Successful Strategies for Overcoming Obviousness Rejections in the Patent Application Process (Live Webinar)

This webinar will use examples of successful patent prosecution arguments to highlight common 103 rejection shortcomings as well as to understand how to craft successful responses that don’t require claim amendments. Main webinar topics include:

  • What legal and factual shortcomings should you look for?
  • Understanding the changing examiner’s burden of proof and using it to your advantage;
  • Successfully demonstrating lack of a prima facie case of obviousness for reasons including:
    o Using non-analogous prior art
    o Basing an obviousness rejection on an unsupported common knowledge allegation
    o Using inherency improperly
    o Combining the prior art illogically – from the perspective of both the suggestion to combine and the expected technical results of the combination
    o Relying on an unsupported “results effective variable”
  • Using Declarations (as a last resort) to overcome obviousness rejections
  • Challenging obviousness rejections on Appeal


Presenter: MBHB Partner Blair Hughes

While there is no fee to participate, all attendees must register in advance and, in order to receive MCLE credit, must participate individuallyAccess an archived audio version of this webinar here. NOTE: MCLE credit is not available for this archived recording.

All registrants will receive an email confirmation and details for online participation. MCLE credit is pending for the states of California, Georgia, Illinois, North Carolina, New Jersey, New York and Virginia.

McDonnell Boehnen Hulbert & Berghoff LLP is committed to educating clients and friends of the firm with respect to significant developments and trends in the areas of intellectual property law.