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Your claims were rejected as obvious under §103

What a 103 obviousness rejection means, how examiners build one, the four ways of answering it, and what the reply period is.

A §103 rejection says that although no single earlier document contains your invention, a person of ordinary skill in your field could have arrived at it by combining two or more references, and would have had a reason to do so. The examiner has to identify each reference, say where every element of your claim is found, and state a reason the skilled person would have combined them with a reasonable expectation of success. A reply attacks whichever part of that structure is weakest: a missing element, an unsupported motivation to combine, a misread reference, or evidence that the result was in fact unexpected.

They admit nobody did this before, so how can it be obvious?

That is the right instinct, and it is exactly the argument §103 exists to overcome. Obviousness is not about whether anyone actually did it. It is about whether a skilled person, with the earlier documents in front of them, would have found it obvious to put them together.

Which is why the examiner’s reason for combining matters so much. A §103 rejection stands on that reason. If the only thing linking the references is your own invention showing the way, the rejection is vulnerable.

What the examiner has to establish

  1. The scope and content of the prior art — the specific references, identified by number and date.
  2. Where each element of your claim appears, with a citation to a column, paragraph or figure in a reference.
  3. A reason the skilled person would have combined those references, articulated in the action rather than assumed.
  4. A reasonable expectation that the combination would work.
  5. The level of ordinary skill in the field at the relevant time.

This structure is not a formality. Since KSR v. Teleflex, an examiner may rely on common sense and market forces rather than an explicit teaching to combine, but the reasoning still has to be stated on the record so it can be answered. An action that lists two references and asserts the combination without explaining why is a weaker rejection than one that identifies a genuine reason in the art itself.

The four ways of answering

  1. An element is genuinely missing

    If no cited reference discloses a claim element, the combination cannot produce the claim. This is the cleanest answer and the first thing to check, element by element, against the actual text of each reference.

  2. There was no reason to combine

    If the references are from unrelated fields, or one teaches away from the other, or the only reason to combine them is hindsight from reading your application, the motivation fails.

  3. The reference does not say what the action says it says

    Examiners work at speed across large volumes of art. Reading the cited passage in context, rather than as quoted, sometimes shows it teaches something different.

  4. Amend, deliberately

    Adding a limitation the references do not disclose usually works, and permanently narrows the patent. It is a trade, and it should be made knowingly rather than as the first move.

Secondary considerations

Evidence of unexpected results, commercial success traceable to the claimed features, long-felt need, or the failure of others can rebut an obviousness case. It has to be real evidence with a nexus to what is claimed, usually in a declaration, and it is more work than an argument — but in the right case it is decisive.

Statute

35 U.S.C. 103

Governing case

KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007)

Examiner guidance

MPEP 2141–2145

Typical reply period

Three months from the mailing date

Most common failure mode

Answering the references and ignoring the stated motivation to combine

Find out which references were cited against you and where

Upload the action and we will list the grounds, the claims each one covers, and the references, with page citations.

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Questions people ask

A §102 rejection says one single reference already contains every element of your claim. A §103 rejection concedes that no single reference does, and argues that combining two or more of them would have been obvious. If the examiner needs two documents to cover your claim, the rejection is under §103.

Usually not. A §103 rejection has more moving parts — the references, the mapping, the motivation to combine and the expectation of success — and each part is a place the rejection can fail. A well-founded §102 rejection is often the harder one, because a single reference either discloses the claim or it does not.

Being better is not the test, and arguing commercial merit without evidence tied to the claimed features rarely moves an examiner. Unexpected results supported by data can rebut obviousness; general assertions of superiority do not.

That is permitted, and it often makes the rejection weaker rather than stronger, because a reason to combine has to exist for each step. Long chains of references are worth reading closely for gaps in the reasoning.

Where this comes from

Every statement of law or procedure on this page traces to a primary source you can check yourself.

Last reviewed August 30, 2026

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One reference was cited against your whole claim: §102

What anticipation under 35 USC 102 means, when a reference qualifies as prior art, and the realistic ways of answering the rejection.

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Your Office Action says FINAL

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The four rejection grounds, told apart

What each section number in an Office Action means: 101 eligibility, 102 anticipation, 103 obviousness and 112 claim drafting.

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