Inconsistency In Examination

Inconsistency between views of two USPTO examiners during prosecution can be relevant to obviousness. In Syntex LLC et al. v. Apotex, Inc. et al. a parent application was finally rejected on the grounds that evidence of unexpected results was insufficient to overcome a prima facie demonstration of obviousness. The continuation application was handled by a different examiner who repeated the previous objection verbatim, but then retracted the rejection in view of the applicant's statement that he had demonstrated unexpected results in the parent application. While giving deference to the presumption of validity , and recognizing that a challenger's burden to show invalidity is more difficult to satisfy when prior art references were already presented to the PTO , the Federal Circuit observed that the inconsistency between views of two USPTO examiners during prosecution was found relevant to obviousness, and should have been considered by the trial court .