed
compound contains a methyl substituent, whereas
the earliest of three references cited against the
applicant teaches an alkyl group at the same posi-
tion of 4–7 carbons, the second reference teaches
10–15 carbons and the latest reference teaches
20–30 carbons).
Another, albeit weaker, approach is to argue
from ‘secondary considerations’. It brings in such
secondary considerations as the commercial suc-
cess of the invention, that therewas a long-felt need
in the art for a solution to some problem, the failure
of others to solve whatever problem the invention
solves, and so on.
Any of the above arguments can be made, and
usually are, in combination with some limitations
on the scope of the claimed subject matter. More
often than not, the allowed claims are narrower in
scope that those that were initially filed.
Failing to convince by mere argumentation,
the applicant may choose to introduce tangible
evidence, which is typically in the form of a
signed declaration which presents the results
of comparative testing, that is, a side-by-side624 CH48 PATENTS