How does the MPEP address utility disclosure in anticipatory references?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-30 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 MPEP 2122 explicitly addresses utility disclosure in anticipatory references, stating: “UTILITY NEED NOT BE DISCLOSED IN REFERENCE” This heading is followed by an explanation that a reference can be anticipatory without disclosing utility. The MPEP further clarifies: “[N]o utility need be disclosed for a reference to be anticipatory of a claim to an old compound.” This guidance emphasizes that the lack of a disclosed utility does not prevent a reference from being anticipatory, as long as it meets other criteria such as identically disclosing the claimed compound and teaching a process of making it. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Claimed Compound Must Be Disclosed Without Utility MPEP 2122 Required Claimed Compound Disclosed Without Use MPEP 2122 Utility Is Not Needed for Anticipation MPEP 2122 Required Claim Anticipated by Reference MPEP 2122 Design Must Be Identical to Prior Art MPEP 1504.02 Required Invention Must Not Be Anticipated by Prior Art MPEP 1504.02 Permitted Minor Differences Do Not Prevent Anticipation MPEP 1504.02 Prohibited Patent Over One Year Old Is Prior Art MPEP 1504.06 Permitted Prior Art Structure Meets Intended Use Preamble MPEP 2111.02 Permitted Inherent Teaching of Prior Art MPEP 2112 Other Related FAQs 5 FAQs Collapse What is required for a reference to be anticipatory prior art? Can a compound be anticipated if its use is not disclosed in the prior art? How does the MPEP define &#8220;utility&#8221; in the context of prior art? Is proof of efficacy required for a prior art reference to be enabling for anticipation? Does a prior art reference need to disclose utility to anticipate a claim?