All Prior Art Teachings of a Reference Must Be Considered

Most patent applications receive at least one rejection for a claim being "obvious." When an examiner makes an obviousness rejection, the Office must follow certain rules laid out by the Supreme Court. One of those rules is to determine the differences between the claimed invention and the prior art. MPEP 2141. Part of this inquire requires considering both the invention and the prior art as a whole. See MPEP ยง 2141.02. Specifically, a prior art reference must be considered in its entirety. W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, (Fed. Cir. 1983).

Examiners (and the PTAB) often side step the teachings of a reference as a whole by asserting that a reference is "only being used for" a specific teaching. This shortcut does not comply with the Supreme Court's approach. While it may be true that there is a proper way to analyze some aspect of a reference's teaching to support an obviousness rejection, it should not be done by expressly ignoring parts of a reference.

In a PTAB decision related to bike helmets (SN 11/218,102), both the Examiner and the Board based the rejection on a combination of references. The invention relates to a strap system with first and second rigid straps sharing a common end. One reference had rigid straps connected differently, and a second reference had flexible straps that were connected as claimed. The Applicant argued it was inappropriate to combine the references since rigid and flexible straps are not interchangeable as to how they are typically connected. The Examiner and Board determined that the reference with flexible straps was "only" relied upon "insofar as [it] teaches the use of a common end for two straps for attachment to a helmet." Well, of course the Examiner and Board would like to ignore the fact that the reference only taught that configuration for flexible straps, but the law requires the reference to be considered for all that it teaches.

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When faced with the Office taking shortcuts, call it out and require evidence and reasoning that explains why it is appropriate to ignore parts of a reference. Merely asserting that a reference is "only" relied upon for part of its teaching flies in the face of the Supreme Court's rulings and the guidelines of the MPEP.