How does the “way” prong of the function-way-result test apply in a prima facie case of equivalence?

The “way” prong of the function-way-result test is a critical component in establishing a prima facie case of equivalence. MPEP 2183 provides guidance on this aspect: “The examiner must explain how the prior art element performs the claimed function in substantially the same way as the claimed invention.” To satisfy the “way” prong, the examiner…

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What is the difference between a “substantial new question of patentability” and a “prima facie case of unpatentability”?

The concepts of a “substantial new question of patentability” (SNQ) and a “prima facie case of unpatentability” are distinct in patent law, particularly in the context of reexamination proceedings. According to MPEP 2242: It is not necessary that a ‘prima facie’ case of unpatentability exist as to the claim in order for ‘a substantial new…

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What is the significance of the ‘result’ in the function-way-result test for equivalence?

The ‘result’ component of the function-way-result test is crucial in establishing equivalence between a claimed invention and a prior art element. According to MPEP 2183: “The examiner must explain… how [the prior art element] achieves substantially the same result as the claimed invention.” The significance of the ‘result’ prong lies in: Demonstrating that the outcome…

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What are the key requirements for establishing a prima facie case of obviousness?

The key requirements for establishing a prima facie case of obviousness are: Resolving the Graham factual inquiries Articulating a clear rationale for why the claimed invention would have been obvious Providing a reasoned explanation that avoids conclusory generalizations As stated in the MPEP: “The key to supporting any rejection under 35 U.S.C. 103 is the…

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What is the role of “reasonable interpretation” in making a prima facie case of equivalence?

What is the role of “reasonable interpretation” in making a prima facie case of equivalence? In making a prima facie case of equivalence, the examiner must use “reasonable interpretation” of the claim language. The MPEP states: “The examiner must apply to the questioned claim element reasonable interpretation of the claim language, including consideration of the…

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What is the “rationale to support a conclusion of obviousness” in patent examination?

The “rationale to support a conclusion of obviousness” in patent examination refers to the reasoning an examiner must provide when rejecting a claim as obvious. According to MPEP 2142: “[T]he examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness. If the examiner does not produce a prima facie case, the…

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