What happens if an applicant successfully rebuts a utility rejection?

When an applicant successfully rebuts a utility rejection, the patent examiner is required to withdraw both the utility rejection and any related rejections. The MPEP clearly states:

“If the applicant satisfactorily rebuts a prima facie rejection based on lack of utility under 35 U.S.C. 101, withdraw the 35 U.S.C. 101 rejection and the corresponding rejection imposed under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.”

This guideline emphasizes that a successful rebuttal of a utility rejection has two important consequences:

1. The rejection under 35 U.S.C. 101 (lack of utility) is withdrawn.
2. Any related rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph (typically for lack of enablement or written description related to utility) is also withdrawn.

This process ensures that once an applicant has successfully demonstrated the utility of their invention, the examination can proceed to other aspects of patentability without the burden of the utility rejection.

To learn more:

• Utility rejection
• Rebuttal process
• Patent examination
• USPTO guidelines
• 35 U.S.C. 101
• 35 U.S.C. 112