How does the USPTO handle rejections based on lack of utility and enablement?
The USPTO handles rejections based on lack of utility (35 U.S.C. 101) and lack of enablement (35 U.S.C. 112(a)) separately to avoid confusion. The MPEP states: “To avoid confusion during examination, any rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, based on grounds other than ‘lack of utility’ should be imposed…
Read MoreHow can an applicant rebut a rejection based on lack of utility?
When a patent application is rejected under 35 U.S.C. 101 for lack of utility, along with a corresponding rejection under 35 U.S.C. 112(a), the burden shifts to the applicant to rebut the examiner’s prima facie showing. The MPEP provides guidance on how an applicant can respond: “There is no predetermined amount or character of evidence…
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 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 examiner’s burden in rejecting a patent application for lack of utility?
When an examiner concludes that a patent application claims an invention that is nonuseful, inoperative, or contradicts known scientific principles, they have the initial burden of providing evidence to support this conclusion. The MPEP states: “When the examiner concludes that an application claims an invention that is nonuseful, inoperative, or contradicts known scientific principles, the…
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