Legal Concept of Prima Facie Obviousness

[Editor Note: Many of the court decisions

discussed in this section involved applications or patents subject to

pre-AIA 35 U.S.C.

102

. These court decisions may be applicable to applications and

patents subject to

AIA 35 U.S.C. 102

but the relevant

time is before the effective filing date of the claimed invention and not at the time of

the invention.]

“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.”

ACCO Brands Corp. v. Fellowes, Inc.,

813

F.3d 1361, 1365–66, 117 USPQ2d 1951, 1553-54 (Fed. Cir. 2016) (internal citations omitted).

The legal concept of

prima facie

obviousness is a

procedural tool of examination which applies broadly to all arts. It allocates who has the

burden of going forward with production of evidence or arguments in each step of the

examination process. See

In re Rinehart,

531 F.2d 1048, 189 USPQ 143

(CCPA 1976);

In re Lintner,

458 F.2d 1013, 173 USPQ 560 (CCPA 1972);

In re Saunders,

444 F.2d 599, 170 USPQ 213 (CCPA 1971);

In

re Tiffin,

443 F.2d 394, 170 USPQ 88 (CCPA 1971),

amended,

448 F.2d 791, 171 USPQ 294 (CCPA 1971);

In re Warner,

379 F.2d 1011, 154

USPQ 173 (CCPA 1967),

cert. denied,

389 U.S. 1057 (1968). The examiner

bears the initial burden of using facts and reasoning to establish a

prima

facie

conclusion of obviousness

1013, 173 USPQ 560 (CCPA 1972);

In re Saunders,

444 F.2d 599, 170 USPQ 213 (CCPA 1971);

In

re Tiffin,

443 F.2d 394, 170 USPQ 88 (CCPA 1971),

amended,

448 F.2d 791, 171 USPQ 294 (CCPA 1971);

In re Warner,

379 F.2d 1011, 154

USPQ 173 (CCPA 1967),

cert. denied,

389 U.S. 1057 (1968). The examiner

bears the initial burden of using facts and reasoning to establish a

prima

facie

conclusion of obviousness. If the examiner does not produce a

prima facie

case, the applicant is under no obligation to submit

evidence or arguments 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 properties not

expected by the prior art, or rebuttal arguments. 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”. That time is “before the

effective filing date of the claimed invention” for

35 U.S.C.

103

or “at the time the invention was made” for

pre-AIA 35 U.S.C.

103

. 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 a hypothetical person of ordinary skill in the art. 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

examiner must then make a

determination whether the claimed invention “as a whole” would have been obvious at that

time to a hypothetical person of ordinary skill in the art. 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.

35 U.S.C. 103

authorizes a rejection where, to meet the claim, it is

necessary to modify a single reference or to combine it with one or more other references.

After indicating that the rejection is under

35 U.S.C. 103

, the examiner should set

forth in the Office action:

(A) the relevant teachings of the prior art relied upon, preferably with

reference to the relevant column or page number(s) and line number(s) where

appropriate,

(B) the difference or differences in the claim over the applied

reference(s),

(C) the proposed modification of the applied reference(s) necessary to

arrive at the claimed subject matter, and

(D) an explanation as to why the claimed invention would have been

obvious to one of ordinary skill in the art at the relevant time.

“To support the conclusion that the claimed invention is directed to

obvious subject matter, either the references must expressly or impliedly suggest the

claimed invention or the examiner must present a convincing line of reasoning as to why the

artisan would have found the claimed invention to have been obvious in light of the

teachings of the references.”

Ex parte Clapp,

227 USPQ 972, 973 (Bd.

Pat. App. & Inter. 1985)

on that the claimed invention is directed to

obvious subject matter, either the references must expressly or impliedly suggest the

claimed invention or the examiner must present a convincing line of reasoning as to why the

artisan would have found the claimed invention to have been obvious in light of the

teachings of the references.”

Ex parte Clapp,

227 USPQ 972, 973 (Bd.

Pat. App. & Inter. 1985).

Where a reference is relied on to support a rejection, whether or not in a

minor capacity, that reference should be positively included in the statement of the

rejection. See

In re Hoch,

428 F.2d 1341, 1342 n.3 166 USPQ 406, 407 n.3

(CCPA 1970).

It is important for an examiner to properly communicate the basis for a

rejection so that the issues can be identified early and the applicant can be given fair

opportunity to reply. Furthermore, if an initially rejected application issues as a patent,

the rationale behind an earlier rejection may be important in interpreting the scope of the

patent claims. Since issued patents are presumed valid (

35 U.S.C. 282

) and constitute a

property right (

35 U.S.C.

261

), the written record must be clear as to the basis for the grant.

Since patent examiners cannot normally be compelled to testify in legal proceedings

regarding their mental processes (see

MPEP § 1701.01

), it is important that the

written record clearly explain the rationale for decisions made during prosecution of the

application.

See

MPEP §§

2141

-

2144.09

generally for guidance on

patentability determinations under

35 U.S.C. 103

, including a discussion

of the requirements of

Graham v. John Deere,

383 U.S. 1, 148 USPQ 459

n legal proceedings

regarding their mental processes (see

MPEP § 1701.01

), it is important that the

written record clearly explain the rationale for decisions made during prosecution of the

application.

See

MPEP §§

2141

-

2144.09

generally for guidance on

patentability determinations under

35 U.S.C. 103

, including a discussion

of the requirements of

Graham v. John Deere,

383 U.S. 1, 148 USPQ 459

(1966). See

MPEP

§ 2145

for consideration of applicant’s rebuttal arguments. See

MPEP §§

2154

and

2154.02

for a discussion of exceptions to

prior art under

35 U.S.C. 102(b)

, and

MPEP §

2156

for a discussion of

35 U.S.C.

102(c)

and references of joint researchers. See

MPEP § 2146

et seq.

for a discussion of prior art disqualified under

pre-AIA 35 U.S.C.

103(a)

. Note that

MPEP § 2158

provides a comparison of the provisions of

AIA 35 U.S.C. 103

and

pre-AIA 35 U.S.C.

103

.

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.,

550

U.S. 398, 418, 82 USPQ2d 1385, 1396 (2007) 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.”

In re Kahn,

441 F.3d

977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006); see also

KSR,

550

U.S. at 418, 82 USPQ2d at 1396 (quoting Federal Circuit's statement in

Kahn

with approval).

It remains true that “[t]he determination of obviousness is dependent

on the facts of each case.”

Sanofi-Synthelabo v. Apotex, Inc.,

550

F.3d 1075, 1089, 89 USPQ2d 1370, 1379 (Fed. Cir. 2008) (citing

Graham,

383 U.S. at 17-18, 148 USPQ 459, 467 (1966))

8 USPQ2d 1329, 1336 (Fed. Cir. 2006); see also

KSR,

550

U.S. at 418, 82 USPQ2d at 1396 (quoting Federal Circuit's statement in

Kahn

with approval).

It remains true that “[t]he determination of obviousness is dependent

on the facts of each case.”

Sanofi-Synthelabo v. Apotex, Inc.,

550

F.3d 1075, 1089, 89 USPQ2d 1370, 1379 (Fed. Cir. 2008) (citing

Graham,

383 U.S. at 17-18, 148 USPQ 459, 467 (1966)). 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 evidence properly made of record.

In re Oetiker,

977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). 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., a

prima

facie

case of obviousness has been established) is more probable than

not.

When an applicant properly submits evidence, whether in the

specification as originally filed, prior to a rejection, or in reply to a rejection, the

examiner must consider the patentability of the claims in light of the evidence. 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

e

examiner must consider the patentability of the claims in light of the evidence. 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.

In re Eli Lilly

& Co.,

902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990).

See

In re Piasecki,

745 F.2d 1468, 223 USPQ 785

(Fed. Cir. 1984) for a discussion of the proper roles of the examiner’s

prima

facie

case and applicant’s rebuttal evidence in the final determination of

obviousness.

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