How should examiners articulate obviousness rejections?

Examiners must clearly articulate their reasoning when making obviousness rejections. The MPEP emphasizes the importance of a clear and explicit analysis:

• Provide a clear explanation of the rationale supporting the obviousness conclusion
• Make explicit factual findings regarding the Graham factors
• Explain why the differences between the prior art and the claimed invention would have been obvious

The MPEP quotes the Supreme Court in KSR: “‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.'”

Examiners should avoid relying solely on conclusory statements and should instead provide a reasoned explanation that connects the factual findings to the legal conclusion of obviousness. This approach helps ensure that applicants understand the basis of the rejection and can respond effectively.

To learn more:

• Obviousness rejections
• Patent examination
• Articulating rationale
• Graham factors