UIC Review of Intellectual Property Law


Tom Brody


Obviousness rejections are most commonly rebutted by arguments that the prior art fails to disclose all the claim elements or that the examiner had failed to assert a proper rationale for combining references. Additional rebuttal strategies include those based on Federal Circuit case law on: (1) Non-analogous art, (2) Rendering the prior art unsatisfactory for its intended purpose, (3) Proposed modification cannot change the principle of operation of a reference, (4) Redundant advantages, (5) Advantage provided by the secondary reference is not needed by and not relevant to the primary reference, (6) Disparate references, (7) Context differs between cited references, (8) Teaching away, (9) Claims with Ranges under In re Boesch, and (10) Laundry List disclosure in prior art reference. With the exception of arguments based on, “Claims with Ranges under In re Boesch,” all of the rebuttal strategies in this list are based on case law invoked only in rebuttal arguments, and rarely or never invoked when the examiner imposes an obviousness rejection. Most of these ten rebuttal strategies require comparing the prior art references with each other, where the rebuttal argument asserts that the references are somewhat incompatible with each other. The present article provides the first published review of Laundry List rebuttal arguments, and refines the author's previously published accounts of the anti-obviousness rebuttal strategies relating to Redundant Advantage and to Advantage Not Needed and Not Relevant.