What are the key requirements for establishing a prima facie case of obviousness?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-30 10 Rules 5 Related FAQs 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 key requirements for establishing a prima facie case of obviousness are: Resolving the Graham factual inquiries Articulating a clear rationale for why the claimed invention would have been obvious Providing a reasoned explanation that avoids conclusory generalizations As stated in the MPEP: “The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit.” MPEP 2143 Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Basic Requirements for Establishing Prima Facie Case of Obviousness MPEP 2143 Prima Facie Case of Obviousness Without Lead Compound MPEP 2143 Clear Reasoning Required for 35 U.S.C. 103 Rejections MPEP 2143 Requirement for Resolving Graham Factual Inquiries MPEP 2143 Required Requirement for Resolving Graham Factual Inquiries MPEP 2143 Required Requirement for Resolving Graham Factual Inquiries MPEP 2143 Required Requirement for Resolving Graham Factual Inquiries MPEP 2143 Required Requirement for Graham Factual Inquiries to Reject Obviousness Claim MPEP 2143 Required Requirement for Resolving Graham Factual Inquiries MPEP 2143 Required Example of Establishing Prima Facie Case in Nilssen MPEP 2143 Other Related FAQs 5 FAQs Collapse How does common sense factor into obviousness determinations? How does the &#8216;design choice&#8217; rationale apply in obviousness rejections? What is the &#8220;obvious to try&#8221; rationale for obviousness? What are the key elements of the &#8216;obvious to try&#8217; rationale in patent obviousness? What is the &#821...