How do teachings of similar properties or uses affect obviousness determinations?

Teachings of similar properties or uses between the prior art and the claimed invention can significantly impact obviousness determinations. According to MPEP 2144.08:

“Consider the properties and utilities of the structurally similar prior art species or subgenus. It is the properties and utilities that provide real world motivation for a person of ordinary skill to make species structurally similar to those in the prior art.“

Key points to consider:

• Similar properties or uses can provide motivation for an artisan to make the claimed species
• The prior art need not disclose a newly discovered property for obviousness
• Evidence of similar properties weighs in favor of obviousness
• Lack of known useful properties can weigh against obviousness

Examiners must evaluate the totality of the evidence regarding properties and uses when making obviousness determinations for species claims.

To learn more:

• obviousness
• similar properties
• similar uses
• species claims
• prior art
• patent examination