Responding to a 35 U.S.C. 103 Obviousness Rejection Like Ric Flair

MARK TERRY, ESQ.

A 35 U.S.C. §103 obviousness rejection is often one of the Patent Office’s strongest grounds for refusing a claim. The article uses Ric Flair’s “to be the best, you have to beat the best” line to explain why applicants must answer a serious obviousness case with equally serious proof.

The discussion centers on Ex parte Chandrachood, where the applicant challenged an obviousness rejection involving a photolithography process and the combination of two gases. The Board found that the prior art taught both materials for the same general purpose and treated their combination as obvious.

The applicant relied primarily on attorney argument and did not submit objective evidence of non-obviousness, such as unexpected results, expert declarations, technical literature, or other supporting proof. The Board specifically noted that omission.

The practical lesson is that once an examiner establishes a prima facie case of obviousness, the applicant should build an evidentiary record. A declaration under 37 C.F.R. §1.132, expert testimony, textbooks, scientific articles, testing data, or evidence of unexpected results may provide the factual support needed to rebut the rejection.