What is the significance of the In re Grose case in patent examination?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-29 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. The In re Grose case, cited in MPEP 2144.02 , is significant in patent examination because it demonstrates the limitations of applying structural obviousness to complex mixtures. The MPEP states: “In re Grose, 592 F.2d 1161, 201 USPQ 57 (CCPA 1979) (Court held that different crystal forms of zeolites would not have been structurally obvious one from the other because there was no chemical theory supporting such a conclusion.)” This case highlights that patent examiners must be cautious when applying general chemical principles to complex structures. It emphasizes the need for specific scientific theories or evidence to support obviousness rejections, especially when dealing with intricate chemical structures or mixtures like zeolites. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Requirement for Evidentiary Support of Scientific Theory MPEP 2144.02 Required Supporting a Rejection Under 35 U.S.C. 103 Using Scientific Theory and Legal Precedent MPEP 2144 Rationales Must Be Explained for Obviousness Rejection MPEP 2144 Required Rationale for Modifying Prior Art Not Required to be Explicitly Stated MPEP 2144 Required Avoid Treating Obviousness Rationales as Per Se Rules MPEP 2144 Office Personnel May Use Legal Precedent for Obviousness Rejections MPEP 2144 Permitted Caveat for Obviousness Analysis MPEP 2144 Explain Principle to Establish Obviousness MPEP 2144 Implicit Motivation to Combine References MPEP 2144 Permitted Implicit Combination When Enhancing Productivity MPEP 2144 Other Related FAQs 5 FAQs Collapse How does the MPEP distinguish between compounds and mixtures in terms of obviousness? What evidence is required when relying on scientific theory in paten...