How does the USPTO weigh objective evidence against the prima facie case of obviousness?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

The USPTO must carefully weigh all evidence when making a final determination of patentability. According to MPEP 716.01(d):

“When an applicant timely submits evidence traversing a rejection, the examiner must reconsider the patentability of the claimed invention. The ultimate determination of patentability must be based on consideration of the entire record, by a preponderance of evidence, with due consideration to the persuasiveness of any arguments and any secondary evidence.”

Key points in this process include:

• All evidence must be considered together, not in isolation
• Rebuttal evidence should be weighed against the evidence supporting the prima facie case, not against the conclusion itself
• The strength of the prima facie case must be considered alongside the strength of the objective evidence
• In some cases, a strong prima facie case may outweigh even persuasive objective evidence

Examiners must provide a clear rationale for their final determination, especially if they conclude that the objective evidence is insufficient to overcome the prima facie case of obviousness.