How can legal precedent be used to support an obviousness rejection?
Legal precedent can be used to support an obviousness rejection when it is warranted and appropriately supported. The MPEP states, “Office personnel may invoke legal precedent as a source of supporting rationale when warranted and appropriately supported.”
However, it’s important to note that legal precedent should not be applied blindly. The MPEP cautions, “If the facts in a prior legal decision are sufficiently similar to those in an application under examination, the examiner may use the rationale used by the court.” This means that examiners must carefully consider the similarities between the current case and the legal precedent before applying it.
Additionally, the MPEP emphasizes that “If the applicant has demonstrated the criticality of a specific limitation, it would not be appropriate to rely solely on the rationale used by the court to support an obviousness rejection.” This highlights the importance of considering the specific facts and circumstances of each case.
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