Can an applicant’s recognition of equivalents be used in patent examination?
Yes, an applicant’s recognition of equivalents can be used in patent examination, but with specific limitations. According to MPEP 2144.06:
“However, an applicant’s expressed recognition of an art-recognized or obvious equivalent may be used to refute an argument that such equivalency does not exist.”
This means that while an examiner cannot rely solely on an applicant’s disclosure to establish equivalency for an obviousness rejection, the applicant’s acknowledgment of an equivalent can be used to counter arguments against equivalency. It’s important to note that this is different from the examiner using the applicant’s disclosure as the basis for equivalency. The equivalency should still be primarily established through prior art, but the applicant’s recognition can serve as supporting evidence in certain situations.
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