35 U.S.C. 103:
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35 U.S.C. 103 is based on the obviousness of the subject matter.
In order to determine obviousness, the examiner will:
- Determine the scope and contents of the prior art.
- Ascertain the differences between the prior art and the claims in issue.
- Resolve the level of ordinary skill in the pertinent art.
- Evaluate evidence of secondary considerations.
Overcoming a rejection based on 35 U.S.C. 103(a) may be accomplished by:
- Persuasively arguing that the claims are patentably distinguishable from the prior art.
- Amending the claims to patentably distinguish them over the prior art.
- Filing an affidavit or declaration under 37 C.F.R. 1.131.
- Filing an affidavit or declaration showing that the reference invention is not by “another”.
- Perfecting a claim to priority.
- Perfecting priority by amending the specification of the application to contain a specific reference to a prior application.
In order to establish a prima facie case of obviousness, it is not necessary that there be a suggestion or expectation from the prior art that the claimed invention will have the same or a similar utility as one newly discovered by the applicant.
The rationale for proving obviousness may be found in a specific reference, from common knowledge in the art, scientific principles, art recognized equivalents, or a legal precedent.
In considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference, but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.
Combining equivalents known for the same purpose:
- It is prima facie obvious to combine two compositions, each of which is taught by the prior art to be useful for the same purpose in order to form a third composition to be used for the very same purpose.
To make out a case of obviousness, one must:
- Determine the scope and contents of the prior art.
- Ascertain the differences between the prior art and the claims in issue.
- Determine the level of skill in the pertinent art.
- Evaluate any evidence of secondary considerations.
- The fact that a combination would not be made by businessmen for economic reasons does not mean that a person of ordinary skill in the art would not make the combination because of some technological incompatibility.
