What is the significance of “utility” in prior art rejections?

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.

Utility is a crucial concept in prior art rejections, particularly when operability is in question. The MPEP 2121.01 states:

“In order to constitute anticipatory prior art, a reference must identically disclose the claimed compound, but no utility need be disclosed by the reference.”

This means that:

• A prior art reference can be valid even if it doesn’t explicitly state a utility for the disclosed invention.
• The lack of a stated utility does not negate the reference’s potential as prior art.
• Examiners focus on the disclosed elements rather than their stated uses when considering prior art.