What does Secondary Consideration refer to in patent examinations?

Secondary Consideration refers specifically to evidence that can support the argument against a rejection based on obviousness during a patent examination process, particularly in light of 35 U.S.C. § 103. When an applicant seeks a patent, the examiner may reject the application if the claimed invention is deemed obvious in view of the prior art. However, an applicant can present secondary considerations, such as commercial success, long-felt but unsolved needs, failure of others, unexpected results, or other objective evidence that demonstrates the invention's non-obviousness.

This type of evidence can significantly strengthen an application by highlighting factors that may indicate the invention is not merely a predictable or obvious step in the technological field. It serves to contextualize the invention's significance or uniqueness compared to prior art, reinforcing the argument that a person of ordinary skill in the art would not find the invention obvious.

In contrast, evidence of prior art pertains to demonstrating what has been previously disclosed, a response to a 102 novelty rejection directly addresses whether the invention is new, and an appeal against a patent office decision is about contesting a decision made by the patent office, rather than providing supportive evidence related to an obviousness issue.