What is the role of the examiner in making a prima facie case of equivalence?

The examiner plays a crucial role in making a prima facie case of equivalence. According to MPEP 2183:

“The examiner must provide an explanation to support an equivalence rejection. When a claim limitation is not literally met by a prior art element, the examiner should explain how the prior art element nonetheless meets the claim limitation through equivalent means.”

The examiner’s responsibility includes:

• Identifying the prior art element that doesn’t literally meet the claim limitation
• Explaining how this element performs the identical function specified in the claim
• Demonstrating how it performs that function in substantially the same way as the claimed invention
• Showing how it achieves substantially the same result as the claimed invention

This explanation forms the basis of the prima facie case of equivalence, which the applicant can then attempt to rebut.

To learn more:

• prima facie case
• equivalence
• examiner’s role
• patent examination