How should examiners apply legal precedent in obviousness rejections?

Examiners should apply legal precedent in obviousness rejections carefully and consistently, considering all relevant facts of the case at hand. The MPEP provides guidance on this matter, stating, “The examiner must apply the law consistently to each application after considering all the relevant facts. If the facts in a prior legal decision are sufficiently similar…

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Can attorney arguments replace evidence in patent cases?

No, attorney arguments cannot replace evidence in patent cases. The MPEP clearly states: “The arguments of counsel cannot take the place of evidence in the record.” (MPEP 716.01(c)) This principle is based on the case In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). Attorney statements regarding aspects such as unexpected…

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