The Importance of Evidence in Office Action Responses

MARK TERRY, ESQ.

Patent Examiners sometimes support a Section 103 rejection by asserting that a claim feature or technique would have been known to a person of ordinary skill in the art. A response based only on attorney argument may not be enough to overcome that factual position.

Objective evidence can include patents, technical publications, textbooks, dictionaries, contemporaneous industry materials, and declarations under 37 C.F.R. § 1.132. Properly supported evidence must be considered by the USPTO and can force the Examiner to address the applicant’s factual record directly.

In Ex Parte Skryten, the applicant disputed what an ordinarily skilled artisan would have understood about an injection-molding technique but relied principally on argument rather than evidence. The Board concluded that the applicant had not shown harmful error in the Examiner’s obviousness analysis.

The practical lesson is to identify the factual premise behind the rejection and support the response with evidence directed to that premise. A qualified declaration can be especially useful when the dispute concerns technical knowledge, feasibility, unexpected results, or what practitioners actually understood at the relevant time.

A persuasive Office Action response should combine legal analysis with a developed evidentiary record rather than assuming that argument alone will carry the applicant’s burden.