How can an applicant rebut a prima facie case of anticipation or obviousness in product claims?
An applicant can rebut a prima facie case of anticipation or obviousness in product claims by providing evidence that demonstrates the prior art products do not necessarily possess the characteristics of the claimed product. This is explained in MPEP 2112.01(I):
“Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product.” In re Best, 562 F.2d at 1255, 195 USPQ at 433.
This means that even if the structure or composition appears identical, if the applicant can provide evidence that the prior art product does not have the same properties or functions as the claimed product, they may be able to overcome the rejection.
To learn more:
Topics:
And Apparatus Claims,
MPEP 2100 - Patentability,
MPEP 2112.01 - Composition,
Patent Law,
Patent Procedure,
Product