What happens if an applicant successfully rebuts a utility rejection?
When an applicant successfully rebuts a utility rejection, the patent examiner is required to withdraw both the utility rejection and any related rejections. The MPEP clearly states: “If the applicant satisfactorily rebuts a prima facie rejection based on lack of utility under 35 U.S.C. 101, withdraw the 35 U.S.C. 101 rejection and the corresponding rejection…
Read MoreHow can an applicant respond to a rejection based on lack of utility?
When faced with a rejection based on lack of utility, an applicant has several options to respond. According to the MPEP: An applicant can do this using any combination of the following: amendments to the claims, arguments or reasoning, or new evidence submitted in an affidavit or declaration under 37 CFR 1.132, or in a…
Read MoreWhat is the relationship between 35 U.S.C. 101 and 35 U.S.C. 112(a) in utility rejections?
The relationship between 35 U.S.C. 101 and 35 U.S.C. 112(a) in utility rejections is closely intertwined. According to MPEP 2107.01: “A deficiency under the utility prong of 35 U.S.C. 101 also creates a deficiency under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.” This means that if an invention lacks utility under 35…
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