How can applicants respond to obviousness rejections based on scientific theory?

How can applicants respond to obviousness rejections based on scientific theory?

When faced with obviousness rejections based on scientific theory, applicants have several strategies to respond effectively. The MPEP 2144.02 provides guidance on how examiners use scientific principles, but applicants can counter these arguments in several ways:

1. Challenge the applicability of the theory: Demonstrate that the scientific theory cited by the examiner does not directly apply to the claimed invention or that its application is not as straightforward as suggested.
2. Show unexpected results: Provide evidence that the invention produces results that go beyond what would be predicted by the scientific theory alone.
3. Argue for non-obviousness: Explain how the invention, even if based on known scientific principles, requires non-obvious insights or combinations that would not have been apparent to a person of ordinary skill in the art.
4. Present secondary considerations: Offer evidence of commercial success, long-felt but unsolved needs, or failure of others to support non-obviousness.
5. Demonstrate teaching away: Show that the prior art teaches away from the claimed invention, despite the scientific theory.

Remember, as stated in MPEP 2144.02, “The mere fact that a certain result or phenomenon may be achieved according to a scientific theory does not make it obvious unless the prior art suggested to one of ordinary skill in the art that the theory could be implemented for that purpose.” Applicants can use this principle to argue that while a scientific theory might explain the invention in hindsight, it would not have been obvious to apply the theory in the specific manner of the invention at the time it was made.

To learn more:

• obviousness rejections
• scientific theory
• patent application response
• non-obviousness arguments