Editing MPEP 2142

<noinclude>{{MPEP Section|2141|2100|2143}}</noinclude>

==[[MPEP 2142|2142 Legal Concept of Prima Facie Obviousness]]==

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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 in each step of 
the examination process. See In re Rinehart, 531 F.2d 
1048, 189 USPQ 143 (CCPA 1976); In re Linter, 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 factually supporting 
any prima facie conclusion of obviousness. If 
the examiner does not produce a prima facie case, the 
applicant is under no obligation to submit evidence of 
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 improved 
properties not expected by the prior art. The initial 
evaluation of prima facie obviousness thus relieves 
both the examiner and applicant from evaluating evidence 
beyond the prior art and the evidence in the 
specification as filed until the art has been shown to 
suggest the claimed invention.

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” when the invention was 
unknown and just before it was made. 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 that 
person. 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. 

ESTABLISHING A PRIMA FACIE CASE OF OBVIOUSNESS


To establish a prima facie case of obviousness, 
three basic criteria must be met. First, there must be 
some suggestion or motivation, either in the references 
themselves or in the knowledge generally available 
to one of ordinary skill in the art, to modify the 
reference or to combine reference teachings. Second, 
there must be a reasonable expectation of success. 
Finally, the prior art reference (or references when 
combined) must teach or suggest all the claim limitations. 
The teaching or suggestion to make the claimed 
combination and the reasonable expectation of success 
must both be found in the prior art, and not based 
on applicant’s disclosure. In re Vaeck, 947 F.2d 488, 




 

20 USPQ2d 1438 (Fed. Cir. 1991). See MPEP § 2143- §
 
2143.03 for decisions pertinent to each of these 
criteria.

The initial burden is on the examiner to provide 
some suggestion of the desirability of doing what the 
inventor has done. “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). See MPEP § 2144 - 
§
 
2144.09 for examples of reasoning supporting obviousness 
rejections.

When the motivation to combine the teachings of 
the references is not immediately apparent, it is the 
duty of the examiner to explain why the combination 
of the teachings is proper. Ex parte Skinner, 
2 
USPQ2d 1788 (Bd. Pat. App. & Inter. 1986). A 
statement of a rejection that includes a large number 
of rejections must explain with reasonable specificity 
at least one rejection, otherwise the examiner procedurally 
fails to establish a prima facie case of obviousness. 
Ex parte Blanc, 13 USPQ2d 1383 (Bd. Pat. 
App. & Inter. 1989) (Rejection based on nine references 
which included at least 40 prior art rejections 
without explaining any one rejection with reasonable 
specificity was reversed as procedurally failing to 
establish a prima facie case of obviousness.).

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 secondary evidence. 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., the reference 
teachings establish a prima facie case of obviousness) 
is more probable than not.

When an applicant submits evidence, whether in 
the specification as originally filed or in reply to a 
rejection, the examiner must reconsider the patentability 
of the claimed invention. 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. 
See MPEP §
 
706.02(j) for a discussion of the proper 
contents of a rejection under 35 U.S.C. 103.