How does the “burden of proof” work in establishing prima facie obviousness?

In establishing prima facie obviousness, the burden of proof initially lies with the patent examiner. The MPEP 2142 states:

“The examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness.”

This means that:

• The examiner must provide a factual basis for the rejection.
• The reasoning must be clearly articulated.
• The burden then shifts to the applicant to rebut the prima facie case.
• If the examiner fails to establish a prima facie case, the applicant is not obligated to provide evidence of nonobviousness.

This burden-shifting mechanism ensures a fair examination process and allows applicants to focus their responses on substantive issues raised by the examiner.

To learn more:

• burden of proof
• prima facie obviousness
• patent examination