Patent practitioners need to move beyond a one-size-fits all prosecution strategy.
Every patent practitioner has been the victim of a 103 rejection that just will not go away. Getting a 103 rejection is both common—a vast majority of patent applications at the USPTO will receive one at some point—and detrimental to prosecution outcomes. Just by way of example, in art unit 3682, 90% of applications receive a 103 rejection. Of those applications that have been resolved (patented or abandoned) in the past two years, prosecution outcomes are significantly better for applications that never received a 103 rejection—in spite of the fact that this group of applications received more 101 rejections!
Arguably, the ability to effectively respond to a 103 rejection is the most important skill a patent practitioner can have. But given that not much has changed in the legal landscape since KSR, many practitioners continue to rely on the same set of legal arguments that they have been using for almost a decade, with no regard for the examiner or art unit they have been assigned.
This type of one-size-fits all prosecution strategy leads to some unfortunate prosecution outcomes, given what we now know about the variability among examiners at the USPTO. Even for examiners working in similar technology areas, the same argument may have a different impact.
In today’s world of big data, there is no excuse for not customizing your prosecution strategy to the examiner or art unit that you’ve been assigned. That includes knowing when the numbers tell a good story for appeal, as well as knowing which legal arguments are most likely to be persuasive with your examiner iner or art unit. If you want to know how a particular legal argument (for example, arguing secondary considerations) has worked for other applicants, simply search through the full text database of IFW documents from LexisNexis PatentAdvisor® for the argument you’re using.
This will lead you to documents containing arguments that have been successful (or unsuccessful) for others, and help inform a more customized response strategy.
Some examiners may not be swayed by lofty case law arguments, but they are more likely to listen if you cite their own body of work against them.