What is the relationship between equivalence and obviousness in patent examination?

In patent examination, there is an important relationship between equivalence and obviousness:

1. If an applicant successfully shows that a prior art element is not equivalent to the claimed limitation, the examiner must still consider obviousness.
2. Non-equivalence does not automatically mean non-obviousness.
3. The examiner must perform a 35 U.S.C. 103 analysis to determine if the claimed means- (or step-) plus-function would have been obvious from the prior art.

MPEP 2183 states: “Even where the applicant has met that burden of proof and has shown that the prior art element is not equivalent to the structure, material or acts described in the applicant’s specification, the examiner must still make a 35 U.S.C. 103 analysis to determine if the claimed means- (or step-) plus-function would have been obvious from the prior art to one of ordinary skill in the art.” This approach ensures a thorough examination of the claimed invention’s patentability.

To learn more:

• equivalence
• obviousness
• patent examination
• 35 USC 103
• means-plus-function
• step-plus-function