What is the difference between using prior art for 35 U.S.C. 102 and 35 U.S.C. 103 rejections?
The use of prior art differs for 35 U.S.C. 102 (anticipation) and 35 U.S.C. 103 (obviousness) rejections. For 35 U.S.C. 102 rejections, the MPEP Section 2121.01 indicates that the reference must contain an enabling disclosure: “The disclosure in an assertedly anticipating reference must provide an enabling disclosure of the desired subject matter; mere naming or…
Read MoreWhat is the difference between 35 U.S.C. 102 and 35 U.S.C. 103 rejections?
The key difference between rejections based on 35 U.S.C. 102 and 35 U.S.C. 103 lies in how the prior art is applied: 35 U.S.C. 102 (Anticipation): The claim is anticipated by the reference. As stated in the MPEP, “for anticipation under 35 U.S.C. 102, the reference must teach every aspect of the claimed invention either…
Read MoreHow are drawings in design patents treated as prior art?
Drawings in design patents are treated similarly to those in utility patents when it comes to prior art. The MPEP 2125 explicitly states: “The origin of the drawing is immaterial. For instance, drawings in a design patent can anticipate or make obvious the claimed invention as can drawings in utility patents.” This means that if…
Read MoreWhat is the relationship between criticality and obviousness in patent law?
Criticality plays a crucial role in rebutting obviousness rejections, particularly in cases involving ranges or amounts. According to MPEP 2144.05: “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…
Read MoreHow should prior art be considered in patent examination?
Prior art must be considered in its entirety during patent examination, including portions that may teach away from the claimed invention. The MPEP 2141.02 states: “A prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention.” This means that examiners should not…
Read MoreIs conclusive proof of efficacy required to show a reasonable expectation of success?
No, conclusive proof of efficacy is not required to show a reasonable expectation of success in patent law. The MPEP 2143.02 cites several court decisions that support this principle: “Conclusive proof of efficacy is not required to show a reasonable expectation of success. OSI Pharm., LLC v. Apotex Inc., 939 F.3d 1375, 1385, 2019 USPQ2d…
Read MoreHow does the MPEP distinguish between compounds and mixtures in terms of obviousness?
The Manual of Patent Examining Procedure (MPEP) makes an important distinction between compounds and mixtures when considering obviousness. MPEP 2144.02 states: “The known chemical relationship between structurally similar compounds (homologs, analogs, isomers) did not support a finding of prima facie obviousness of claimed zeolite over the prior art because a zeolite is not a compound…
Read MoreHow does common sense factor into obviousness determinations?
Common sense can be applied in obviousness determinations, but it must be supported by reasoned analysis and evidentiary support. Key points about using common sense include: It can inform the obviousness analysis if explained with sufficient reasoning A specific teaching or suggestion in a particular reference is not required Conclusory generalizations should be avoided As…
Read MoreWhat is the difference between combining and substituting equivalents in patent law?
In patent law, there is a distinction between combining equivalents and substituting equivalents, as outlined in MPEP 2144.06. The key differences are: Combining Equivalents: This involves using two or more components together, each known for the same purpose, to create a new composition or method for that same purpose. The In re Kerkhoven case exemplifies…
Read MoreIs the ability to combine references sufficient to establish obviousness?
The mere fact that references can be combined or modified is not sufficient to establish obviousness. As stated in MPEP 2143.01, “The mere fact that references can be combined or modified does not render the resultant combination obvious unless the results would have been predictable to one of ordinary skill in the art.” This principle…
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