Can a negative limitation be used to overcome a prior art rejection?
Can a negative limitation be used to overcome a prior art rejection?
Yes, a negative limitation can be used to overcome a prior art rejection, provided it meets certain criteria. According to MPEP 2173.05(i):
“The mere absence of a positive recitation is not basis for an exclusion. Any claim containing a negative limitation which does not have basis in the original disclosure should be rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement.”
To use a negative limitation effectively:
- Ensure it has proper support in the original disclosure
- Demonstrate that it distinguishes the claimed invention from the prior art
- Show that it does not introduce new matter
For example, if a prior art reference teaches a device with a specific component, and your invention specifically excludes that component, you could potentially overcome the rejection by adding a negative limitation. However, this approach should be used judiciously and only when there is clear support in the original disclosure.
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