How does the USPTO weigh objective evidence against the prima facie case of obviousness?
The USPTO must carefully weigh all evidence when making a final determination of patentability. According to MPEP 716.01(d):
“When an applicant timely submits evidence traversing a rejection, the examiner must reconsider the patentability of the claimed invention. 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.”
Key points in this process include:
- All evidence must be considered together, not in isolation
- Rebuttal evidence should be weighed against the evidence supporting the prima facie case, not against the conclusion itself
- The strength of the prima facie case must be considered alongside the strength of the objective evidence
- In some cases, a strong prima facie case may outweigh even persuasive objective evidence
Examiners must provide a clear rationale for their final determination, especially if they conclude that the objective evidence is insufficient to overcome the prima facie case of obviousness.
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