What is the significance of “factual findings” in patent obviousness determinations?

Factual findings play a crucial role in patent obviousness determinations. The MPEP 2142 emphasizes their importance:

“The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. … [This] can often be supported by finding explicit or implicit teachings within the references themselves or by inferences that would lead one of ordinary skill in the art to see the relevance of the teachings of the applied prior art references.”

Factual findings are significant because:

• They form the foundation of the obviousness analysis.
• They must be based on objective evidence from prior art or the knowledge of a person skilled in the art.
• They help ensure that obviousness rejections are not based on hindsight reasoning.
• They provide a clear basis for applicants to understand and respond to rejections.

Examiners must make these factual findings explicit in their office actions to support their obviousness conclusions.

To learn more:

• factual findings
• obviousness determination
• patent examination