Why Section 103?
Under Section 103, a patentable invention must be a non-obvious improvement over prior art, thus a rejection under this section means an examiner consider an invention at issue to be obvious. A Section 103 can be very tricky, because often the prior art, that allegedly teaches the invention at the issue is not disclosed in the single reference but can be inferred from a combination of the reference. An obviousness determination then is intensely fact-specific and subjective in nature. One way to smooth out the legal landscape is to use a reasonable person standard.
How does the Applicant respond?
There are a variety of strategies available to an applicant responding to first final rejection under section 103. When determining how they respond we looked into file wrapper for all applications that received a final rejection that cited under section 103. Then we look into the rejections in the RCE, or interview or combination. Because almost all successful responses to final rejection also include a subsequent amendment, we do not consider an amendment to be the distinct response to final rejection.
How Successful are they?
Some responses to the 103 rejection are better overcoming section 103 rejection than others. When we say that a rejection was “overcome” we mean that, when looking at the file wrapper, we found a final rejection, followed by a response to that final rejection, followed by either a subsequent rejection or an allowance. In cases where there was not an allowance but, instead, a second rejection, we consider the § 103 rejection overcome if the second rejection does not cite § 103 as a basis for the rejection.