Can a prior art reference that criticizes an invention still be used against it?
Yes, a prior art reference that criticizes an invention can still be used against it. MPEP 2123 addresses this issue:
“A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.”
This principle is illustrated by the case of In re Gurley, where the court upheld a rejection based on a reference that described the claimed invention as inferior. The MPEP explains:
“The court upheld the rejection concluding that applicant’s argument that the reference teaches away from using epoxy was insufficient to overcome the rejection since ‘Gurley asserted no discovery beyond what was known in the art.'”
This guidance emphasizes that even if a prior art reference suggests that an invention might be less preferable or have drawbacks, it can still be used as prior art. The key is whether the reference discloses the invention, not whether it endorses it.
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