What is a prima facie case for lack of utility and how is it established?
A prima facie case for lack of utility is an initial showing by the USPTO that the claimed invention lacks utility. To establish this, the USPTO must:
- Make a prima facie showing that the claimed invention lacks utility
- Provide a sufficient evidentiary basis for factual assumptions relied upon in establishing the prima facie showing
The MPEP states: To properly reject a claimed invention under 35 U.S.C. 101, the Office must (A) make a prima facie showing that the claimed invention lacks utility, and (B) provide a sufficient evidentiary basis for factual assumptions relied upon in establishing the prima facie showing.
The prima facie showing must be set forth in a well-reasoned statement and should include a detailed explanation of why the claimed invention has no specific and substantial credible utility. When possible, the examiner should provide documentary evidence to support the factual basis for the prima facie showing.
If the USPTO cannot develop a proper prima facie case and provide evidentiary support for a rejection under 35 U.S.C. 101, a rejection on this ground should not be imposed.
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