Can secondary considerations overcome a 35 U.S.C. 102 rejection?
No, secondary considerations cannot overcome a rejection based on 35 U.S.C. 102 (anticipation). This is clearly stated in MPEP 2131.04:
“Evidence of secondary considerations, such as unexpected results or commercial success, is irrelevant to 35 U.S.C. 102 rejections and thus cannot overcome a rejection so based.”
The MPEP cites the case of In re Wiggins to support this statement. This means that even if an invention has achieved commercial success or produced unexpected results, these factors cannot be used to overcome a rejection based on lack of novelty under 35 U.S.C. 102. Secondary considerations are primarily relevant to non-obviousness determinations under 35 U.S.C. 103.
To learn more:
Topics:
MPEP 2100 - Patentability,
MPEP 2131.04 - Secondary Considerations,
Patent Law,
Patent Procedure