How can an applicant respond to a prima facie obviousness rejection?

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.

When faced with a prima facie obviousness rejection, an applicant has several options to respond. The MPEP states:

“Once the examiner sets out this prima facie case, the burden shifts to the patentee to provide evidence, in the prior art or beyond it, or argument sufficient to rebut the examiner’s evidence.”

Applicants can respond by:

• Submitting evidence of nonobviousness, such as comparative test data
• Providing arguments that challenge the examiner’s reasoning
• Demonstrating unexpected results or properties
• Amending the claims to overcome the rejection

It’s important to note that evidence submitted after a final rejection may be denied entry, so early submission of evidence is encouraged for compact prosecution.