What are rejections not based on prior art in patent examination?
Rejections not based on prior art are those that do not rely on existing patents or publications to challenge the patentability of an invention. These rejections typically focus on statutory requirements other than novelty or non-obviousness. According to MPEP 706.03, such rejections may include:
- Lack of adequate written description
- Lack of enablement
- Lack of utility
- Non-statutory subject matter
- Subject matter barred by the Atomic Energy Act
- Subject matter directed to tax strategies
- Subject matter directed to a human organism
- Duplicate claims
- New matter
- Improper Markush groupings
- Rejections based on 35 U.S.C. 112
The MPEP states: “Where a rejection not based on prior art is proper (lack of adequate written description, enablement, or utility, etc.) such rejection should be stated with a full development of the reasons rather than by a mere conclusion.” This emphasizes the importance of providing clear explanations for these types of rejections.
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