Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
Amounts (3)
A result-effective variable is a parameter that is recognized in the prior art as affecting a particular result or outcome. The concept is important in patent law, particularly in obviousness determinations. According to MPEP 2144.05:
“A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.”
The idea behind the result-effective variable analysis is that a person of ordinary skill would be motivated to optimize a parameter if there is evidence in the prior art that the parameter affects the result. However, it’s important to note that after the KSR decision:
“[T]he presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.”
Applicants can rebut a prima facie case of obviousness by showing that the claimed variable was not recognized as result-effective in the prior art, but this is considered a narrow exception.
To learn more:
The “obvious to try” rationale is a valid basis for an obviousness rejection in patent law, as clarified by the Supreme Court in KSR International Co. v. Teleflex Inc. According to MPEP 2144.05:
“The Supreme Court has clarified that an ‘obvious to try’ line of reasoning may properly support an obviousness rejection. … [W]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”
This rationale is particularly relevant in cases involving optimization of ranges or amounts. However, it’s important to note that the “obvious to try” approach requires a reasonable expectation of success and a finite number of identified, predictable solutions.
To learn more:
Criticality plays a crucial role in rebutting obviousness rejections, particularly in cases involving ranges or amounts. According to MPEP 2144.05:
“Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. ‘The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.’”
To establish criticality, the applicant must demonstrate that the claimed range produces unexpected results or has some other critical property that a person of ordinary skill in the art would not have expected. This often involves showing a marked improvement in some property or unexpected advantage within the claimed range.
It’s important to note that the burden is on the applicant to establish criticality: “Where the issue of criticality is involved, the applicant has the burden of establishing his position by a proper showing of the facts upon which he relies.”
To learn more:
And Proportions (3)
A result-effective variable is a parameter that is recognized in the prior art as affecting a particular result or outcome. The concept is important in patent law, particularly in obviousness determinations. According to MPEP 2144.05:
“A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.”
The idea behind the result-effective variable analysis is that a person of ordinary skill would be motivated to optimize a parameter if there is evidence in the prior art that the parameter affects the result. However, it’s important to note that after the KSR decision:
“[T]he presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.”
Applicants can rebut a prima facie case of obviousness by showing that the claimed variable was not recognized as result-effective in the prior art, but this is considered a narrow exception.
To learn more:
The “obvious to try” rationale is a valid basis for an obviousness rejection in patent law, as clarified by the Supreme Court in KSR International Co. v. Teleflex Inc. According to MPEP 2144.05:
“The Supreme Court has clarified that an ‘obvious to try’ line of reasoning may properly support an obviousness rejection. … [W]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”
This rationale is particularly relevant in cases involving optimization of ranges or amounts. However, it’s important to note that the “obvious to try” approach requires a reasonable expectation of success and a finite number of identified, predictable solutions.
To learn more:
Criticality plays a crucial role in rebutting obviousness rejections, particularly in cases involving ranges or amounts. According to MPEP 2144.05:
“Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. ‘The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.’”
To establish criticality, the applicant must demonstrate that the claimed range produces unexpected results or has some other critical property that a person of ordinary skill in the art would not have expected. This often involves showing a marked improvement in some property or unexpected advantage within the claimed range.
It’s important to note that the burden is on the applicant to establish criticality: “Where the issue of criticality is involved, the applicant has the burden of establishing his position by a proper showing of the facts upon which he relies.”
To learn more:
MPEP 2100 – Patentability (5)
A result-effective variable is a parameter that is recognized in the prior art as affecting a particular result or outcome. The concept is important in patent law, particularly in obviousness determinations. According to MPEP 2144.05:
“A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.”
The idea behind the result-effective variable analysis is that a person of ordinary skill would be motivated to optimize a parameter if there is evidence in the prior art that the parameter affects the result. However, it’s important to note that after the KSR decision:
“[T]he presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.”
Applicants can rebut a prima facie case of obviousness by showing that the claimed variable was not recognized as result-effective in the prior art, but this is considered a narrow exception.
To learn more:
The “obvious to try” rationale is a valid basis for an obviousness rejection in patent law, as clarified by the Supreme Court in KSR International Co. v. Teleflex Inc. According to MPEP 2144.05:
“The Supreme Court has clarified that an ‘obvious to try’ line of reasoning may properly support an obviousness rejection. … [W]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”
This rationale is particularly relevant in cases involving optimization of ranges or amounts. However, it’s important to note that the “obvious to try” approach requires a reasonable expectation of success and a finite number of identified, predictable solutions.
To learn more:
Criticality plays a crucial role in rebutting obviousness rejections, particularly in cases involving ranges or amounts. According to MPEP 2144.05:
“Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. ‘The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.’”
To establish criticality, the applicant must demonstrate that the claimed range produces unexpected results or has some other critical property that a person of ordinary skill in the art would not have expected. This often involves showing a marked improvement in some property or unexpected advantage within the claimed range.
It’s important to note that the burden is on the applicant to establish criticality: “Where the issue of criticality is involved, the applicant has the burden of establishing his position by a proper showing of the facts upon which he relies.”
To learn more:
When considering the substitution of equivalents in patent obviousness determinations, there are specific requirements outlined in MPEP 2144.06. The key requirement is that the equivalency must be recognized in the prior art. As stated in the MPEP:
“In order to rely on equivalence as a rationale supporting an obviousness rejection, the equivalency must be recognized in the prior art, and cannot be based on applicant’s disclosure or the mere fact that the components at issue are functional or mechanical equivalents.”
This means that the patent examiner cannot simply declare two components as equivalent based on the current application or their similar functions. There must be evidence in the prior art that recognizes the equivalency. However, it’s important to note that “An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious.” This principle allows for some flexibility in applying the doctrine of equivalents in obviousness determinations.
To learn more:
The ‘teaching away’ doctrine is an important concept in patent law related to obviousness rejections. A prior art reference is said to ‘teach away’ from the claimed invention if it criticizes, discredits, or otherwise discourages the solution claimed. However, as MPEP 2145 explains:
Key points about the ‘teaching away’ doctrine:
- It’s a factor in determining non-obviousness, but not necessarily conclusive
- The substance and nature of the teaching must be considered
- Mere disclosure of alternatives doesn’t constitute teaching away
- A reference must actively criticize, discredit, or discourage the claimed solution to teach away
Examiners and applicants should carefully evaluate the context and substance of prior art teachings when considering this doctrine.
To learn more:
MPEP 2144.05 – Obviousness Of Similar And Overlapping Ranges (3)
A result-effective variable is a parameter that is recognized in the prior art as affecting a particular result or outcome. The concept is important in patent law, particularly in obviousness determinations. According to MPEP 2144.05:
“A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.”
The idea behind the result-effective variable analysis is that a person of ordinary skill would be motivated to optimize a parameter if there is evidence in the prior art that the parameter affects the result. However, it’s important to note that after the KSR decision:
“[T]he presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.”
Applicants can rebut a prima facie case of obviousness by showing that the claimed variable was not recognized as result-effective in the prior art, but this is considered a narrow exception.
To learn more:
The “obvious to try” rationale is a valid basis for an obviousness rejection in patent law, as clarified by the Supreme Court in KSR International Co. v. Teleflex Inc. According to MPEP 2144.05:
“The Supreme Court has clarified that an ‘obvious to try’ line of reasoning may properly support an obviousness rejection. … [W]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”
This rationale is particularly relevant in cases involving optimization of ranges or amounts. However, it’s important to note that the “obvious to try” approach requires a reasonable expectation of success and a finite number of identified, predictable solutions.
To learn more:
Criticality plays a crucial role in rebutting obviousness rejections, particularly in cases involving ranges or amounts. According to MPEP 2144.05:
“Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. ‘The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.’”
To establish criticality, the applicant must demonstrate that the claimed range produces unexpected results or has some other critical property that a person of ordinary skill in the art would not have expected. This often involves showing a marked improvement in some property or unexpected advantage within the claimed range.
It’s important to note that the burden is on the applicant to establish criticality: “Where the issue of criticality is involved, the applicant has the burden of establishing his position by a proper showing of the facts upon which he relies.”
To learn more:
MPEP 2144.06 – Art Recognized Equivalence For The Same Purpose (1)
When considering the substitution of equivalents in patent obviousness determinations, there are specific requirements outlined in MPEP 2144.06. The key requirement is that the equivalency must be recognized in the prior art. As stated in the MPEP:
“In order to rely on equivalence as a rationale supporting an obviousness rejection, the equivalency must be recognized in the prior art, and cannot be based on applicant’s disclosure or the mere fact that the components at issue are functional or mechanical equivalents.”
This means that the patent examiner cannot simply declare two components as equivalent based on the current application or their similar functions. There must be evidence in the prior art that recognizes the equivalency. However, it’s important to note that “An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious.” This principle allows for some flexibility in applying the doctrine of equivalents in obviousness determinations.
To learn more:
MPEP 2145 – Consideration Of Applicant'S Rebuttal Arguments And Evidence (1)
The ‘teaching away’ doctrine is an important concept in patent law related to obviousness rejections. A prior art reference is said to ‘teach away’ from the claimed invention if it criticizes, discredits, or otherwise discourages the solution claimed. However, as MPEP 2145 explains:
Key points about the ‘teaching away’ doctrine:
- It’s a factor in determining non-obviousness, but not necessarily conclusive
- The substance and nature of the teaching must be considered
- Mere disclosure of alternatives doesn’t constitute teaching away
- A reference must actively criticize, discredit, or discourage the claimed solution to teach away
Examiners and applicants should carefully evaluate the context and substance of prior art teachings when considering this doctrine.
To learn more:
Patent Law (5)
A result-effective variable is a parameter that is recognized in the prior art as affecting a particular result or outcome. The concept is important in patent law, particularly in obviousness determinations. According to MPEP 2144.05:
“A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.”
The idea behind the result-effective variable analysis is that a person of ordinary skill would be motivated to optimize a parameter if there is evidence in the prior art that the parameter affects the result. However, it’s important to note that after the KSR decision:
“[T]he presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.”
Applicants can rebut a prima facie case of obviousness by showing that the claimed variable was not recognized as result-effective in the prior art, but this is considered a narrow exception.
To learn more:
The “obvious to try” rationale is a valid basis for an obviousness rejection in patent law, as clarified by the Supreme Court in KSR International Co. v. Teleflex Inc. According to MPEP 2144.05:
“The Supreme Court has clarified that an ‘obvious to try’ line of reasoning may properly support an obviousness rejection. … [W]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”
This rationale is particularly relevant in cases involving optimization of ranges or amounts. However, it’s important to note that the “obvious to try” approach requires a reasonable expectation of success and a finite number of identified, predictable solutions.
To learn more:
Criticality plays a crucial role in rebutting obviousness rejections, particularly in cases involving ranges or amounts. According to MPEP 2144.05:
“Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. ‘The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.’”
To establish criticality, the applicant must demonstrate that the claimed range produces unexpected results or has some other critical property that a person of ordinary skill in the art would not have expected. This often involves showing a marked improvement in some property or unexpected advantage within the claimed range.
It’s important to note that the burden is on the applicant to establish criticality: “Where the issue of criticality is involved, the applicant has the burden of establishing his position by a proper showing of the facts upon which he relies.”
To learn more:
When considering the substitution of equivalents in patent obviousness determinations, there are specific requirements outlined in MPEP 2144.06. The key requirement is that the equivalency must be recognized in the prior art. As stated in the MPEP:
“In order to rely on equivalence as a rationale supporting an obviousness rejection, the equivalency must be recognized in the prior art, and cannot be based on applicant’s disclosure or the mere fact that the components at issue are functional or mechanical equivalents.”
This means that the patent examiner cannot simply declare two components as equivalent based on the current application or their similar functions. There must be evidence in the prior art that recognizes the equivalency. However, it’s important to note that “An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious.” This principle allows for some flexibility in applying the doctrine of equivalents in obviousness determinations.
To learn more:
The ‘teaching away’ doctrine is an important concept in patent law related to obviousness rejections. A prior art reference is said to ‘teach away’ from the claimed invention if it criticizes, discredits, or otherwise discourages the solution claimed. However, as MPEP 2145 explains:
Key points about the ‘teaching away’ doctrine:
- It’s a factor in determining non-obviousness, but not necessarily conclusive
- The substance and nature of the teaching must be considered
- Mere disclosure of alternatives doesn’t constitute teaching away
- A reference must actively criticize, discredit, or discourage the claimed solution to teach away
Examiners and applicants should carefully evaluate the context and substance of prior art teachings when considering this doctrine.
To learn more:
Patent Procedure (5)
A result-effective variable is a parameter that is recognized in the prior art as affecting a particular result or outcome. The concept is important in patent law, particularly in obviousness determinations. According to MPEP 2144.05:
“A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.”
The idea behind the result-effective variable analysis is that a person of ordinary skill would be motivated to optimize a parameter if there is evidence in the prior art that the parameter affects the result. However, it’s important to note that after the KSR decision:
“[T]he presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.”
Applicants can rebut a prima facie case of obviousness by showing that the claimed variable was not recognized as result-effective in the prior art, but this is considered a narrow exception.
To learn more:
The “obvious to try” rationale is a valid basis for an obviousness rejection in patent law, as clarified by the Supreme Court in KSR International Co. v. Teleflex Inc. According to MPEP 2144.05:
“The Supreme Court has clarified that an ‘obvious to try’ line of reasoning may properly support an obviousness rejection. … [W]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”
This rationale is particularly relevant in cases involving optimization of ranges or amounts. However, it’s important to note that the “obvious to try” approach requires a reasonable expectation of success and a finite number of identified, predictable solutions.
To learn more:
Criticality plays a crucial role in rebutting obviousness rejections, particularly in cases involving ranges or amounts. According to MPEP 2144.05:
“Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. ‘The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.’”
To establish criticality, the applicant must demonstrate that the claimed range produces unexpected results or has some other critical property that a person of ordinary skill in the art would not have expected. This often involves showing a marked improvement in some property or unexpected advantage within the claimed range.
It’s important to note that the burden is on the applicant to establish criticality: “Where the issue of criticality is involved, the applicant has the burden of establishing his position by a proper showing of the facts upon which he relies.”
To learn more:
When considering the substitution of equivalents in patent obviousness determinations, there are specific requirements outlined in MPEP 2144.06. The key requirement is that the equivalency must be recognized in the prior art. As stated in the MPEP:
“In order to rely on equivalence as a rationale supporting an obviousness rejection, the equivalency must be recognized in the prior art, and cannot be based on applicant’s disclosure or the mere fact that the components at issue are functional or mechanical equivalents.”
This means that the patent examiner cannot simply declare two components as equivalent based on the current application or their similar functions. There must be evidence in the prior art that recognizes the equivalency. However, it’s important to note that “An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious.” This principle allows for some flexibility in applying the doctrine of equivalents in obviousness determinations.
To learn more:
The ‘teaching away’ doctrine is an important concept in patent law related to obviousness rejections. A prior art reference is said to ‘teach away’ from the claimed invention if it criticizes, discredits, or otherwise discourages the solution claimed. However, as MPEP 2145 explains:
Key points about the ‘teaching away’ doctrine:
- It’s a factor in determining non-obviousness, but not necessarily conclusive
- The substance and nature of the teaching must be considered
- Mere disclosure of alternatives doesn’t constitute teaching away
- A reference must actively criticize, discredit, or discourage the claimed solution to teach away
Examiners and applicants should carefully evaluate the context and substance of prior art teachings when considering this doctrine.
To learn more: