Can a prior art disclosure be used in an obviousness rejection if it doesn’t meet the anticipation requirements?
Yes, a prior art disclosure can be used in an obviousness rejection even if it doesn’t meet the anticipation requirements. The MPEP clarifies: “The description requirement of AIA 35 U.S.C. 102(a)(1) and (a)(2) does not preclude an examiner from applying a disclosure in an obviousness rejection under AIA 35 U.S.C. 103 simply because the disclosure is not adequate to anticipate the claimed invention.” This means that a prior art document can still be valuable for establishing obviousness even if it doesn’t fully describe or enable the claimed invention for anticipation purposes.
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Topics:
MPEP 2100 - Patentability,
MPEP 2152.02(B) - Described In A Printed Publication,
Patent Law,
Patent Procedure