How does the burden of proof shift in equivalence determinations?
The burden of proof in equivalence determinations shifts between the examiner and the applicant. The process typically follows these steps: The examiner establishes a prima facie case of equivalence. The burden then shifts to the applicant to show non-equivalence. If the applicant successfully demonstrates non-equivalence, the examiner must consider obviousness. As stated in MPEP 2183:…
Read MoreAre mere allegations of nonequivalence sufficient to overcome a prima facie case of equivalence?
No, mere allegations of nonequivalence are not sufficient to overcome a prima facie case of equivalence in means-plus-function claims. MPEP 2184 states: “Under no circumstance should an examiner accept as persuasive a bare statement or opinion that the element shown in the prior art is not an equivalent embraced by the claim limitation.” To successfully…
Read MoreWhat is a prima facie case for lack of ornamentality in a design patent?
A prima facie case for lack of ornamentality in a design patent is established when an examiner provides sufficient evidence to show that the claimed design lacks ornamental characteristics. The MPEP states: “To properly reject a claimed design under 35 U.S.C. 171 on the basis of a lack of ornamentality, an examiner must make a…
Read MoreHow does an examiner establish a prima facie case of obviousness?
How does an examiner establish a prima facie case of obviousness? An examiner establishes a prima facie case of obviousness by demonstrating that the claimed invention would have been obvious to a person of ordinary skill in the art. The MPEP provides guidance on this process: To establish a prima facie case of obviousness, three…
Read MoreHow should rebuttal evidence be evaluated in patent examination?
Rebuttal evidence in patent examination should be evaluated holistically against the prima facie case, not in isolation. According to MPEP 716.01(d): “All of the competent rebuttal evidence taken as a whole should be weighed against the evidence supporting the prima facie case.” This means that examiners should consider the entire body of rebuttal evidence together,…
Read MoreWhat is the burden of proof in patent rejections?
In patent examination, the burden of proof for rejecting claims lies with the United States Patent and Trademark Office (USPTO). MPEP 707.07(d) states: “The burden is on the Office to establish any prima facie case of unpatentability (see, e.g., MPEP § 2103), thus the reasoning behind any rejection must be clearly articulated.” This means that…
Read MoreHow does the USPTO weigh objective evidence against the prima facie case of obviousness?
The USPTO must carefully weigh all evidence when making a final determination of patentability. According to MPEP 716.01(d): “When an applicant timely submits evidence traversing a rejection, the examiner must reconsider the patentability of the claimed invention. The ultimate determination of patentability must be based on consideration of the entire record, by a preponderance of…
Read MoreWhat is an Accelerated Examination Support Document (AESD) and what should it include?
What is an Accelerated Examination Support Document (AESD) and what should it include? An Accelerated Examination Support Document (AESD) is a crucial component of the accelerated examination process. According to MPEP 708.02(a), the AESD must include: An information disclosure statement (IDS) citing each reference deemed most closely related to the subject matter of each claim.…
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