What is the “rationale to support a conclusion of obviousness” in patent examination?

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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 “rationale to support a conclusion of obviousness” in patent examination refers to the reasoning an examiner must provide when rejecting a claim as obvious. According to MPEP 2142 : “[T]he examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness. If the examiner does not produce a prima facie case, the applicant is under no obligation to submit secondary evidence to show nonobviousness.” This rationale must be clearly articulated and based on the teachings of the prior art, the nature of the problem to be solved, or the knowledge of a person having ordinary skill in the art. The examiner must explain why the claimed invention would have been obvious to a person of ordinary skill in the art at the time the invention was made. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Examiner Must Establish Prima Facie Case of Obviousness MPEP 2142 Examiner Must Show Prima Facie Case Is More Probable Than Not MPEP 2142 Required Explanation of Why Invention Would Have Been Obvious Required in Office Action MPEP 2142 No Obligation to Prove Nonobviousness Without Prima Facie Case MPEP 2142 Requirement for Person of Ordinary Skill in the Art MPEP 2142 Required Examiner Bears Initial Burden of Establishing Prima Facie Obviousness MPEP 2142 Patent Examiner Must Establish Prima Facie Case of Obviousness MPEP 2142 Required Prima Facie Case for Patent Obviousness Determination MPEP 2142 Establishing Prima Facie Case for Obviousness Determination MPEP 2142 Burden of Proof Shifting to Applicant After Prima Facie Case MPEP 2142 Permitted Other Related FAQs 5 FAQs Collapse How does the USPTO avoid hindsight bias in obviousness determination...