Obviousness Rejections: Attacking the Prima Facie Case

Summary

This practice note provides guidance to patent prosecutors for overcoming a U.S. patent examiner's obviousness rejection by attacking the examiner's prima facie case. Obviousness is one of the grounds for rejection of a U.S. patent application that is most frequently asserted by the United States Patent and Trademark Office (USPTO). Accordingly, knowing how to attack the examiner's prima facie case is an essential patent prosecution skill. If you successfully attack the prima facie case, rather than rebutting it, you may avoid amending the claims and the resultant possibility of prosecution history estoppel that may later limit your client's ability to rely on the doctrine of equivalents to prove infringement of its patent.