How can inventors overcome an obviousness rejection based on Art Recognized Suitability?
Inventors facing an obviousness rejection based on Art Recognized Suitability can employ several strategies to overcome the rejection:
- Demonstrate unexpected results: Show that the invention produces results that would not have been predicted by a person of ordinary skill in the art.
- Prove superior properties: Provide evidence that the chosen material or component performs better than what was previously known in the art.
- Show non-obviousness of combination: Argue that while individual elements may be known, their combination is not obvious and produces synergistic effects.
- Provide evidence of long-felt need: Demonstrate that the invention solves a problem that others have attempted to solve for a long time without success.
- Argue teaching away: Show that the prior art teaches away from the claimed invention or discourages the particular combination or use.
The MPEP 2144.07 suggests that while selection of a known material may support a prima facie obviousness determination, it is not conclusive. Inventors should focus on demonstrating why their specific selection or use of the material is not merely an obvious choice to one skilled in the art.
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Topics:
MPEP 2100 - Patentability,
MPEP 2144.07 - Art Recognized Suitability For An Intended Purpose,
Patent Law,
Patent Procedure