What role does “reasonable expectation of success” play in obviousness rejections?
What role does “reasonable expectation of success” play in obviousness rejections?
The concept of “reasonable expectation of success” is a crucial element in determining obviousness in patent examination. According to MPEP 2143.02:
“Obviousness does not require absolute predictability, however, at least some degree of predictability is required.”
This means that when an examiner combines or modifies prior art references to reject a claim as obvious, they must establish that a person of ordinary skill in the art would have had a reasonable expectation of success in making the combination or modification. The key points to understand are:
- Absolute certainty of success is not required
- There must be more than mere hope or possibility of success
- The level of predictability in the art is a factor
- The scope of the claimed invention and the prior art teachings are important considerations
Examiners should provide a clear explanation of why a person of ordinary skill would have expected success when combining or modifying the prior art. This explanation should be based on the teachings of the prior art, the knowledge generally available to those in the field, and the level of skill of a person of ordinary skill in the art.
Applicants can challenge an obviousness rejection by arguing that there was no reasonable expectation of success, particularly if the combination requires overcoming significant technical hurdles or if the art is highly unpredictable.
To learn more: