What is the relationship between 35 U.S.C. 101 and 35 U.S.C. 112(a) in utility rejections?
The relationship between 35 U.S.C. 101 and 35 U.S.C. 112(a) in utility rejections is closely intertwined. According to MPEP 2107.01:
“A deficiency under the utility prong of 35 U.S.C. 101 also creates a deficiency under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.”
This means that if an invention lacks utility under 35 U.S.C. 101, it also fails to meet the enablement requirement of 35 U.S.C. 112(a). The MPEP further explains:
“Courts have also cast the 35 U.S.C. 101/35 U.S.C. 112 relationship such that 35 U.S.C. 112 presupposes compliance with 35 U.S.C. 101.”
As a result, any rejection based on lack of utility should include both a 35 U.S.C. 101 rejection and a 35 U.S.C. 112(a) rejection. However, it’s important to note that 35 U.S.C. 112(a) addresses other matters beyond utility, such as written description and best mode requirements.
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