Attacking References Individually

If you prosecute patent applications, you have likely seen this before with regard to rebuttals against obviousness rejections:

One cannot attack references individually, when the rejection is premised on the combination of the references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). (Nonobviousness cannot be established by attacking the references individually where the rejection is based upon the teachings of a combination of references.)

So what exactly does this mean? When arguing that a feature is not shown, how else do you argue other than by noting that none of the references show the missing feature? How does one avoid this canned response, either from an examiner and/or the PTAB?

These are not easy questions to answer. Examiners and the PTAB love to respond to arguments with this simple assertion. Even upon reviewing numerous cases and decisions, it is hard to understand where the line is drawn between an attack on a reference individually, versus an attack against the combination. Other commentators have argued that the citation Merck and/or in re Keller is not quite accurate; but the Federal Circuit, in Soft Gel, cites to this proposition with approval. Thus, ignoring the issue or burying your head in the sand, as well as trying to convince the Examiner that the MPEP has inaccurately stated the law, all seem to be losing strategies.

Another option is to address the issue head on and early in prosecution (maybe even preemptively before the Examiner makes such a rebuttal). In this approach, the applicant can break down the arguments into at least two sections.

One section deals with attacking the factual assertions made by the Examiner as to what an individual reference shows. In this section, the applicant can expressly point out that this argument is not an attack on the obviousness of the combination (and so in re Merck, and in re Keller are not applicable), but rather this arguments is for pointing out improper assertions upon which the Office has based the rejection. These arguments apply whether or not the combination as suggested by the Office is made.

Another section can then deal with arguments attacking the combination as suggested by the Office. Here, the applicant can argue that, even if the references are combined and modified as suggested by the Office, that combination/modification is still missing a claimed element. Here, one must be careful to understand what the Office has actually proposed and identify a missing element even in spite of the suggested changes. Sometimes there is no argument to be made here, but alas, all is not lost because there is still yet another line of attack, namely, attacking the reasoning or motivation for making the combination/modifications suggested by the Office. That approach can be still another section and included, where applicable. 

A recent example from the PTAB might help further illustrate these issues. Specifically, Pratt & Whitney recently lost an appeal before the PTAB specifically because the PTAB felt that their arguments were attacking the references individually, rather than the combination as proposed. The case is 13/621,968 and relates to a component for a gas turbine engine. The claimed feature at issue included baffles having "a plurality of feed openings that extend through each of a plurality of walls of said first baffle and said second baffle; and said plurality of feed openings are positioned in a staggered relationship." The Examiner relied on combining two references, neither of which met all of these features, to obtain a modified system that met the claimed features. 

The PTAB's decision affirmed the examiner's rejection that the combination proposed by the Examiner rendered the feature obvious. The PTAB focused on the appellant's arguments related to a third reference as missing these features and thus found that such arguments were an individual attack rather than addressing the actual combination used by the Examiner. 

So, be careful in categorizing your arguments and expressly separate them out up front to reduce the ability of the Office to make the easy argument and paste in a generic assertion about attacking references individually.