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How to Avoid a Rejection to Your Patent Application for “Obviousness”

  • Jan 21 2021

While you may be excited to file for a patent, many are initially rejected for being “obvious” by a patent examiner in the US Patent and Trademark Office (USPTO). In order for a patent application to be rejected on obviousness grounds, the examiner must believe that the invention would have been obvious to someone of ordinary skill in the art at the time that the application was filed. 

In making such a decision, patent examiners look at prior art references, those documents that are available to the public at the time of the filing. When a patent examiner finds that a patent should be rejected on obviousness grounds, he or she is essentially saying that an individual who is skilled in the art would have found it obvious to modify the prior art reference teachings in order to arrive at the invention being claimed. 

Overcoming an Initial Patent Rejection for “Obviousness”

There are a couple of ways in which the Applicant can overcome this type of rejection:

1. He or she can argue that the examiner incorrectly interpreted those prior art references and that such references do not render the invention being claimed truly obvious. 

2. He or she can argue that while the examiner’s interpretation of prior art references was correct, he or she was not correct in the belief that such references disclosed the invention being claimed

3. He or she can amend the claims to add specific elements not shared in the prior art references. 

The “Obviousness” Test

In deciding whether a patent application is obvious, the test looks at whether an individual of ordinary skill in the art, provided with the prior art references could have been led to creating the same claimed invention. This requires articulating a rational reason for why this individual of skill in the art would have come to this same invention. 

The examiner must focus on the proposed invention, only considering the prior art and the expected knowledge in such a field at the time that the patent application was filed. 

Prima Facie Case of Obviousness

Per the Supreme Court, the patent examiner must show a prima facie case for obviousness by meeting the following requirements:

1. The patent examiner must make factual inquires as well as factual findings concerning the content and scope of the prior art references as well as the differences between those and the new claims. He or she must also establish what is to be considered an ordinary skill in the art; and

2. The Examiner must make two findings:

(i) That the individual skilled in the art would have been motivated to take the prior art and establish the claimed invention; and 

(ii) That the individual skilled in the art would have a reasonable expectation of success.  

Specific Findings Are Required

These requirements must be met with specific findings. Otherwise, the Examiner may not reject a patent application on the legal grounds of obviousness.

As for the Applicant, if the Examiner rejects a patent application on obviousness grounds, he or she may be able to argue that the above findings are incorrect or not supported by the facts. The Applicant may also submit declarations of expert witnesses or Inventors in the field to share their opinions or must provide facts that the rejection should be withdrawn because the examiner is unable to make the required findings. 

Scully, Scott, Murphy & Presser Can Help Protect Your Inventions and Your Rights

If you or a loved one has an invention that you wish to have protected, or if you have an existing patent that you believe is being infringed upon, the qualified patent attorneys at Scully, Scott, Murphy & Presser, can help you to navigate the patent application process or can help to defend your patent and your rights regarding any infringement. To learn more about the patent prosecution process or to schedule a free consultation, contact us today!

Posted in: Patents

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