How does the “way” prong of the function-way-result test apply in a prima facie case of equivalence?
The “way” prong of the function-way-result test is a critical component in establishing a prima facie case of equivalence. MPEP 2183 provides guidance on this aspect:
“The examiner must explain how the prior art element performs the claimed function in substantially the same way as the claimed invention.”
To satisfy the “way” prong, the examiner should:
- Analyze how the prior art element operates to perform the claimed function
- Compare this operation to the way described in the patent application for the claimed invention
- Demonstrate substantial similarity in the operational principles or mechanisms
It’s important to note that the ways need not be identical, but they should be substantially similar. Minor variations in the mechanism or principle of operation may still satisfy this prong if the overall approach is fundamentally the same.
To learn more:
Topics:
MPEP 2100 - Patentability,
MPEP 2183 - Making A Prima Facie Case Of Equivalence,
Patent Law,
Patent Procedure