How can an applicant respond to a prima facie obviousness rejection?

When faced with a prima facie obviousness rejection, an applicant has several options to respond. The MPEP states:

“Once the examiner sets out this prima facie case, the burden shifts to the patentee to provide evidence, in the prior art or beyond it, or argument sufficient to rebut the examiner’s evidence.”

Applicants can respond by:

• Submitting evidence of nonobviousness, such as comparative test data
• Providing arguments that challenge the examiner’s reasoning
• Demonstrating unexpected results or properties
• Amending the claims to overcome the rejection

It’s important to note that evidence submitted after a final rejection may be denied entry, so early submission of evidence is encouraged for compact prosecution.

To learn more:

• Patent Application
• Prima Facie Obviousness
• Rejection Response
• Evidence of Nonobviousness