Responding to Novelty and Obviousness Rejections: A Practitioner's Guide to Sections 102 and 103 and the Prima Facie Case
By Casey Scott McKay ·
Novelty and obviousness rejections account for most of what a patent prosecutor does, and the response is a craft with a definite structure. This guide walks it in thirteen stages: verify the reference actually qualifies as prior art, test whether the examiner made out a prima facie case, decide between arguing and amending, attack the reason to combine, build teaching-away and unexpected-results arguments, assemble objective indicia with a real nexus, and escalate when the examiner will not move. It covers the disqualification routes that remove a reference entirely - common ownership, derivation, the inventor's own earlier disclosure - which are underused and frequently decisive. It explains what a declaration can and cannot do, when to antedate, and how each amendment narrows what you can assert later. Worked language runs throughout. The companion article supplies the doctrine and the companion checklist the searching.
IP and Technology > Patent Counseling Transactions | Guide | Published 19 February 2026 - Updated 20 July 2026 | Casey Scott McKay - marksy.us
Summary. Novelty and obviousness rejections account for most of what a patent prosecutor does, and the response is a craft with a definite structure. This guide walks it in thirteen stages: verify the reference actually qualifies as prior art, test whether the examiner made out a prima facie case, decide between arguing and amending, attack the reason to combine, build teaching-away and unexpected-results arguments, assemble objective indicia with a real nexus, and escalate when the examiner will not move. It covers the disqualification routes that remove a reference entirely — common ownership, derivation, the inventor's own earlier disclosure — which are underused and frequently decisive. It explains what a declaration can and cannot do, when to antedate, and how each amendment narrows what you can assert later. Worked language runs throughout. The companion article supplies the doctrine and the companion checklist the searching.
Keywords: anticipation, obviousness rejection, prima facie case, motivation to combine, teaching away, unexpected results, secondary considerations, nexus, claim amendment, antedating, Rule 131 declaration, Rule 132 declaration, common ownership, prior art disqualification, examiner interview, appeal, KSR, Graham factors, office action response, prosecution
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