How should examiners apply legal precedent in obviousness rejections?
Examiners should apply legal precedent in obviousness rejections carefully and consistently, considering all relevant facts of the case at hand. The MPEP provides guidance on this matter, stating, “The examiner must apply the law consistently to each application after considering all the relevant facts. If the facts in a prior legal decision are sufficiently similar to those in an application under examination, the examiner may use the rationale used by the court.”
However, it’s crucial to note that legal precedent should not be applied blindly or as a per se rule. The MPEP emphasizes, “If the applicant has demonstrated the criticality of a specific limitation, it would not be appropriate to rely solely on the rationale used by the court to support an obviousness rejection.”
The MPEP also highlights the value of the extensive body of precedent in patent law: “The value of the exceedingly large body of precedent wherein our predecessor courts and this court have applied the law of obviousness to particular facts, is that there has been built a wide spectrum of illustrations and accompanying reasoning, that have been melded into a fairly consistent application of law to a great variety of facts.” This underscores the importance of using legal precedent as a guide while still considering the specific facts of each case.
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