What is a prima facie rejection based on lack of utility?
A prima facie rejection based on lack of utility is an initial determination by a patent examiner that an invention lacks specific and substantial credible utility as required by 35 U.S.C. 101 and 35 U.S.C. 112(a). The MPEP provides guidance on how this process works:
“Once a prima facie showing of no specific and substantial credible utility has been properly established, the applicant bears the burden of rebutting it.”
This means that if an examiner makes an initial case that the claimed invention lacks utility, the responsibility shifts to the applicant to prove otherwise. The MPEP outlines several ways an applicant can respond:
- Amending the claims
- Providing reasoning or arguments
- Submitting evidence through a declaration under 37 CFR 1.132
- Citing a patent or printed publication that rebuts the examiner’s logic
It’s important to note that this is an initial determination, and the applicant has the opportunity to respond and potentially overcome the rejection.
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