MPEP 2145 is the section of the Manual of Patent Examining Procedure that tells examiners how to handle everything an applicant files to knock down an obviousness rejection under 35 U.S.C. 103, and it sets the ground rules for what actually works. To succeed on an MPEP 2145 obviousness rebuttal, you need objective evidence — unexpected results, commercial success tied to the claims, long-felt need, teaching away, or non-analogous art — presented through a proper declaration. Attorney argument, complaints about the number of references, and pointing out what each reference lacks in isolation will not carry the response.
The rejection you are answering was built on the Graham factors: the scope of the prior art, the differences from the claims, the level of ordinary skill, and any objective evidence of nonobviousness.1Justia Law. Graham v. John Deere Co., 383 U.S. 1 (1966) Once the examiner has laid out a prima facie case, the burden shifts to you. MPEP 2145 is where that shift plays out.
What the Examiner Must Do With Your Response
An examiner cannot treat the initial rejection as the last word. MPEP 2145 requires consideration of every rebuttal argument and every piece of evidence on the record, whether it appears in the specification, in a 37 CFR 1.132 declaration, or elsewhere in prosecution.2United States Patent and Trademark Office. MPEP 2145 – Consideration of Applicant’s Rebuttal Arguments and Evidence The Federal Circuit has held it is error to ignore evidence sitting in the specification, and evidence submitted through declaration must be addressed directly.
Practically, this means the examiner reweighs the whole record after your response comes in. If the rejection is maintained, the office action has to explain specifically why the rebuttal evidence fell short. A conclusory dismissal that the evidence was “not persuasive” without engaging with the data creates a procedural weakness you can use on appeal. The legal standard is preponderance of the evidence: whether it is more likely than not the claims are obvious. No single factor automatically controls, which is exactly why strong objective evidence can defeat prior art that looked close on its face.
Objective Evidence That Moves the Needle
The fourth Graham factor, sometimes called secondary considerations, is often the strongest tool available. This evidence exists independent of how the examiner reads the prior art, and it can shift the outcome even when the references look tight.
Unexpected Results
Showing that the claimed invention produces results a skilled person would not have predicted is one of the most effective rebuttals. The comparison has to be against the closest prior art. If your declaration includes test data, it must compare the claimed invention to the specific reference the examiner relied on, or to an even closer reference if one exists.3BitLaw. Comparison With Closest Prior Art If your test formulation differs from what the reference discloses, explain the deviation. When two references are equally close, results over just one of them will not be enough unless the two are similar enough that testing one effectively covers both.
The results also need to be genuinely surprising in kind or in degree. A 5% yield improvement in a range the prior art already predicted will not move the needle. A tenfold jump in a property the prior art suggested would not change is a different matter.
Commercial Success
Sales numbers by themselves do not overcome obviousness. You have to establish a nexus — the connection showing the sales flow from the features actually recited in the claims, not from marketing, brand, or unclaimed features.4United States Patent and Trademark Office. MPEP 716 – Affidavits or Declarations Under 37 CFR 1.132 and Other Evidence Traversing Rejections The Federal Circuit presumes nexus when the commercial product is coextensive with the claimed features, but that presumption can be rebutted. Where the product contains significant unclaimed elements, you carry the burden of proving the claimed features drove the sales.
An inventor’s opinion about why customers buy the product is not enough. Customer surveys, licensing demand from competitors, and market data showing the product displaced alternatives carry far more weight.
Long-Felt Need and Failure of Others
If a problem persisted in the industry for years and others tried and failed to solve it, that fact supports nonobviousness on its own logic: an obvious solution would have surfaced sooner. The evidence works best when you can document that the problem was widely recognized and that skilled practitioners actively attempted solutions. Expert declarations describing the state of the art at the time of filing strengthen this considerably.
Arguments the Examiner Will Reject
MPEP 2145 catalogs specific argument types examiners are trained to treat as unpersuasive. Knowing them in advance keeps your response focused on what actually works.
Bare Attorney Argument
An assertion that the invention is nonobvious, however well phrased, is not evidence. The Federal Circuit has been direct: an assertion of what seems to follow from common experience is attorney argument, not the factual evidence needed to rebut a prima facie case.2United States Patent and Trademark Office. MPEP 2145 – Consideration of Applicant’s Rebuttal Arguments and Evidence To prove unexpected results, teaching away, or commercial success, you need declarations, test data, or other documentary evidence.
Arguing Unclaimed Features
This is where many responses collapse. If the claims do not recite the advantage or structural feature you are arguing about, that argument will not help. Obviousness is measured against what the claims actually say, not what the specification describes or what the device happens to do in practice. A revolutionary benefit not captured in the claim language cannot save the application. The fix is often to amend the claims to recite the distinguishing feature and then argue its nonobviousness.
Attacking References Individually
When the rejection combines references, arguing that no single reference discloses the entire invention misses the point. The test is what the combined teachings would suggest to a skilled person, not whether any one reference contains every element. Walking through each reference in isolation to point out what is missing is a common waste of pages.
Arguing the References Cannot Be Physically Combined
Applicants sometimes argue the structures in two references could not literally be merged into one device. That misreads the doctrine. The Federal Circuit in In re Keller stated that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. What matters is the combined teachings.
Complaints About the Number or Age of References
There is no cap on how many references an examiner can combine. Arguing that too many were used does nothing. Old references remain valid prior art; age alone is not a defect. Pointing to publication dates only helps when tied to actual evidence of long-felt need — the industry knew of these references and still failed to solve the problem.
Economic Infeasibility
Arguing that a combination would be commercially impractical does not establish technical nonobviousness. Business decisions about what to manufacture are separate from what a skilled person could have conceived. This argument almost never works.
Arguments That Work When Executed Correctly
Several rebuttals recognized by MPEP 2145 can succeed, but only when supported by the right evidence and framed with care.
Impermissible Hindsight
Every obviousness determination involves some backward look from the claims to the prior art. In KSR, the Supreme Court cautioned against hindsight bias while rejecting rigid rules that would block common-sense reasoning. Simply crying hindsight will not work. The argument succeeds only when you can show the examiner drew on knowledge that came from your own disclosure rather than from what was already in the field. A related mistake is demanding an “express” written motivation to combine references; after KSR, motivation need not appear explicitly in the prior art.
Teaching Away
A reference teaches away when it criticizes, discredits, or discourages the path the inventor took. Simply disclosing a different approach or listing alternatives does not qualify. A publication that warns a certain concentration range causes degradation, where your claimed invention uses that exact range successfully, is the kind of specificity that carries.
Non-Analogous Art
An examiner can only rely on analogous prior art. The test has two independent prongs: the reference is from the same field of endeavor as the claimed invention, or it is reasonably pertinent to the problem the inventor faced.5United States Patent and Trademark Office. MPEP 2141 – Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103 Failing one prong is not enough. The argument works only when the reference fails both — different field and unrelated problem. Examiners often find reasonable pertinence across industries, so the bar is high.
Obvious to Try
After KSR, “obvious to try” is a valid rejection basis when a skilled person would choose from a finite number of identified, predictable solutions with a reasonable expectation of success. The rebuttal works when the field offered too many variables to narrow down, when the prior art gave no indication which parameters mattered, or when success was genuinely unpredictable. Unpredictable fields like chemistry and biotechnology tend to give this argument more traction, but KSR applies across technologies, and examiners will not withdraw a rejection solely because the art is unpredictable.
Getting the Declaration Right
Most objective evidence reaches the record through a declaration under 37 CFR 1.132. Formal mistakes can get the evidence disregarded entirely.
A declaration must include a statement that willful false statements are punishable by fine or imprisonment under 18 U.S.C. 1001, and that such statements may jeopardize the validity of the application or any resulting patent. The declarant states that assertions made from personal knowledge are true and that assertions made on information and belief are believed to be true. An affidavit sworn before a notary can substitute, but declarations are more common because they are simpler to execute.
Substance matters as much as form. The primary examiner personally reviews each declaration to determine whether it responds to the rejection and presents enough facts to overcome it. A declaration heavy on opinion and conclusion but thin on specific data, test results, or firsthand observations will be given little weight. Declarations from people with relevant expertise carry more credibility than the inventor’s alone, though inventor declarations are permissible.
One procedural point: the USPTO is not bound by the Federal Rules of Evidence, so hearsay can sometimes be relied on. The flip side is that if an examiner bases findings on such evidence, the burden falls on you to rebut them.
What Happens After a Final Rejection
If the examiner issues a final rejection and holds to the obviousness finding despite your evidence, three paths remain.
- Request for Continued Examination. Filing an RCE with the required fee and a substantive submission reopens prosecution for another round of amended claims or additional evidence. An improperly filed RCE — missing the fee or the submission — does not stop the clock, and the application can go abandoned if the original response deadline passes.
- Appeal to the PTAB. You can file a notice of appeal to the Patent Trial and Appeal Board, followed by an appeal brief challenging the rejection on the law or the facts. The Board reviews the record independently. After the examiner files an answer, you pay a forwarding fee to send the case to the Board for decision.6United States Patent and Trademark Office. MPEP 1208 – Reply Briefs and Fee for Forwarding Appeal
- Continuation application. A continuation preserves the original filing date while giving you a fresh opportunity to present different claims or build a stronger evidentiary record.
The After Final Consideration Pilot Program 2.0, which previously offered an additional pathway to have amended claims considered after a final rejection without paying an RCE fee, was terminated by the USPTO effective December 14, 2024.7Nixon Peabody LLP. USPTO Terminates After Final Consideration Pilot Program 2.0 (AFCP 2.0) That option is off the table, leaving the RCE, appeal, and continuation as the working choices.