MPEP § 2144.02 — Reliance on Scientific Theory (Annotated Rules)
§2144.02 Reliance on Scientific Theory
This page consolidates and annotates all enforceable requirements under MPEP § 2144.02, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Reliance on Scientific Theory
This section addresses Reliance on Scientific Theory. Primary authority: 35 U.S.C. 103. Contains: 1 requirement and 1 other statement.
Key Rules
Obviousness
The rationale to support a rejection under 35 U.S.C. 103 may rely on logic and sound scientific principle. In re Soli, 317 F.2d 941, 137 USPQ 797 (CCPA 1963). However, when an examiner relies on a scientific theory, evidentiary support for the existence and meaning of that theory must be provided. In re Grose, 592 F.2d 1161, 201 USPQ 57 (CCPA 1979) (Court held that different crystal forms of zeolites would not have been structurally obvious one from the other because there was no chemical theory supporting such a conclusion. The known chemical relationship between structurally similar compounds (homologs, analogs, isomers) did not support a finding of prima facie obviousness of claimed zeolite over the prior art because a zeolite is not a compound but a mixture of compounds related to each other by a particular crystal structure.).
The rationale to support a rejection under 35 U.S.C. 103 may rely on logic and sound scientific principle. In re Soli, 317 F.2d 941, 137 USPQ 797 (CCPA 1963). However, when an examiner relies on a scientific theory, evidentiary support for the existence and meaning of that theory must be provided. In re Grose, 592 F.2d 1161, 201 USPQ 57 (CCPA 1979) (Court held that different crystal forms of zeolites would not have been structurally obvious one from the other because there was no chemical theory supporting such a conclusion. The known chemical relationship between structurally similar compounds (homologs, analogs, isomers) did not support a finding of prima facie obviousness of claimed zeolite over the prior art because a zeolite is not a compound but a mixture of compounds related to each other by a particular crystal structure.).
Citations
| Primary topic | Citation |
|---|---|
| Obviousness | 35 U.S.C. § 103 |
| Obviousness | In re Grose, 592 F.2d 1161, 201 USPQ 57 (CCPA 1979) |
| Obviousness | In re Soli, 317 F.2d 941, 137 USPQ 797 (CCPA 1963) |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 2144.02 — Reliance on Scientific Theory
Source: USPTO2144.02 Reliance on Scientific Theory [R-08.2012]
The rationale to support a rejection under 35 U.S.C. 103 may rely on logic and sound scientific principle. In re Soli, 317 F.2d 941, 137 USPQ 797 (CCPA 1963). However, when an examiner relies on a scientific theory, evidentiary support for the existence and meaning of that theory must be provided. In re Grose, 592 F.2d 1161, 201 USPQ 57 (CCPA 1979) (Court held that different crystal forms of zeolites would not have been structurally obvious one from the other because there was no chemical theory supporting such a conclusion. The known chemical relationship between structurally similar compounds (homologs, analogs, isomers) did not support a finding of prima facie obviousness of claimed zeolite over the prior art because a zeolite is not a compound but a mixture of compounds related to each other by a particular crystal structure.).