How does changing the principle of operation of a reference affect obviousness?
Changing the principle of operation of a prior art reference can negate an obviousness rejection. As stated in MPEP 2143.01, “If the proposed modification or combination of the prior art would change the principle of operation of the prior art invention being modified, then the teachings of the references are not sufficient to render the…
Read MoreWhat is the primary purpose of the definiteness requirement in patent claims?
The primary purpose of the definiteness requirement in patent claims is to ensure clarity in the scope of the claims. As stated in the MPEP, “The primary purpose of this requirement of definiteness of claim language is to ensure that the scope of the claims is clear so the public is informed of the boundaries…
Read MoreWhat is a prima facie rejection based on lack of utility?
A prima facie rejection based on lack of utility is an initial determination by a patent examiner that an invention lacks specific and substantial credible utility as required by 35 U.S.C. 101 and 35 U.S.C. 112(a). The MPEP provides guidance on how this process works: “Once a prima facie showing of no specific and substantial…
Read MoreWhat is the significance of “prima facie obviousness” in patent examination?
What is the significance of “prima facie obviousness” in patent examination? “Prima facie obviousness” is a crucial concept in patent examination. It refers to a situation where the examiner has established a reasonable case that a claimed invention is obvious based on the prior art. The MPEP 2144.02 states: “The rationale to support a conclusion…
Read MoreWhat does “prima facie obviousness” mean in the context of Art Recognized Suitability?
In the context of Art Recognized Suitability, “prima facie obviousness” refers to a legal standard where, at first glance, an invention appears to be obvious based on the selection of known materials for their recognized purpose. The MPEP 2144.07 states: “The selection of a known material based on its suitability for its intended use supported…
Read MoreWhat is prima facie evidence of “by another” in pre-AIA 35 U.S.C. 102(e) rejections?
A different inventive entity is considered prima facie evidence that a reference is “by another” for pre-AIA 35 U.S.C. 102(e) rejections. The MPEP states in MPEP 2136.04: “Therefore, a U.S. patent, a U.S. patent application publication or international application publication, by a different inventive entity, whether or not the application shares some inventors in common…
Read MoreWhat is the legal standard for establishing a prima facie case of anticipation or obviousness in product and apparatus claims?
According to MPEP 2112.01(I), a prima facie case of either anticipation or obviousness is established when: The claimed and prior art products are identical or substantially identical in structure or composition, or The claimed and prior art products are produced by identical or substantially identical processes This principle is supported by the following quote from…
Read MoreWhat is a prima facie case of equivalence in patent examination?
A prima facie case of equivalence is established when an examiner finds that a prior art element: (A) performs the function specified in the claim, (B) is not excluded by any explicit definition provided in the specification for an equivalent, and (C) is an equivalent of the means- (or step-) plus-function limitation. The examiner should…
Read MoreWhat is a prima facie case for lack of utility and how is it established?
A prima facie case for lack of utility is an initial showing by the USPTO that the claimed invention lacks utility. To establish this, the USPTO must: Make a prima facie showing that the claimed invention lacks utility Provide a sufficient evidentiary basis for factual assumptions relied upon in establishing the prima facie showing The…
Read MoreWhat is the presumption of operability in prior art references?
When a prior art reference expressly anticipates or makes obvious all elements of a claimed invention, it is presumed to be operable. This principle is established in case law, as stated in MPEP 2121: “When the reference relied on expressly anticipates or makes obvious all of the elements of the claimed invention, the reference is…
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