MPEP § 716.05 — Skepticism of Experts (Annotated Rules)
§716.05 Skepticism of Experts
This page consolidates and annotates all enforceable requirements under MPEP § 716.05, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Skepticism of Experts
This section addresses Skepticism of Experts.
Key Rules
Industry Skepticism
“The skepticism of an expert, expressed before these inventors proved him wrong, is entitled to fair evidentiary weight,… as are the five to six years of research that preceded the claimed invention.” In re Dow Chemical Co., 837 F.2d 469, 5 USPQ2d 1529 (Fed. Cir. 1988); Burlington Industries Inc. v. Quigg, 822 F.2d 1581, 3 USPQ2d 1436 (Fed. Cir. 1987) (testimony that the invention met with initial incredulity and skepticism of experts was sufficient to rebut the prima facie case of obviousness based on the prior art).
Establishing Prima Facie Case
“The skepticism of an expert, expressed before these inventors proved him wrong, is entitled to fair evidentiary weight,… as are the five to six years of research that preceded the claimed invention.” In re Dow Chemical Co., 837 F.2d 469, 5 USPQ2d 1529 (Fed. Cir. 1988); Burlington Industries Inc. v. Quigg, 822 F.2d 1581, 3 USPQ2d 1436 (Fed. Cir. 1987) (testimony that the invention met with initial incredulity and skepticism of experts was sufficient to rebut the prima facie case of obviousness based on the prior art).
Citations
| Primary topic | Citation |
|---|---|
| Establishing Prima Facie Case Industry Skepticism | Burlington Industries Inc. v. Quigg, 822 F.2d 1581, 3 USPQ2d 1436 (Fed. Cir. 1987) |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 716.05 — Skepticism of Experts
Source: USPTO716.05 Skepticism of Experts [R-08.2012]
“Expressions of disbelief by experts constitute strong evidence of nonobviousness.” Environmental Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 698, 218 USPQ 865, 869 (Fed. Cir. 1983) (citing United States v. Adams, 383 U.S. 39, 52, 148 USPQ 479, 483-484 (1966)) (The patented process converted all the sulfur compounds in a certain effluent gas stream to hydrogen sulfide, and thereafter treated the resulting effluent for removal of hydrogen sulfide. Before learning of the patented process, chemical experts, aware of earlier failed efforts to reduce the sulfur content of effluent gas streams, were of the opinion that reducing sulfur compounds to hydrogen sulfide would not adequately solve the problem.).
“The skepticism of an expert, expressed before these inventors proved him wrong, is entitled to fair evidentiary weight, . . . as are the five to six years of research that preceded the claimed invention.” In re Dow Chemical Co., 837 F.2d 469, 5 USPQ2d 1529 (Fed. Cir. 1988); Burlington Industries Inc. v. Quigg, 822 F.2d 1581, 3 USPQ2d 1436 (Fed. Cir. 1987) (testimony that the invention met with initial incredulity and skepticism of experts was sufficient to rebut the prima facie case of obviousness based on the prior art).