Giving Away The Invention

Inventions are often solutions to technical problems. Truly appreciating an invention often involves understanding how the new features operate to solve problems with prior approaches and achieve advantages relative to those prior approaches. 

While one might think explaining these issues to Examiners would help them better appreciate the invention and inventiveness of the new features, some Examiner simply take the adversarial approach of trying to use the inventor's insights as a way to bootstrap obviousness rejections. For example, the Supreme Court explained in KSR that a recognized problem or design need or other market forces may create motivation for those skilled in the art to try predictable variations.  Thus, recognition by the inventors of particular problems or issues with the state of the art can be effectively used to reconstruct an obviousness rejection that otherwise would have no basis from the evidence. It therefore can be important in drafting patent applications to minimize the potential for such admissions. See MPEP 2129.    

A typical example of how an Examiner may try to use the inventor's own recognition of the problem to bootstrap an otherwise insufficient obviousness rejection is as follows: The Examiner asserts that a primary reference shows most of the features, but is missing some element. Then, the Examiner asserts that based on admissions from the applicant (sometimes referred to as AAPA, applicant admitted prior art), there is motivation to try and solve some particular problem with the prior approach and thus it would be obvious to reach the missing features since they solve the problem.

One approach to take away the Examiner's ability to use such statements would be to simply not describe problems with the prior art, or problems solved by the invention. However, while avoiding admissions, this approach creates the fundamental issue of having an invention that may be difficult to appreciate as inventive, or beneficial in any way. As such, tools for convincing someone of the inventiveness may still be lacking. Further, in the software arts where Alice rejections loom, having a lack of description of any technical problems or advantages can create a host of other problems. Nevertheless, there may be instances where this type of drafting approach makes sense.

Another approach to undercut the Examiner's ability to cite admissions as support for obviousness is to make clear that the recognition of any problems described by the inventors was a discovery made by the inventors themselves, and is not something admitted to be generally known. US 20090293450 (assigned to General Motors) describes an example of this approach. The application includes a statement that "[w]ork of the presently named inventors, to the extent that it is described in this background section, as well as aspects of the description that may not otherwise qualify as prior art at the time of filing, are neither expressly nor impliedly admitted as prior art against the present disclosure." If the Examiner tries to rely on any statements in the application as AAPA, the applicant can respond that not only is there no admission, but that it was the inventors that recognized these issues and recognized how to solve them (see MPEP 2143, example 3). This can turn the Examiner's rejection on its head, in that it recasts the situation in terms of facts tending to prove non-obviousness, rather than admissions supportive of obviousness.