What are secondary considerations in patent law?
Secondary considerations, also known as objective indicia of non-obviousness, are factors considered in patent law when evaluating the non-obviousness of an invention. These factors can include unexpected results, commercial success, long-felt but unsolved needs, and failure of others. However, it’s important to note that secondary considerations are not applicable to all types of patent rejections.…
Read MoreCan secondary considerations overcome a 35 U.S.C. 102 rejection?
No, secondary considerations cannot overcome a rejection based on 35 U.S.C. 102 (anticipation). This is clearly stated in MPEP 2131.04: “Evidence of secondary considerations, such as unexpected results or commercial success, is irrelevant to 35 U.S.C. 102 rejections and thus cannot overcome a rejection so based.” The MPEP cites the case of In re Wiggins…
Read MoreWhat is required for a drawing to anticipate a claim?
For a drawing to anticipate a claim, it must clearly show all the claimed structural features and how they are put together. The MPEP 2125 cites the case of In re Mraz, 455 F.2d 1069, 173 USPQ 25 (CCPA 1972), which established that: “Drawings and pictures can anticipate claims if they clearly show the structure…
Read MoreWhat is the relationship between interfering subject matter and obviousness in patent law?
The relationship between interfering subject matter and obviousness in patent law is closely intertwined. According to MPEP 2301.03: An interference exists if the subject matter of a claim of one party would, if prior art, have anticipated or rendered obvious the subject matter of a claim of the opposing party and vice versa. This statement…
Read MoreHow are rejections under both pre-AIA 35 U.S.C. 102 and 103 formulated?
In certain situations, an examiner may need to make a rejection under both pre-AIA 35 U.S.C. 102 and 103. Form paragraph 7.27.fti is provided for this purpose: Claim(s) [1] is/are rejected under pre-AIA 35 U.S.C. 102 ([2]) as anticipated by or, in the alternative, under pre-AIA 35 U.S.C. 103(a) as obvious over [3]. However, the…
Read MoreCan a product-by-process claim be anticipated by a prior art product made by a different process?
Yes, a product-by-process claim can be anticipated by a prior art product made by a different process. MPEP 2113 clearly states: “[B]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art…
Read MoreDoes a prior art reference need to disclose utility to anticipate a claim?
No, a prior art reference does not need to disclose utility to anticipate a claim. The Manual of Patent Examining Procedure (MPEP) Section 2122 states: “In order to constitute anticipatory prior art, a reference must identically disclose the claimed compound, but no utility need be disclosed by the reference.” This means that if a prior…
Read MoreCan a prior art device that performs all functions of an apparatus claim still not anticipate the claim?
Yes, a prior art device can perform all the functions recited in an apparatus claim and still not anticipate the claim if there is any structural difference. According to MPEP 2114: “Even if the prior art device performs all the functions recited in the claim, the prior art cannot anticipate the claim if there is…
Read MoreIs proof of efficacy required for a prior art reference to be enabling for anticipation?
No, proof of efficacy is not required for a prior art reference to be enabling for purposes of anticipation. The MPEP 2122 cites a Federal Circuit decision that clarifies this point: “[P]roof of efficacy is not required for a prior art reference to be enabling for purposes of anticipation.” – Impax Labs. Inc. v. Aventis…
Read MoreCan a prior art reference be used for both anticipation and obviousness rejections?
Can a prior art reference be used for both anticipation and obviousness rejections? Yes, a single prior art reference can be used for both anticipation (35 U.S.C. 102) and obviousness (35 U.S.C. 103) rejections. The MPEP 2136.02 states: “A rejection under 35 U.S.C. 102 and 103 can be made when the prior art product seems…
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