What are the key requirements for establishing a prima facie case of obviousness?

The key requirements for establishing a prima facie case of obviousness are: Resolving the Graham factual inquiries Articulating a clear rationale for why the claimed invention would have been obvious Providing a reasoned explanation that avoids conclusory generalizations As stated in the MPEP: “The key to supporting any rejection under 35 U.S.C. 103 is the…

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What is the test for obviousness under pre-AIA 35 U.S.C. 103(a)?

The test for obviousness under pre-AIA 35 U.S.C. 103(a) is outlined in form paragraph 7.23.fti. This paragraph summarizes the factual inquiries established by the Supreme Court in Graham v. John Deere Co.: The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows: Determining the scope and…

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What are the rationales supporting obviousness conclusions after KSR?

Following KSR, the MPEP outlines several rationales that may support a conclusion of obviousness: Combining prior art elements according to known methods to yield predictable results Simple substitution of one known element for another to obtain predictable results Use of known technique to improve similar devices (methods, or products) in the same way Applying a…

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How should examiners articulate obviousness rejections?

Examiners must clearly articulate their reasoning when making obviousness rejections. The MPEP emphasizes the importance of a clear and explicit analysis: Provide a clear explanation of the rationale supporting the obviousness conclusion Make explicit factual findings regarding the Graham factors Explain why the differences between the prior art and the claimed invention would have been…

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