Examiners commonly reject claims as being obvious as 35 USC 103 in view of a combination of prior art. 35 USC 103(a) states:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Essentially, the Examiner may use a plurality of different prior art references to teach each element of your claims. Examiners are not allowed to do “piecemeal” examination of your claims, but this is typically how prosecution works (especially in complex fields). There are many different ways to respond to a 35 USC 102 rejection including:
1. Arguing that the cited reference does not teach what the examiner says it teaches
2. Amending the claims to include new limitations that the prior art does not teach or disclose
To argue that the cited art reference does not teach an existing or amended limitation in the claim typically my responses to Office Actions 1) expressly identify the claim language on which the patentability argument is based. For example, “Claim 1 discloses ‘x, y, and’ z.” 2) Summarize the patentability argument on why the cited art does not disclose these limitations. For example, “On page 2 of the Office Action dated January 1, 2013, the examiner alleges that Jones discloses ‘x, y, and z.’ However, Jones discloses [insert technical argument of what Jones teaches and how this is different than “x, y, and z.” This type of argument or structure is very good when your invention is an improvement on what is already patented or known, because the prior art will not include your improvement. However, when amending claims or arguing claims remember that the Examiner can use “the broadest reasonable interpretation standard” that examiner interprets as “any reason.” So make sure the claims are sufficiently clarified that the examiner’s interpretation cannot be what the claims are said. The goal of responses to office actions like this is both efficient and minimizes prosecution. While responding, I try not to argue what the claimed limitations mean (as they should be able to be interpreted on their own) and only directly quote from claim language and argue why the reference(s) do not teach these limitations. This minimizes argument estoppel that could later be used in court.
3. The references cannot be combined.
This type of argument is fairly tricky to make, especially if the references do not disclose a negative limitations such as “This apparatus cannot be used for x, y, z.” If one of the references expressly states that they couldn’t be combined then you may have a decent teaching away argument. A good quote from case law is “If proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification. In re Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984).”
4. The prior art reference is not valid prior art.
This is actually the first step that patent attorneys should use when looking at the office actions. This is to see if the cited references are actually valid art. Important dates to look at are the publication date as well as the patent date. It is also important to see if the inventors/assignee of the application are the same. If you can invalidate one of the references via invalid prior art this is the most effective way to respond to an office action.