Can superiority in a shared property rebut obviousness in patent applications?
Yes, superiority in a property shared with the prior art can be evidence of nonobviousness and help rebut a prima facie case of obviousness in patent applications. According to MPEP 716.02(a):
Evidence that a compound is unexpectedly superior in one of a spectrum of common properties . . . can be enough to rebut a prima facie case of obviousness.
Key points to consider:
- The superiority must be unexpected or surprising
- No specific number of examples is required to demonstrate superiority
- The superior property should have practical significance
For instance, the MPEP cites the case of In re Chupp, where evidence showing that a claimed herbicidal compound was more effective than the closest prior art compound in controlling specific weeds was sufficient to overcome an obviousness rejection, even though the compound wasn’t superior for all crops.
It’s important to note that the evidence of superiority should be compelling enough to outweigh other factors supporting obviousness.
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