¶ 7.23.fti    Test for Obviousness

The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a)  are summarized as follows:

  • 1. Determining the scope and contents of the prior art.
  • 2. Ascertaining the differences between the prior art and the claims at issue.
  • 3. Resolving the level of ordinary skill in the pertinent art.
  • 4. Considering objective evidence present in the application indicating obviousness or nonobviousness.

Examiner Note:

This form paragraph may be used, if appropriate, in response to an argument regarding the applicability of the factors for determining obviousness.