Examiner Rationales for Prima Facie Obviousness
Did you know that the examiner bears the initial burden of proving a prima facie case of obviousness? You, the applicant, do not have any duty or burden to prove nonobviousness. Therefore, initially, the applicant has no obligation to present any secondary evidence of nonobviousness. It is only when the examiner has proven a prima facie case of obviousness that the burden shifts to the applicant.
Prima facie obviousness is a preponderance of the evidence standard. That is, the examiner has to weigh the evidence of the entire record (that includes your disclosure and all of the prior art references made of record) and find that there is more evidence in favor of a finding of obviousness than evidence presented against it. In other words, that it is more probable to be obvious than not obvious based on all the evidence considered.
After weighing the evidence and finding that the invention is more probable than not to be obvious, the examiner must then present a rationale linking the evidence to a legal conclusion of obviousness. Have you ever received a rationale with no evidence? I have. Examiner rationales for obviousness rarely, from my experience, include links to proof—I’m sure you have experienced this as well. Often, the rationale links to nothing and you simply receive the rationale and conclusion: your claims have been rejected, have a nice day.
Take the ‘obvious to try’ rationale that was made especially annoying thanks to KSR Int’l Co. v. Teleflex. The Supreme Court said that the “The Federal Circuit erred in holding that patent examiners should look only to the problem the patentee was trying to solve. Under the correct analysis, any need or problem known in the field and addressed by the patent can provide a reason for combining the elements in the manner claimed.” Second, the Court held that “when there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill in the art has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”
By allowing design need to be a factor to support a rationale of “obvious to try,” the applicant’s own disclosure statements of attempting to solve a problem can then be used as evidence against them. Also, examiners almost never cite to evidence of market pressure and a finite number of identified or predictable solutions while still invoking the “obvious to try” rationale. Prior to KSR, examiners were supposed to point to evidence of record to support the rationale for finding obviousness. Now, after KSR, the Supreme Court has implicitly given examiners the go-ahead to make an “obvious to try” rationale as long as there is any need in the field without any evidence on the record to support this finding. At the same time, KSR says that findings of obviousness cannot be supported by conclusory statements.
When it comes to the applicant’s rebuttal (i.e., the examiner has met the burden and the burden has shifted), applicant can present evidence of secondary considerations. Presenting evidence of secondary considerations prematurely may constitute implicit admission that the examiner has met his/her burden. Secondary evidence includes evidence of commercial success, long felt but unsolved needs, failure of others and unexpected results. This type of evidence supports a finding of non-obviousness.
Remember, attorney arguments are not evidence. However, an affidavit from a person having ordinary skill in the art (your inventor, for instance) can be considered evidence. Also, when presenting evidence of commercial success to prove nonobviousness, you need a nexus between the commercially successful aspect of the product and your claim. That is, your claim has to claim the thing that is making you a lot of money in the marketplace.
Watch the latest IP Practice Vlogs episode to learn more.
Wen Xie
Wen Xie is a U.S. Patent Attorney and Partner with Global IP Counselors.She is a prosecutor with a comprehensive understanding of the patent process in the United States, Europe, and […see more]
