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PRIMA FACIE CASE: Burden of Proof.

posted Jan 13, 2013, 4:58 PM by Robert Crownover
When the Examiner does not make a Prima Facie case, for what ever reason, it can be helpful to remind them that the burden of establishing the Prima Facie rests with the USPTO.

This argument can be a helpful addition to a traversal of a 35 U.S.C. §102 or 35 U.S.C. §103 in order to bolster the impression you give as an expert practitioner in the eyes of the Examiner or the Board of Appeals. While this argument may be clear and used well, this argument will not overcome references that do anticipate or obviate the claims; therefore, it is only employed successfully as an auxiliary point.

Case Law:
We think the precise language of 35 U.S.C. § 102 that "[a] person shall be entitled to a patent unless," concerning novelty and unobviousness, clearly places a burden of proof on the Patent Office which requires it to produce the factual basis for its rejection of an application under sections 102 and 103...

A rejection ... clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art. In making this evaluation, all facts must be considered. The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not, because it may doubt that the invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis. To the extent the Patent Office rulings are so supported, there is no basis for resolving doubts against their correctness. Likewise, we may not resolve doubts in favor of the Patent Office determination when there are deficiencies in the record as to the necessary factual bases supporting its legal conclusion of obviousness. [deletions for clarity]