What is the significance of undisclosed advantages in patent applications?
Undisclosed advantages in patent applications can play a crucial role in determining the non-obviousness of a claimed invention. According to MPEP 716.02(f), “The totality of the record must be considered when determining whether a claimed invention would have been obvious to one of ordinary skill in the art at the time the invention was made.” This means that even advantages not explicitly stated in the specification should be taken into account.
The Federal Circuit case In re Chu emphasized this point, stating: “We have found no cases supporting the position that a patent applicant’s evidence or arguments traversing a § 103 rejection must be contained within the specification.” This ruling underscores the importance of considering all evidence and arguments, including those related to undisclosed advantages, when evaluating the non-obviousness of an invention.
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