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I often see 103 rejections rebutted in essentially the same way a 102 rejection is rebutted: by arguing that one reference (usually the primary reference) does not teach the elements the Examiner alleges.

These blog posts from 2008 say that the MPEP used to include an "all elements test" that has since been removed. The MPEP has been amended to say "All words in a claim must be considered in judging the patentability of that claim against the prior art.”

The author argues that the test still exists based on some case law, but of course this is just his opinion and the Examiners don't usually go very far off the MPEP reservation. The thrust of the author's argument is that the "all elements test" is implicit in the law.

Does this test still exist? How do folks frame this argument in their responses?

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I do not think the fear expressed in the 2008 blog post came to pass. I can speculate on the motivation for the change in the MPEP but I have not heard any subsequent outcry that 103 rejections that do not address all elements are being viewed as prima facie.

The statutory basis is wording in post AIA 103

if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.

The “as a whole” would mean all elements. The change in the MPEP after KSR was probably due to the post-KSR view that every element needed to be addressed but could be addressed by “common knowledge” rather than needing to be seen literally in cited prior art. In my opinion “addressed” would be better than “considered”.

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  • I appreciate the answer. I understand the "as a whole" to mean something else, although I can certainly imagine a court reading your interpretation into that phrase. See, e.g., MPEP 2141.02. I've changed my question to broaden "statutory" a bit, because I'm really just trying to understand on what basis I'm making an argument when writing an OA response. In all cases except this one, there is direct support in the MPEP for my argument. It stands out because this is one of the most frequent OA responses for 103 rejections.
    – jordanpg
    Dec 7, 2023 at 14:38

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