How to respond 103 (obviousness) rejections.

Base your argument on the claim language.
•Demonstrate how the prior art does not satisfy the claim language:
-Elements missing from the prior art;
-No reason for the combination of references;
-No reasonable expectation of success in the combination - why?
-Avoid paraphrasing;
-Avoid “lumping” arguments.
Do not argue anything that is not in the claims.
•Consider an Examiner Interview instead.

Festo (535 U.S. 722 (2002)) - PHE for narrowing amendments

Supreme Court: a patentee's decision to narrow claims through amendment in order to comply with the Patent Act automatically assumes surrender of the territory between the original claim and the amended claim.
•a presumption of surrendering all equivalents for the particular claim limitation that was narrowed by the amendment.
•Burden is on the applicant as to showing what equivalents were not surrendered.

Patentee can overcome surrender if the equivalent was “unforseeable” at the time of the application.

IN RE VAIDYANATHAN - 381 Fed.Appx. 985 (Fed. Cir. 2010) (about KSR) (103 obviousness)

In re Vaidyanathan

•  KSR “did not remove the need to anchor the analysis in explanation of how a person of ordinary skill would select and apply teachings of the references.”

• KSR did not “free the PTO’s examination process from explaining its reasoning.”

•  Examiner “should not rely on conclusory statements that a particular feature would have been obvious or well known.”

• “Examiner should at east explain the logic or common sense that leads the examiner to believe the
claim would have been obvious.”
- “Anything less than this results in a record that is insulated from meaningful appellate review.”