2143 Examples of Basic Requirements of a Prima Facie Case of Obviousness
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This MPEP section is applicable to applications subject to the first inventor to file (FITF) provisions of the AIA except that the relevant date is the "effective filing date" of the claimed invention instead of the "time of the invention" or "time the invention was made," which are only applicable to applications subject to pre-AIA 35 U.S.C. 102.
The Supreme Court in KSR Int'l Co. v. Teleflex Inc. identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham.
- 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.
In Ball Aerosol v. Ltd. Brands, the Federal Circuit offered additional instruction as to the need for an explicit analysis.
- The Federal Circuit explained that the Supreme Court’s requirement for an explicit analysis does not require record evidence of an explicit teaching of a motivation to combine in the prior art.
The Federal Circuit’s directive in Ball Aerosol was addressed to a lower court, but it applies to Office personnel as well.
When setting forth a rejection, Office personnel are to continue to make appropriate findings of fact and must provide a reasoned explanation as to why the invention as claimed would have been obvious to a person of ordinary skill in the art at the time of the invention.
- This requirement for explanation remains even in situations in which Office personnel may properly rely on intangible realities such as common sense and ordinary ingenuity.
I. EXEMPLARY RATIONALES
Example of rationales that may support a conclusion of obviousness include:
- Combining prior art elements according to known methods to yield predictable results;
- Simple substitution of one known element for another to obtain predictable results;
- Use of known technique to improve similar devices (methods, or products) in the same way;
- Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
- “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
- Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
- Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Note that the list of rationales provided is not intended to be an all-inclusive list.
- Other rationales to support a conclusion of obviousness may be relied upon by Office personnel.
- Any rationale employed must provide a link between the factual findings and the legal conclusion of obviousness.
» A. Combining Prior Art Elements According to Known Methods To Yield Predictable Results
