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ARTICLE · 18 DECEMBER 2014

Challenging "Obvious To Try" During Patent Prosecution

Womble Bond Dickinson
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Suppose your client's patent application is rejected as allegedly obvious under 35 USC §103, and the Examiner cites one or more references and sets forth an "obvious to try" rationale in an Office action

United StatesIntellectual Property
Christopher M. Hall
Christopher M. Hall
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Suppose your client's patent application is rejected as allegedly obvious under 35 USC §103, and the Examiner cites one or more references and sets forth an "obvious to try" rationale in an Office action.  Here are some tools you can add to your toolkit, and possibly apply to challenging the Office assertion that the claimed invention is "obvious to try" in light of the cited reference(s).  Of course, arguments should be tailored to the circumstances at hand, an amendment might help, and it is not necessarily the case that all (or even any) of the following arguments will apply in all scenarios.

We may rely on advice the Manual of Patent Examining Procedure (MPEP) dispenses in 2143 "Examples of Basic Requirements of a Prima Facie Case of Obviousness":

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