Overcoming Obviousness Rejections by Rebutting the Prima Facie Case
June 2020
Lexis Practice Advisor
By Thomas Lee Irving; Stacy Lewis*
This practice note teaches patent prosecutors how to rebut a patent examiner’s prima facie case of obviousness. For a discussion of how to attack the examiner’s prima facie case, thus possibly eliminating the need for rebuttal, see Overcoming Obviousness Rejections by Attacking the Prima Facie Case.
In this practice note, we discuss the rebuttal of a prima facie case of obviousness in the context of the examination of patent application claims by a patent examiner. Note that the same principles apply in the context of inter partes patentability challenges before the USPTO’s Patent Trial and Appeal Board (PTAB), because the claims do not have a presumption of validity before the PTAB. However, in PTAB proceedings, the initial burden of persuasion is on the petitioner, the rebuttal burden is on the patent owner, and PTAB operates as an adjudicator of the parties' arguments.
Read the full article here.
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*Stacy Lewis is a Law Clerk at Finnegan
Originally printed in Lexis Practice Advisor in September 2019. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.
