How does the MPEP address the balance between prima facie obviousness and rebuttal evidence?

The MPEP 716.01(d) addresses the balance between prima facie obviousness and rebuttal evidence by stating:

“The ultimate determination of patentability must be based on consideration of the entire record, by a preponderance of evidence, with due consideration to the persuasiveness of any arguments and any secondary evidence.”

This guidance emphasizes that examiners must consider both the prima facie case and any rebuttal evidence holistically. The MPEP further clarifies:

“The submission of objective evidence of patentability does not mandate a conclusion of patentability in and of itself.”

This indicates that while rebuttal evidence is important, it does not automatically overcome a prima facie case of obviousness. Examiners must carefully weigh all evidence and arguments to make a fair and comprehensive patentability determination.

To learn more:

• prima facie obviousness
• rebuttal evidence
• patentability determination
• evidence weighing