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 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 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 MoreCan previously considered art raise a substantial new question of patentability?
Yes, previously considered art can raise a substantial new question of patentability under certain circumstances. The MPEP 2216 clarifies: “The substantial new question of patentability may be based on art previously considered by the Office if the reference is presented in a new light or a different way that escaped review during earlier examination.” This…
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…
Read MoreHow should prior art be presented in an inter partes reexamination request?
When presenting prior art in an inter partes reexamination request, the MPEP 2614 provides specific guidelines: Copy requirement: The request must include “a copy of every patent or printed publication relied upon or referred to in the request.” This ensures that the examiner has immediate access to all relevant prior art. Translation requirement: “An English…
Read MoreHow does predictability affect the assessment of obviousness in patent applications?
Predictability plays a significant role in assessing obviousness for patent applications. According to MPEP 2143.02, the level of predictability in a particular art is an important factor in determining whether there is a reasonable expectation of success. The MPEP states: “The reasonable expectation of success requirement refers to the likelihood of success in combining references…
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