Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
Amounts (1)
An applicant can rebut a prima facie case of obviousness for overlapping ranges in several ways, as outlined in MPEP 2144.05:
- Showing criticality of the range: The applicant must demonstrate that the claimed range is critical, generally by showing unexpected results relative to the prior art range.
- Teaching away: The applicant can show that the prior art teaches away from the claimed invention.
- Lack of result-effective variable: The applicant may argue that the claimed variable was not recognized as a result-effective variable in the prior art.
- Broad prior art range: The applicant can establish that the prior art disclosure of the variable is within a range so broad, in light of the dissimilar characteristics of its members, as to not invite optimization.
The MPEP states: “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.’”
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And Proportions (1)
An applicant can rebut a prima facie case of obviousness for overlapping ranges in several ways, as outlined in MPEP 2144.05:
- Showing criticality of the range: The applicant must demonstrate that the claimed range is critical, generally by showing unexpected results relative to the prior art range.
- Teaching away: The applicant can show that the prior art teaches away from the claimed invention.
- Lack of result-effective variable: The applicant may argue that the claimed variable was not recognized as a result-effective variable in the prior art.
- Broad prior art range: The applicant can establish that the prior art disclosure of the variable is within a range so broad, in light of the dissimilar characteristics of its members, as to not invite optimization.
The MPEP states: “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 learn more:
MPEP 2100 – Patentability (2)
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:
An applicant can rebut a prima facie case of obviousness for overlapping ranges in several ways, as outlined in MPEP 2144.05:
- Showing criticality of the range: The applicant must demonstrate that the claimed range is critical, generally by showing unexpected results relative to the prior art range.
- Teaching away: The applicant can show that the prior art teaches away from the claimed invention.
- Lack of result-effective variable: The applicant may argue that the claimed variable was not recognized as a result-effective variable in the prior art.
- Broad prior art range: The applicant can establish that the prior art disclosure of the variable is within a range so broad, in light of the dissimilar characteristics of its members, as to not invite optimization.
The MPEP states: “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 learn more:
MPEP 2144.05 – Obviousness Of Similar And Overlapping Ranges (1)
An applicant can rebut a prima facie case of obviousness for overlapping ranges in several ways, as outlined in MPEP 2144.05:
- Showing criticality of the range: The applicant must demonstrate that the claimed range is critical, generally by showing unexpected results relative to the prior art range.
- Teaching away: The applicant can show that the prior art teaches away from the claimed invention.
- Lack of result-effective variable: The applicant may argue that the claimed variable was not recognized as a result-effective variable in the prior art.
- Broad prior art range: The applicant can establish that the prior art disclosure of the variable is within a range so broad, in light of the dissimilar characteristics of its members, as to not invite optimization.
The MPEP states: “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 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 (2)
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:
An applicant can rebut a prima facie case of obviousness for overlapping ranges in several ways, as outlined in MPEP 2144.05:
- Showing criticality of the range: The applicant must demonstrate that the claimed range is critical, generally by showing unexpected results relative to the prior art range.
- Teaching away: The applicant can show that the prior art teaches away from the claimed invention.
- Lack of result-effective variable: The applicant may argue that the claimed variable was not recognized as a result-effective variable in the prior art.
- Broad prior art range: The applicant can establish that the prior art disclosure of the variable is within a range so broad, in light of the dissimilar characteristics of its members, as to not invite optimization.
The MPEP states: “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 learn more:
Patent Procedure (2)
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:
An applicant can rebut a prima facie case of obviousness for overlapping ranges in several ways, as outlined in MPEP 2144.05:
- Showing criticality of the range: The applicant must demonstrate that the claimed range is critical, generally by showing unexpected results relative to the prior art range.
- Teaching away: The applicant can show that the prior art teaches away from the claimed invention.
- Lack of result-effective variable: The applicant may argue that the claimed variable was not recognized as a result-effective variable in the prior art.
- Broad prior art range: The applicant can establish that the prior art disclosure of the variable is within a range so broad, in light of the dissimilar characteristics of its members, as to not invite optimization.
The MPEP states: “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 learn more: