How should applicants respond to obviousness rejections?

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.

Applicants responding to obviousness rejections should consider the following strategies outlined in the MPEP:

• Show that the Office erred in its factual findings
• Provide evidence to demonstrate nonobviousness
• Present arguments pointing out specific distinctions that render the claims patentable
• Submit rebuttal evidence, including evidence of secondary considerations

The MPEP states: “37 CFR 1.111(b) requires applicant to distinctly and specifically point out the supposed errors in the Office’s action and reply to every ground of objection and rejection in the Office action.”

Applicants should provide a reasoned statement explaining why they believe the Office has erred in its factual findings or legal conclusions. Mere statements that the Office has not established a prima facie case of obviousness without substantive arguments are generally not considered adequate to rebut the rejection.

When presenting rebuttal evidence, applicants should explain how the evidence demonstrates nonobviousness, such as unexpected results or long-felt but unsolved needs.