In this issue:

  1. Will ITC Staffing Changes Make Future Section 337 Litigation More Like Federal Court?
  2. Bankruptcy's Effect on Patent Licenses and Drafting Strategies That Anticipate This Potential Event
  3. New USPTO Guidelines and the Obviousness Standard for Patents: Prosecution Strategies to Withstand Obviousness Rejections and Attacks on Patent Validity

WILL ITC STAFFING CHANGES MAKE FUTURE SECTION 337 LITIGATION MORE LIKE FEDERAL COURT?

by  Charles H. Sanders, Adam R. Wichman

Unlike patent litigations in federal district court, Section 337 investigations at the International Trade Commission ("ITC") typically have included attorneys from the Office of Unfair Import Investigations ("the Staff") litigating as an independent third party to represent the public interest. As Section 337 case loads mount and pressure on governmental budgets increase, the ITC is being forced to rethink the Staff's role, and the future may look more like federal district court patent litigation.

Where new Section 337 investigations do not pose difficult issues specific to the ITC proceedings, such as domestic industry or public interest issues, litigants should anticipate reduced Staff involvement. Whether the new roles for the Staff will affect the speed or quality of Administrative Law Judge ("ALJ") decision-making, time to trial or attractiveness of the ITC as a forum choice for resolving patent disputes, remains to be seen.

New Section 337 Matters in 2010 Put ITC in the Top Third of Patent Litigation Forums

The ITC had 103 active matters in 2010, reflecting a jump in new investigations over 2009 filings. While the number of new Section 337 matters has risen before, the ITC views the increased Section 337 workload as the new reality. Observers tend to agree, with recent articles touting the ITC as a favorable forum for patent litigations.

(Source: http://www.usitc.gov/intellectual_property/documents/cy_337_institutions.pdf.)

Having added two new ALJs in 2009 (for a total of six), the ITC reported an average docket of 17.2 cases per ALJ in 2010.

More than 50 new Section 337 filings in 2010 puts the ITC, by volume of new matters, on par with the federal district courts for the District of Columbia (51), Utah (52), Eastern District of Pennsylvania (53), Western District of Washington (57), Northern District of Georgia (58) and Middle District of Florida (59), and in the top third of venues for new patent litigation. As a trial forum, the ITC continues to outpace the federal district courts. In 2010 the ITC accounted for more than 10% of all patent trials in the United States. The ITC, in short, remains a beacon for complainants who want to try their patent infringement cases.  Adding new ALJs and new courtroom space suggests that the ITC plainly expects its prominence as a patent litigation forum to continue. Faced with tight budgets, and this new Section 337 reality, the ITC is rethinking how the Staff participates in Section 337 investigations.

With Higher Demand for Section 337 Investigations, Limited Staff Participation May Be the New Norm

While the number of new Section 337 investigations or active matters per ALJ might not seem large compared to some federal district courts, the ITC is a relatively small agency with resources divided among several mandates. The rising case loads have forced the ITC to rethink how it apportions resources to adjudicate Section 337 investigations, and it has decided to augment the counsel assigned to support ALJs while reducing the Staff's participation.

In January 2011, the ITC Chairman announced plans for restructuring its staffing models to meet the increasing patent litigation workload.1 The plan prioritizes Staff participation around issues "unique" to Section 337 proceedings, including determinations regarding domestic industry, exclusion orders, the public interest and bonding. While leaving implementation of the details to the Office of Unfair Import Investigation, the plan plainly directs that the role of the Staff will be sharply curtailed.

Going forward the ITC identifies three roles for the Staff:

  • Continued Participation. In "the short-to-medium term," for some share of cases the Staff will continue participating in all phases of the Section 337 investigation.
  • Selective Participation. For a set of investigations, the Staff will selectively participate and "concentrate efforts on those issues on which it is able to provide the greatest added value and expertise."
  • Non-Participation. For some investigations, possibly those which raise no weighty issues unique to the ITC, the Staff counsel will decline to participate.

The ITC announced its plan to apply these staffing models "to a number of cases sufficient to allow an evaluation."  The criteria for identifying cases for selective or reduced Staff participation remain to be seen.

Implications

Historically the Staff participation has fostered a specific procedural dynamic in Section 337 litigations. First, in its role of representing the public interest, the Staff provided parties with a neutral view of the merits before the parties receive the ALJ's initial determination. Second, the Staff typically moderated discovery disputes, frequently leading to informal resolution.

How reduced Staff participation might affect the speed and quality of patent litigation at the ITC remains to be seen. Litigants might expect greater control over framing substantive issues, while at the same time losing the Staff's voice as a de facto third-party neutral evaluator of the merits. While a growing ITC mediation program may – like mandatory ADR or mediation in the district courts – provide similar neutral evaluation in aid of settlement, the effectiveness of the ITC's nascent mediation program remains to be seen.

Reduced staff participation should allow the parties to focus on explaining disputed merits positions to one audience – the ALJ – without worrying about trying to garner the Staff's support. When under the new approach, the Staff takes a position on an ITC-specific concern, such as domestic industry or public interest, litigants might expect that the Staff's voice could have greater influence. Likewise, the ALJs may come to expect that, if an issue merits the Staff's involvement, the Staff's view with respect to that issue may be particularly important.

Without the Staff's moderating influence in discovery disputes, litigants might also anticipate increased discovery motion practice. This could extend proceedings and time to disposition. Whether time to trial – a primary ITC advantage as a patent forum – may suffer as a result remains to be seen.

* * * * * * * * * *

Whether because of shorter time to trial, strong remedies, subject matter expertise, a structural shift in manufacturing offshore or other reasons, the ITC Section 337 caseload is increasing. The ITC is evolving to meet the new challenges that come with greater workloads within tighter budgets. It has decided that doing more with the same or less means limiting the role that the Staff will play in Section 337 proceedings. While the precise effect this will have on Section 337 litigation remains to be seen, litigants should expect ITC litigation – for better or worse – to begin to look more like patent litigation in federal district court.

BANKRUPTCY'S EFFECT ON PATENT LICENSES AND DRAFTING STRATEGIES THAT ANTICIPATE THIS POTENTIAL EVENT

by  John P. Hanish and Benjamin A. Keller

For many companies, patent licenses are an indispensible tool for generating new technologies and streams of revenue. Due to the recent downturn in the economy, however, a number of parties to patent licenses are facing an increased business risk: the bankruptcy of a licensing partner. Between 2009 and 2010 alone, there were nearly 117,000 corporate bankruptcies, including high-profile filings by corporate giants such as General Motors, Blockbuster and Chrysler.2 Given this elevated business risk, this article identifies important issues that can result when a licensor or licensee files for bankruptcy and suggests specific license provisions that may serve to alleviate some of those problems or uncertainties that can arise in the course of restructuring.  

The Executory Contract

The U.S Bankruptcy Code ("Code") allows a debtor filing for bankruptcy under Chapter 11 to reorganize, shed debt and make a fresh start. Section 365 of the Code provides that, subject to certain limitations and qualifications, a trustee or debtor-in-possession "may assume or reject any executory contract or unexpired lease of the debtor."  Thus, during a bankruptcy, the fate of a license depends on whether it is deemed an executory contract.

Despite its importance, the Code does not define the term "executory contract."  Instead, most courts and scholars look to Professor Countryman's definition, which defines an executory contract as "a contract under which the obligations of both the bankrupt and the other party to the contract are so far unperformed that the failure of either to complete performance would constitute a material breach excusing the performance of the other."3 Applying this definition, courts have almost always concluded that patent licenses are executory contracts because they almost always contain "unperformed obligations" such as the duty to pay royalties, keep records or police the patent rights against third-party infringers.

Section 365 of the Code also governs a debtor's right to assign executory contracts. Specifically, it prohibits the debtor from assigning rights or delegating duties under an executory agreement if "applicable law" would otherwise prevent such an assignment. This is of particular significance to patent licenses, as federal patent case law precludes holders of a nonexclusive license from assigning licenses to third parties.

Issues That Arise When a Debtor Is a Licensor

When a debtor-licensor files for bankruptcy, the debtor may assume or reject the license. If the contract is assumed, the legal obligations of both parties are the same as they were pre-filing. Rejection of the license by the debtor-licensor acts as a court-authorized termination of the agreement. Consequently, the ability of the debtor-licensor to reject executory contracts, including patent licenses, creates a tremendous business risk for licensees – especially if the licensed patent covers technology that is an integral part of a product made or sold by the licensee. In response to this potential hardship, in 1988, Congress enacted the Intellectual Property Licenses in Bankruptcy Act ("IPLBA"). The main provisions of the IPLBA are incorporated into Section 365(n) of the Code. This section provides that, in the event of a rejection of an "intellectual property" license by a debtor-licensor, the licensee shall have the option of either (i) treating the license as terminated by virtue of the rejection and asserting damages for breach, or (ii) retaining rights under the license for the remainder of its duration. Although the second option allows the licensee to avoid a potentially disastrous termination of the license, Section 365(n) of the Code acts only to freeze the rights and obligations of the parties from the date on which the licensor entered bankruptcy. Thus, any future or contingent rights granted under the license, such as rights to future improvements in the licensed technology, are not preserved.

Issues That Arise When a Debtor Is a Licensee

Debtor-licensees may not unilaterally assign licenses to third parties during reorganization. As previously mentioned, assignment is governed to the extent that federal patent law is applicable. As such, non-exclusive patent licenses may not be assigned unless the patent owner first provides consent or the license itself permits assignment. With respect to exclusive licenses, courts also forbid a debtor-licensee from assigning absent the consent of the licensor. The prevailing thought is that doing so would essentially render an exclusive license the equivalent of a patent assignment.

Although assignment under the Code seems fairly straightforward, the language governing it has caused much confusion. Under Section 365(c), the trustee cannot "assume or assign" an executory contract for which applicable law would prevent assignment. Read literally, this section appears to place a restraint on both the assignment and assumption of a license. There is a split among the federal circuit courts of appeals regarding the proper interpretation of that phrase. The Third, Fourth, Ninth and Eleventh Circuits employ a hypothetical test that adheres to the plain statutory language – if a contract cannot be assigned under applicable non-bankruptcy law, then it shall not be assumed or assigned by the trustee of the debtor-licensee. The First and Fifth Circuits reject the hypothetical test in favor of an actual test – a debtor may unilaterally assume the license, but it must obtain consent before it assigns the license if "applicable non-bankruptcy law" prevents its assignment.

Drafting Strategies

The Code bars provisions that terminate the license upon insolvency – called ipso facto provisions. However, as discussed further below, there are clauses that both licensees and licensors can include in a patent license that might serve to alleviate some of the uncertainty associated with a debtor-licensing partner's bankruptcy.

For Licensees

  • Reference Section 365(n) Using Precise Language. It is imperative that the licensee preserve the option to take full advantage of the protections that Section 365(n) affords. Drafting the license with specific references to the statute itself will help to ensure this. Along similar lines, also consider defining and using key terms such as "claim" and "intellectual property" in the same manner as they are defined and used in the Code. This will add clarity and negate any argument that the parties meant for the terms to mean otherwise.     
  • Approval Before Assignment Provision. Many patent licenses contain continuing obligations for the licensor, such as the duty to perform continued research on, maintain or service the licensed technology. The performance of those duties might be affected if the licensor assigns the contract to an entity that does not have the financial capability or motivation to fulfill those continuing obligations. Drafting an approval before assignment provision is one potential remedy, as it can afford the licensee the right to information regarding the net worth or financial stability of a potential assignee. Then, an informed decision can be made whether the potential assignee retains the requisite capabilities to fulfill the license obligations.       
  • Right of First Refusal Provision.  Drafting this type of provision into a patent license is another method for potentially avoiding the problems that may arise when the license is assigned to a non-contracting third party. However, the provision should clearly indicate that it is effective only as a form of the non-debtor's consent if the licensing agreement is deemed executory and the debtor-licensee elects to assign, thus preventing any argument that the provision is invalid under the Code.
  • Define the Term "Royalty Payment."  Section 365(n) fails to define "royalty payment."  In order to avoid paying for future obligations such as maintenance and support or any other service that a licensee would not receive if the license is rejected, licensees should consider drafting provisions that distinguish between payments based on a percentage of sales and/or usage from other types of service fees.

For Licensors

  • Accelerated Fees Provisions.  In the event that the debtor-licensee elects to reject the license, early termination fees or liquidated damage provisions accelerating payment of future royalties upon termination may increase the licensor's potential monetary recoupment if deemed a creditor.
  • Define the Term "Adequate Assurance."  Assignment by the debtor-licensee is a real concern for licensors, especially when there stands the chance of assignment to either a party that cannot perform – or even worse – a direct competitor. Although anti-assignment provisions in and of themselves cannot not prevent assignment, the Code requires that "adequate assurance" be provided. As such, a licensor should always define what constitutes "adequate assurance."  

Conclusion

The bankruptcy of a licensing partner is an event that no business looks forward to encountering. However, this is not an issue that can simply be ignored; the risk is real. Although non-debtor licensing parties face uncertainty during the bankruptcy process, favorable contractual provisions can help to alleviate some of this uncertainty. Therefore, when entering into patent licensing agreements, it is best to plan for and anticipate this issue by drafting language that limits the potential negative repercussions and uncertainty associated with a licensing partner's reorganization.

NEW USPTO GUIDELINES AND THE OBVIOUSNESS STANDARD FOR PATENTS: PROSECUTION STRATEGIES TO WITHSTAND OBVIOUSNESS REJECTIONS AND ATTACKS ON PATENT VALIDITY

by  Paul Davis

Prior to the Supreme Court's decision in KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007), the teaching-suggestion-motivation or "TSM" test controlled obviousness determinations.  Post KSR, obviousness determinations have been based upon the predictability of the invention and whether the ordinary artisan would have a reasonable expectation of successfully arriving at the claimed invention based upon the teachings of the cited references.

The U.S. Patent and Trademark Office ("PTO") has recently trained and issued guidelines for examiners relative to 35 U.S.C. Section 103 rejections in view of KSR.  This article discusses those guidelines and offers suggestions for inventors and their patent prosecution counsel as to prosecution strategies relative to the guidelines.

TSM is no longer the standard for obviousness rebuttals.  The unpredictability of the invention and the assertion that the ordinary artisan would not have a reasonable expectation of arriving at the claimed invention from the teachings of the references now controls the rebuttal arguments.  Arguing that a reference "teaches away" is now a viable rebuttal argument.

General Strategies and Recommendations

As a basic observation, one of the first things to do in responding to an obviousness rejection is provide a reasoned statement explaining why the applicant believes the PTO has erred substantively as to the factual findings or the conclusion of obviousness under Section 103.  37 CFR Section 1.111(b).

Evidence of unexpected results remains a strong option for rebuttal arguments.  Rebuttal arguments of hindsight reconstruction and extraordinary skill in the art also remain valid.

As a general recommendation, an applicant should determine if the examiner articulated a competent rationale to support the obviousness rejection.  Challenge the examiner on what is the state of the art.  Be judicious, but don't hesitate to (i) refute the examiner's view as to what is the state of the art, (ii) challenge the examiner on who is a person of ordinary skill and (iii) refute what a person of ordinary skill would have known at the time of the invention.  Why was it never done?  What did the inventor need to do to come up with the invention?  What was going on in the industry?  What was the industry doing?  What were competitors doing?

Do not hesitate to refute and provide evidence where appropriate countering the examiner's position based on the new guidelines.  However, the applicant must consider whether the evidence could be used as an estoppel later on.  Challenge the examiner's knowledge as to his or her level of skill as to the state of the art.  Focus on the interdependency of features in a claim.  Establish that a claimed combination is not a predictable use of prior art elements according to their established functions.

Analysis of the Graham Inquiries

Under the new guidelines, examiners must still resolve the inquiries set forth by the Supreme Court in the seminal case of Graham v. John Deere Co., 383 U.S. 1 (1966).  These inquiries must be articulated with the appropriate findings as identified by the Examination Guidelines, and the examiners must explain how the rationale leads to a conclusion of obviousness under Section 103.

The PTO's current position on Graham inquiries requires that the examiner determine the scope and content of the prior art.  The differences between the claimed invention and the prior art are then ascertained and the level of ordinary skill in the pertinent art is resolved.  Objective evidence, sometimes referred to as "secondary considerations," when timely presented by applicants, must be evaluated.  The examiner need not always include an explicit indication of the level of ordinary skill in the art in the statement of the rejection, because the level of ordinary skill in the art may be implicit in view of the prior art applied.  However, in certain situations it may be necessary to explain the level of ordinary skill in order to support the examiner's conclusion of obviousness.

The PTO has taken the position that examiners can act as fact finders when resolving the Graham inquiries.  However, examiners are required to articulate their findings as to the scope and content of the prior art as necessary to support an obviousness rejection.  The examiner must articulate a reason or rationale to support the obviousness rejection.  In formulating a rejection under 35 U.S.C. Section 103, the rationale should be based on the state of the art and not impermissible hindsight, e.g., the applicant's disclosure.

Always remember to consider challenging the examiner's position on what is the level of ordinary skill in the art.  Do your own analysis.  If appropriate, challenge the examiner on objective evidence.  Is the examiner correct in what is implicit?  If not, provide contrasting evidence.  The level of ordinary skill in the art that the examiner has set forth can be challenged.  It may be advisable to request that the examiner supply references supporting his or her decision.  Always consider unexpected results or commercial success.  These secondary considerations under Graham remain relevant.  Evidence of unexpected results can be presented, but be careful of what you say and make sure it will not limit claim interpretation later on based on file wrapper estoppel.

Examination Guidelines

Examiners must account for all claim limitations in their rejections.  Examiners must either indicate how each limitation is shown by the reference(s) applied, or provide an explanation.  Prior art is not limited to the references being applied.  Prior art includes both the specialized understanding of one of ordinary skill in the art, and the common understanding of the layman.  Examiners may rely on, for example, official notice, common sense, design choice and ordinary ingenuity.

In formulating a response to an office action, make sure that the examiner has picked the best examination guideline.  Determine if any of the findings under the various independent rationales cannot be made.  If not, then that particular rationale cannot be used to support a conclusion of obviousness.  Make sure that the examiner has articulated an appropriate reason or guideline.  Determine the state of art, and do not necessarily accept the examiner's position on the matter.  An applicant can establish the state of the art through the inventor, third parties and the like.  The inventor usually knows the state of the art better than the examiner.

Examination Guideline A

Examination Guideline A is a rejection based on the combination of prior art elements according to known methods to yield predictable results.

With a guideline A rejection, examiners must articulate a finding that (i) the prior art included each element claimed, although not necessarily in a single reference, (ii) one of ordinary skill in the art could have combined the elements as claimed by known methods and that, in combination, each element merely would have performed the same function as it did separately and (iii) one of ordinary skill in the art would have recognized that the results of the combination were predictable.

The examiner must provide references for all of the claim elements.  Be ready to challenge the examiner's position that one of ordinary skill in the art would combine the elements as claimed.  Make sure that the examiner established that each element performs the same function as it did separately.  The examiner must be persuasive in his or her position that the combination is predictable to one skilled in the art.  This is a great place for the applicant to use his or her own experts and introduce secondary considerations.  Additionally, make sure that the examiner has explained why it would have been obvious to one of ordinary skill in the art to combine the elements.  For example, were all of the elements known in the prior art?  If so, would one skilled in the art combine the elements as claimed by known methods with no change in their respective functions?  If so, does the combination yield predictable results to one of ordinary skill in the art at the time of the invention?  Again, be prepared to refute the examiner on these points.

Examination Guideline B

Examination Guideline B is a rejection based on the simple substitution of one known, equivalent element for another to obtain predictable results.

For a guideline B rejection, the examiner must articulate a finding that (i) the prior art contained a device which differed from the claimed device by the substitution of some components with other components, (ii) the substituted components and their functions were known in the art and (iii) one of ordinary skill in the art could have substituted one known element for another and the results of the substitution would have been predictable.

In responding to office actions that use guideline B, advocate that the claim would not have been obvious because the substitution of one known element for another would not have yielded predictable results to one of ordinary skill in the art at the time of the invention.  Argue that combining known prior art elements is not sufficient to render the claimed invention obvious if the results would not have been predictable to one of ordinary skill in the art.  What is the level of ordinary skill in the art?  Refute the examiner's combining of prior art.  Do you get the same results?  Present evidence to the contrary.  Remember, invention is combining known elements.  How is the invention different?  Why didn't others do this?  Present discussion of secondary considerations if appropriate.  What is going on in the industry?  Present a discussion with appropriate back-up regarding the state of the industry.

Examination Guideline C

Examination Guideline C is a rejection based on the use of known techniques to improve similar devices (methods or products) in the same way.

In a guideline C rejection, examiners must articulate a finding that  (i) the prior art contained a "base" device upon which the claimed invention is an improvement, (ii) the prior art contained a comparable device that was improved in the same way as the claimed invention and (iii) one of ordinary skill could have applied the known "improvement" technique in the same way to the "base" device and the results would have been predictable.

In responding to office action rejections under guideline C, make sure that the examiner has articulated items (i)-(iii) in the preceding paragraph.  Make sure to provide rebuttal arguments if the items have not been competently articulated.  Challenge the examiner's position that the claim would have been obvious because the technique for improving a particular class of devices was part of the ordinary capabilities of a person of ordinary skill in the art, in view of the teaching of the technique for improvement in other situations.  KSR noted that if the actual application of the technique would have been beyond the skill of one of ordinary skill in the art, then the resulting invention would not have been obvious because one of ordinary skill could not have been expected to achieve it.

Examination Guideline D

Examination Guideline D is a rejection based on the application of a known technique to a known device (method or product) ready for improvement to yield predictable results.

With a guideline D rejection, examiners must articulate a finding that:  (i) the prior art contained a "base" device, (ii) the prior art contained a known technique that is applicable to the base device and (iii) one of ordinary skill in the art would have recognized that applying the known technique would have yielded predictable results.

In your response, make sure that the examiner articulated items (i)-(iii) from the preceding paragraph and make appropriate rebuttal arguments if they are completely articulated.  Challenge that the claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art.

Examination Guideline E

Examination Guideline E is a rejection based on "obvious to try," where the examiner chooses from a finite number of predictable solutions.

In a guideline E rejection, examiners must articulate a finding that  (i) there had been a recognized problem or need in the art including a design need or market pressure to solve a problem, (ii) there had been a finite number of identified predictable potential solutions and (iii) one of ordinary skill in the art could have pursued the known potential options with a reasonable expectation of success.

In responding to an office action where guideline E is used, make sure that the examiner adequately articulated items (i)-(iii) from the preceding paragraph.  Again, make appropriate rebuttal arguments and challenge that the claim would have been obvious because a person of ordinary skill had good reason to pursue the known options within his or her technical grasp.  If this leads to the anticipated success, the examiner will likely find that the resulting invention was not of innovation but of ordinary skill and common sense.

Examination Guideline F

Examination Guideline F is a rejection based on the known work in one field of endeavor which prompts variations for use in either the same or a different field based on design incentives or other market forces, if the variations would have been predictable to one of ordinary skill in the art.

In a guideline F rejection, examiners must articulate a finding that (i) the scope and content of the prior art, whether in the same or different field of endeavor, included a similar or analogous device, (ii) there were design incentives or market forces which would have prompted adaptation of the known device, (iii) the differences between the claimed invention and the prior art were encompassed in known variations or in a principle known in the prior art, and (iv) one of ordinary skill in the art, in view of the design incentives or market forces, could have implemented the claimed variation of the prior art, and the claimed variation would have been predictable.

In your response to a guideline F rejection, again make sure that the examiner has adequately articulated items (i)-(iv) and make appropriate rebuttal arguments.  Challenge that the claim would have been obvious because the design incentives or market forces provided a reason to make an adaptation, and the invention resulted from application of the prior knowledge in a predictable manner.  What are the market forces?  Are they as the examiner believes them to be?  Present evidence that they are not.

Examination Guideline G

Examination Guideline G is a rejection based on the TSM Test.

With a guideline G rejection, examiners must articulate a finding that (i) there was some teaching, suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings, and (ii) there was reasonable expectation of success.

In a response to a guideline G rejection, again make sure that the examiner has properly articulated items (i) and (ii) above.  If not, make rebuttal arguments.  Challenge that the claim would have been obvious because a person of ordinary skill in the art would have been motivated to combine the prior art to achieve the claimed invention and that there would have been a reasonable expectation of success.  Refute the examiner's assertion as to what would be obvious to one skilled in the art.  Consider submitting rebuttal evidence that can include evidence of secondary considerations such as commercial success, long felt but unsolved needs, failure of others and unexpected results.

Summary

In responding to an obviousness rejection under Section 103, an applicant should make sure that the examiner has followed one or more of the guidelines.  In your response, make sure that the examiner has articulated a competent rationale to support the obviousness rejection.  Use rebuttal arguments of hindsight reconstruction and extraordinary skill in the art.  If appropriate, (i) refute the examiner's view as to what is the state of the art, (ii) challenge the examiner on who is a person of ordinary skill, (iii) refute what a person of ordinary skill would have known at the time of the invention and (iv) discuss why the claimed invention has never been done before.  Further, make sure that the examiner has resolved the Graham inquiries. 

Footnotes

1. Supplement to the ITC's Strategic Human Capital Plan 2009-2013 Regarding Certain Offices, No. CO76-JJ-001 (USITC Jan. 18, 2011).

2. See Statistics maintained by the American Bankruptcy Institute, Quarterly Business Filings By Year (1994-2009).

3. Countryman, Executory Contracts in Bankruptcy, Part 1, 57 Minn.L.Rev. 439, 460 (1973).

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