Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 2100 – Patentability (2)
Yes, pre-AIA 35 U.S.C. 102(e) references can be used in obviousness rejections under 35 U.S.C. 103. The MPEP cites Supreme Court authorization for this practice:
“The Supreme Court has authorized 35 U.S.C. 103 rejections based on pre-AIA 35 U.S.C. 102(e)… Obviousness can be shown by combining other prior art with the U.S. patent reference in a 35 U.S.C. 103 rejection. Hazeltine Research v. Brenner, 382 U.S. 252, 147 USPQ 429 (1965).”
This means that examiners can use U.S. patents, certain U.S. application publications, and certain international application publications as of their earliest effective U.S. filing dates not only for anticipation rejections under 102(e) but also as part of obviousness rejections under 103. These references can be combined with other prior art to demonstrate that the claimed invention would have been obvious to a person of ordinary skill in the art.
To learn more:
How does the ‘design choice’ rationale apply in obviousness rejections?
The ‘design choice’ rationale is one of the exemplary rationales used to support a conclusion of obviousness in patent examination. According to MPEP 2143, this rationale can be applied when:
“The claimed structure and the prior art structure are identical or substantially identical, or are produced by identical or substantially identical processes, but the prior art is silent as to an inherent characteristic.”
The ‘design choice’ rationale applies in obviousness rejections as follows:
- When the difference between the claimed invention and the prior art is a matter of design choice that would have been obvious to one of ordinary skill in the art.
- When the claimed design choice does not result in a new or unexpected result compared to the prior art.
- When the prior art teaches the general conditions of the claim, discovering the optimum or workable ranges involves only routine skill in the art.
- When the selection of a specific material or shape is recognized as being within the level of ordinary skill in the art.
Examiners must provide a reasoned explanation for why the differences between the claimed invention and the prior art are considered design choices. This explanation should include:
- Identification of the relevant teachings of the prior art.
- Articulation of the reasons why one of ordinary skill in the art would have found the claimed invention to be a matter of design choice.
- Explanation of why the claimed design choice does not produce a new or unexpected result.
It’s important to note that the ‘design choice’ rationale should be applied cautiously and supported by evidence to avoid relying on impermissible hindsight reasoning.
To learn more:
MPEP 2136.02 – Content Of The Prior Art Available Against The Claims (1)
Yes, pre-AIA 35 U.S.C. 102(e) references can be used in obviousness rejections under 35 U.S.C. 103. The MPEP cites Supreme Court authorization for this practice:
“The Supreme Court has authorized 35 U.S.C. 103 rejections based on pre-AIA 35 U.S.C. 102(e)… Obviousness can be shown by combining other prior art with the U.S. patent reference in a 35 U.S.C. 103 rejection. Hazeltine Research v. Brenner, 382 U.S. 252, 147 USPQ 429 (1965).”
This means that examiners can use U.S. patents, certain U.S. application publications, and certain international application publications as of their earliest effective U.S. filing dates not only for anticipation rejections under 102(e) but also as part of obviousness rejections under 103. These references can be combined with other prior art to demonstrate that the claimed invention would have been obvious to a person of ordinary skill in the art.
To learn more:
MPEP 2143 – Examples Of Basic Requirements Of A Prima Facie Case Of Obviousness (1)
How does the ‘design choice’ rationale apply in obviousness rejections?
The ‘design choice’ rationale is one of the exemplary rationales used to support a conclusion of obviousness in patent examination. According to MPEP 2143, this rationale can be applied when:
“The claimed structure and the prior art structure are identical or substantially identical, or are produced by identical or substantially identical processes, but the prior art is silent as to an inherent characteristic.”
The ‘design choice’ rationale applies in obviousness rejections as follows:
- When the difference between the claimed invention and the prior art is a matter of design choice that would have been obvious to one of ordinary skill in the art.
- When the claimed design choice does not result in a new or unexpected result compared to the prior art.
- When the prior art teaches the general conditions of the claim, discovering the optimum or workable ranges involves only routine skill in the art.
- When the selection of a specific material or shape is recognized as being within the level of ordinary skill in the art.
Examiners must provide a reasoned explanation for why the differences between the claimed invention and the prior art are considered design choices. This explanation should include:
- Identification of the relevant teachings of the prior art.
- Articulation of the reasons why one of ordinary skill in the art would have found the claimed invention to be a matter of design choice.
- Explanation of why the claimed design choice does not produce a new or unexpected result.
It’s important to note that the ‘design choice’ rationale should be applied cautiously and supported by evidence to avoid relying on impermissible hindsight reasoning.
To learn more:
Patent Law (2)
Yes, pre-AIA 35 U.S.C. 102(e) references can be used in obviousness rejections under 35 U.S.C. 103. The MPEP cites Supreme Court authorization for this practice:
“The Supreme Court has authorized 35 U.S.C. 103 rejections based on pre-AIA 35 U.S.C. 102(e)… Obviousness can be shown by combining other prior art with the U.S. patent reference in a 35 U.S.C. 103 rejection. Hazeltine Research v. Brenner, 382 U.S. 252, 147 USPQ 429 (1965).”
This means that examiners can use U.S. patents, certain U.S. application publications, and certain international application publications as of their earliest effective U.S. filing dates not only for anticipation rejections under 102(e) but also as part of obviousness rejections under 103. These references can be combined with other prior art to demonstrate that the claimed invention would have been obvious to a person of ordinary skill in the art.
To learn more:
How does the ‘design choice’ rationale apply in obviousness rejections?
The ‘design choice’ rationale is one of the exemplary rationales used to support a conclusion of obviousness in patent examination. According to MPEP 2143, this rationale can be applied when:
“The claimed structure and the prior art structure are identical or substantially identical, or are produced by identical or substantially identical processes, but the prior art is silent as to an inherent characteristic.”
The ‘design choice’ rationale applies in obviousness rejections as follows:
- When the difference between the claimed invention and the prior art is a matter of design choice that would have been obvious to one of ordinary skill in the art.
- When the claimed design choice does not result in a new or unexpected result compared to the prior art.
- When the prior art teaches the general conditions of the claim, discovering the optimum or workable ranges involves only routine skill in the art.
- When the selection of a specific material or shape is recognized as being within the level of ordinary skill in the art.
Examiners must provide a reasoned explanation for why the differences between the claimed invention and the prior art are considered design choices. This explanation should include:
- Identification of the relevant teachings of the prior art.
- Articulation of the reasons why one of ordinary skill in the art would have found the claimed invention to be a matter of design choice.
- Explanation of why the claimed design choice does not produce a new or unexpected result.
It’s important to note that the ‘design choice’ rationale should be applied cautiously and supported by evidence to avoid relying on impermissible hindsight reasoning.
To learn more:
Patent Procedure (2)
Yes, pre-AIA 35 U.S.C. 102(e) references can be used in obviousness rejections under 35 U.S.C. 103. The MPEP cites Supreme Court authorization for this practice:
“The Supreme Court has authorized 35 U.S.C. 103 rejections based on pre-AIA 35 U.S.C. 102(e)… Obviousness can be shown by combining other prior art with the U.S. patent reference in a 35 U.S.C. 103 rejection. Hazeltine Research v. Brenner, 382 U.S. 252, 147 USPQ 429 (1965).”
This means that examiners can use U.S. patents, certain U.S. application publications, and certain international application publications as of their earliest effective U.S. filing dates not only for anticipation rejections under 102(e) but also as part of obviousness rejections under 103. These references can be combined with other prior art to demonstrate that the claimed invention would have been obvious to a person of ordinary skill in the art.
To learn more:
How does the ‘design choice’ rationale apply in obviousness rejections?
The ‘design choice’ rationale is one of the exemplary rationales used to support a conclusion of obviousness in patent examination. According to MPEP 2143, this rationale can be applied when:
“The claimed structure and the prior art structure are identical or substantially identical, or are produced by identical or substantially identical processes, but the prior art is silent as to an inherent characteristic.”
The ‘design choice’ rationale applies in obviousness rejections as follows:
- When the difference between the claimed invention and the prior art is a matter of design choice that would have been obvious to one of ordinary skill in the art.
- When the claimed design choice does not result in a new or unexpected result compared to the prior art.
- When the prior art teaches the general conditions of the claim, discovering the optimum or workable ranges involves only routine skill in the art.
- When the selection of a specific material or shape is recognized as being within the level of ordinary skill in the art.
Examiners must provide a reasoned explanation for why the differences between the claimed invention and the prior art are considered design choices. This explanation should include:
- Identification of the relevant teachings of the prior art.
- Articulation of the reasons why one of ordinary skill in the art would have found the claimed invention to be a matter of design choice.
- Explanation of why the claimed design choice does not produce a new or unexpected result.
It’s important to note that the ‘design choice’ rationale should be applied cautiously and supported by evidence to avoid relying on impermissible hindsight reasoning.
To learn more: