How can an applicant rebut a prima facie case of obviousness for a design patent?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

The MPEP outlines several ways an applicant can rebut a prima facie case of obviousness for a design patent:

“Once a prima facie case of obviousness has been established, the burden shifts to the applicant to rebut it, if possible, with objective evidence of nonobviousness.”

The MPEP provides examples of such evidence:

• Commercial success
• Expert testimony
• Copying of the design by others

Additionally, the MPEP states:

“‘A prima facie case of obviousness can be rebutted if the applicant…can show that the art in any material respect ‘taught away’ from the claimed invention…A reference may be said to teach away when a person of ordinary skill, upon reading the reference…would be led in a direction divergent from the path that was taken by the applicant.’ See In re Haruna, 249 F.3d 1327, 58USPQ2d 1517 (Fed. Cir. 2001).”

It’s important to note that any objective evidence of nonobviousness submitted by the applicant, including affidavits or declarations under 37 CFR 1.132, must be considered by examiners in determining patentability under 35 U.S.C. 103.