Frankenstein Rejections: Obvious(ness) Problems for Patentability

Frankenstein Rejections: Obvious(ness) Problems for Patentability

In the world of patent prosecution, Examiners are not mad scientists—but sometimes their obviousness rejections feel like they’ve stitched together a monster. Under 35 U.S.C. §103, a claimed invention is unpatentable if the differences between it and the prior art would have been obvious to a person of ordinary skill in the art (“POSITA”) at the time the invention was made. To establish obviousness, Examiners are permitted—indeed, expected—to look to multiple references, and to consider whether the teachings of one reference might reasonably be used to modify or combine with another to arrive at the claimed invention.

When properly done, this analysis should explain how and why a POSITA would be motivated to make the combination, based on teachings or suggestions in the references themselves, the knowledge of the skilled artisan, or clear design incentives supported by evidence.

This approach is supported by U.S. Supreme Court case precedent—most recently, KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007)—which emphasized that rigid application of a “teaching, suggestion, or motivation” test is not required—so long as the rationale is articulated and grounded in the art.

But what happens when that rationale is thin, speculative, or retrofitted after-the-fact?

Today, many Examiners wield the obviousness doctrine as a blunt instrument, pulling disparate references from unrelated fields and combining them with little more than a conclusory assertion that a POSITA “would have been motivated” to do so. This can result in obviousness rejections that feel more like Frankenstein’s monster—stitched together from incompatible parts, with no regard for whether the resulting whole actually makes sense.

Worse, traditional guardrails like “teaching away” have been eroded. Even where a reference expressly cautions against the modification proposed, Examiners often dismiss such evidence as not “unambiguous” or not “sufficiently specific.” This shifts power dramatically in favor of the PTO, making it harder for applicants to push back against speculative rejections.

The result is that Applicants must now be more proactive and precise in rebutting §103 rejections:

• Incompatibility: Demonstrate why the references are incompatible in context, even if individual elements are superficially similar.
• Teaching Away: Highlight any explicit or implicit teachings that discourage the proposed modification.
• Hindsight Bias: Argue against hindsight reconstruction by anchoring arguments in the state of the art at the time of filing.
• Expert Declarations: Consider submitting expert declarations, particularly when the Examiner relies on “common sense” without support.

Better yet—consider hiring a skilled patent attorney who knows how to wield a patentability search like a well-balanced scalpel, not a lightning rod. By identifying potential Frankenstein fodder early, a good attorney can tailor the application to preempt these kinds of piecemeal attacks—emphasizing technical context, distinguishing art, and baking in evidence that may short-circuit obviousness before it’s even raised.

Because when the Office starts assembling monsters, it helps to have someone who knows how to build fire to defend the village.

James W. Taylor, II is a patent attorney at Fishman Stewart with expertise in applying artificial intelligence to complex scientific problems. With a background in chemistry, computer science, and law, James specializes in bridging the gap between AI solutions to complex scientific problems and intellectual property strategies for those solutions.  Check out his full bio here.