How does the concept of “teaching away” apply in patent obviousness cases?
“Teaching away” is a concept in patent law that can be used to rebut a prima facie case of obviousness. According to MPEP 2144.05: “A prima facie case of obviousness may also be rebutted by showing that the art, in any material respect, teaches away from the claimed invention.” Teaching away occurs when a person…
Read MoreHow can an applicant rebut a prima facie case of obviousness for overlapping ranges?
An applicant can rebut a prima facie case of obviousness for overlapping ranges in several ways, as outlined in MPEP 2144.05: Showing criticality of the range: The applicant must demonstrate that the claimed range is critical, generally by showing unexpected results relative to the prior art range. Teaching away: The applicant can show that the…
Read MoreHow can an inference of suppression or concealment be rebutted?
An inference of suppression or concealment can be rebutted by showing renewed activity on the invention just prior to the junior party’s entry into the field, coupled with diligent filing of a patent application. The MPEP provides several examples of activities that may rebut this inference: Showing activity directed to perfecting the invention Preparing the…
Read MoreHow can an applicant rebut a prima facie case of anticipation or obviousness in product claims?
An applicant can rebut a prima facie case of anticipation or obviousness in product claims by providing evidence that demonstrates the prior art products do not necessarily possess the characteristics of the claimed product. This is explained in MPEP 2112.01(I): “Therefore, the prima facie case can be rebutted by evidence showing that the prior art…
Read MoreHow can an applicant rebut the presumption of operability in prior art?
An applicant can rebut the presumption of operability in prior art by providing evidence that shows a process for making the compound was not known at the relevant time. The MPEP 2121.02 states: “A reference is presumed operable until applicant provides facts rebutting the presumption of operability.” To overcome this presumption, an applicant must present…
Read MoreHow can a reissue applicant rebut a recapture rejection?
A reissue applicant can rebut a recapture rejection by demonstrating that the reissue claims include limitations that materially narrow the claims in a way related to the surrendered subject matter. According to MPEP 1412.02: “The reissue applicant may rebut a recapture rejection by demonstrating that a claim rejected for recapture includes one or more claim…
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