How does the USPTO balance prima facie obviousness and secondary considerations?

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 USPTO balances prima facie obviousness and secondary considerations by following the guidance in MPEP 716.01(d). The key aspects of this balancing act are:

• Prima facie obviousness and secondary considerations are both part of the overall obviousness analysis.
• Examiners must consider all evidence before making a final determination.
• The strength of the prima facie case is weighed against the strength and persuasiveness of secondary considerations.
• A strong prima facie case may outweigh weak or limited evidence of secondary considerations.

The MPEP states: ‘The submission of objective evidence of patentability does not mandate a conclusion of patentability in and of itself.’ This emphasizes that while secondary considerations are important, they do not automatically overcome a prima facie case of obviousness.