How can an inventor overcome an obviousness rejection based on art recognized equivalence?

An inventor facing an obviousness rejection based on art recognized equivalence can employ several strategies to overcome the rejection. Here are some approaches based on the principles outlined in MPEP 2144.06:

1. Challenge the Equivalency: Argue that the prior art does not actually recognize the equivalency between the components. Remember, the MPEP states: “In order to rely on equivalence as a rationale supporting an obviousness rejection, the equivalency must be recognized in the prior art.”
2. Demonstrate Unexpected Results: Show that the combination or substitution produces unexpected or superior results compared to what would be expected from the prior art.
3. Argue Non-obviousness: Present evidence that the combination or substitution would not have been obvious to a person skilled in the art at the time of the invention.
4. Highlight Differences: Emphasize any critical differences between the claimed invention and the prior art that make the invention non-obvious.
5. Secondary Considerations: Present evidence of secondary considerations, such as commercial success, long-felt but unsolved needs, or failure of others, which can indicate non-obviousness.

Remember, each case is unique, and the specific facts and circumstances will determine the most effective strategy for overcoming an obviousness rejection.

To learn more:

• Overcoming Obviousness Rejection
• Art Recognized Equivalence
• Patent Examination
• Inventor Strategies
• Non-obviousness Arguments