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ARTICLE · 12 OCTOBER 2018

Top Tips For Overcoming Section 103 Obviousness Rejections

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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Assuming novelty, the USPTO, PTAB, or a court must establish that the claimed invention would have been obvious over the prior art.

United StatesIntellectual Property
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Stacy Lewis
Stacy Lewis
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Assuming novelty, the USPTO, PTAB, or a court must establish that the claimed invention would have been obvious over the prior art. In other words, even though the prior art does not identically disclose or describe the invention, one may not obtain a patent on the invention if the differences between the invention and the prior art are such that the invention as a whole would have been obvious to the person of ordinary skill in the pertinent art at the pertinent time. 35 U.S.C. §103. 35 U.S.C. §102 (both pre- AIA §102 and AIA §102) defines the prior art that can be used to invalidate a patent for obviousness under §103. AIA §102, and its definitions of prior art, went into effect March 16, 2013.

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