2142 Legal Concept of Prima Facie Obviousness
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"During patent examination and reexamination, the concept of prima facie obviousness establishes the framework for the obviousness determination and the burdens the parties face.
- Under this framework, the patent examiner must first set forth a prima facie case, supported by evidence, showing why the claims at issue would have been obvious in light of the prior art.
- Once the examiner sets out this prima facie case, the burden shifts to the patentee to provide evidence, in the prior art or beyond it, or argument sufficient to rebut the examiner's evidence.
- The examiner then reaches the final determination on obviousness by weighing the evidence establishing the prima facie case with the rebuttal evidence."
The 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.
- If, however, the examiner does produce a prima facie case, the burden of coming forward with evidence or arguments shifts to the applicant who may submit additional evidence of nonobviousness, such as comparative test data showing that the claimed invention possesses improved properties not expected by the prior art.
The decision of whether to submit evidence after a rejection should be influenced by the goals of compact prosecution, which encourages the early submission of such evidence.
- It is also noted that evidence submitted after final rejection may be denied entry into the record.
To reach a proper determination under 35 U.S.C. 103, the examiner must step backward in time and into the shoes worn by the hypothetical “person of ordinary skill in the art” when the invention was unknown and just before it was made.
- In view of all factual information, the examiner must then make a determination whether the claimed invention “as a whole” would have been obvious at that time to that person.
- Knowledge of applicant’s disclosure must be put aside in reaching this determination, yet kept in mind in order to determine the “differences,” conduct the search and evaluate the “subject matter as a whole” of the invention.
- The tendency to resort to “hindsight” based upon applicant's disclosure is often difficult to avoid due to the very nature of the examination process.
- However, impermissible hindsight must be avoided and the legal conclusion must be reached on the basis of the facts gleaned from the prior art.
ESTABLISHING A PRIMA FACIE CASE OF OBVIOUSNESS
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 Int'l Co. v. Teleflex Inc., noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit.
The Federal Circuit has stated that "rejections on obviousness cannot be sustained with mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”
If the examiner determines there is factual support for rejecting the claimed invention under 35 U.S.C. 103, the examiner must then consider any evidence supporting the patentability of the claimed invention, such as any evidence in the specification or any other evidence submitted by the applicant.
- The ultimate determination of patentability is based on the entire record, by a preponderance of evidence, with due consideration to the persuasiveness of any arguments and any secondary evidence.
The legal standard of “a preponderance of evidence” requires the evidence to be more convincing than the evidence which is offered in opposition to it.
- With regard to rejections under 35 U.S.C. 103, the examiner must provide evidence which as a whole shows that the legal determination sought to be proved (i.e., the reference teachings establish a prima facie case of obviousness) is more probable than not.
When an applicant submits evidence, whether in the specification as originally filed or in reply to a rejection, the examiner must reconsider the patentability of the claimed invention.
- The decision on patentability must be made based upon consideration of all the evidence, including the evidence submitted by the examiner and the evidence submitted by the applicant.
- A decision to make or maintain a rejection in the face of all the evidence must show that it was based on the totality of the evidence.
- Facts established by rebuttal evidence must be evaluated along with the facts on which the conclusion of obviousness was reached, not against the conclusion itself.
» 2143 Examples of Basic Requirements of a Prima Facie Case of Obviousness
