What are the requirements for a proper obviousness rejection under 35 U.S.C. 103?
What are the requirements for a proper obviousness rejection under 35 U.S.C. 103?
A proper obviousness rejection under 35 U.S.C. 103 must meet specific requirements as outlined in MPEP 2141. The key elements include:
- Graham Factual Inquiries: The examiner must consider the scope and content of the prior art, differences between the prior art and the claims, and the level of ordinary skill in the art.
- Rationale: The examiner must articulate a reason why the claimed invention would have been obvious. As stated in MPEP 2141:
“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.”
Additional requirements include:
- Considering the claimed invention as a whole
- Providing evidence to support the rejection
- Addressing all claim limitations
- Explaining the motivation to combine references if multiple references are used
- Considering any secondary considerations of nonobviousness presented by the applicant
Examiners must ensure that all these elements are addressed to establish a prima facie case of obviousness. Applicants can challenge the rejection by arguing against any of these points or presenting evidence of unexpected results.
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