What is the difference between scientific theory and common sense in patent obviousness?
What is the difference between scientific theory and common sense in patent obviousness?
In patent examination, both scientific theory and common sense can be used to support obviousness rejections, but they are distinct concepts with different applications. The MPEP 2144.02 discusses reliance on scientific theory, while common sense is addressed in other sections of the MPEP.
Scientific Theory:
- Based on established scientific principles and laws
- Requires a clear explanation of how the theory applies to the invention
- Must be supported by evidence in the prior art
- Can be used to predict results or explain phenomena in a technical context
Common Sense:
- Based on general knowledge and practical experience
- Often relies on what would be “obvious to try” for a person of ordinary skill
- May not require explicit prior art teachings
- Can be used for simple modifications or combinations
The MPEP 2144.02 states: “The rationale to support a rejection under 35 U.S.C. 103 may rely on logic and sound scientific principle.” This emphasizes the importance of scientific theory in obviousness rejections. However, examiners must be cautious when relying solely on common sense, as noted in MPEP 2144.03, which requires that such rejections be supported by a reasoned explanation.
Applicants should be prepared to address both types of arguments, recognizing that scientific theory-based rejections may require more technical rebuttals, while common sense rejections might be challenged on the grounds of lack of explicit teaching or motivation in the prior art.
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