What are the guidelines for using the “best available art” in prior art rejections?
The MPEP provides guidelines for using the “best available art” in prior art rejections. The general principle is stated as:
“Prior art rejections should ordinarily be confined strictly to the best available art.“
However, there are exceptions to this rule. The MPEP mentions that exceptions may be properly made in certain cases, although it doesn’t provide specific examples in the given excerpt.
Additionally, the MPEP advises:
- In the interest of compact prosecution, rejections based on the best available art should be backed up by the best other art rejections available.
- The best backup rejection(s) could be based on alternate embodiments from the same “best available” reference(s).
- Examiners should avoid merely cumulative rejections, i.e., those which would clearly fall if the primary rejection were not sustained.
For example, if an anticipation rejection could be overcome by invoking an exception in a 37 CFR 1.130(b) declaration, it would be appropriate to make an additional obviousness rejection over another disclosure in the same reference.
For more information on the selection and use of prior art, refer to MPEP § 707.05.
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