What is the examiner’s role in establishing prima facie obviousness?
The patent examiner plays a crucial role in establishing prima facie obviousness. According to the MPEP:
“The examiner bears the initial burden of using facts and reasoning to establish a prima facie conclusion of obviousness.”
This means the examiner must provide evidence and logical reasoning to show why the claimed invention would have been obvious in light of the prior art. The examiner should clearly articulate:
- The relevant teachings of the prior art
- The differences between the claim and the prior art
- The proposed modification of the prior art
- An explanation of why the invention would have been obvious
To learn more:
Topics:
MPEP 2100 - Patentability,
MPEP 2142 - Legal Concept Of Prima Facie Obviousness,
Patent Law,
Patent Procedure