Can inoperative prior art be used in patent rejections?
Yes, inoperative prior art can be used in patent rejections. The MPEP 2121.01 clearly states:
“Even if a reference discloses an inoperative device, it is prior art for all that it teaches.”
This principle has several important implications:
- An inoperative device can still provide valuable teachings about its components or methods.
- The overall inoperability of a device doesn’t negate specific operable features it may contain.
- Examiners can use partial teachings from inoperative prior art if those specific elements are relevant and operable.
It’s important to note that while inoperative prior art can be used, the examiner must still provide a reasonable basis for using such art in a rejection.
To learn more:
Topics:
MPEP 2100 - Patentability,
MPEP 2121.01 - Use Of Prior Art In Rejections Where Operability Is In Question,
Patent Law,
Patent Procedure