How does the examiner’s explanation support a prima facie case of equivalence?

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.

The examiner’s explanation is fundamental in supporting a prima facie case of equivalence. MPEP 2183 emphasizes this:

“The examiner must provide an explanation to support an equivalence rejection. […] The explanation should be sufficient to establish a prima facie case of obviousness.”

The examiner’s explanation supports the prima facie case by:

• Clearly identifying the claim limitation not literally met by the prior art
• Detailing how the prior art element performs the identical function specified in the claim
• Demonstrating how it does so in substantially the same way
• Showing how it achieves substantially the same result

This comprehensive explanation serves as the foundation for the equivalence rejection, providing a reasonable basis for the applicant to understand and potentially rebut the rejection. It also ensures transparency in the examination process and helps establish a clear record for potential future proceedings.