Can the absence of an expected property support nonobviousness in patent applications?
Yes, the absence of an expected property can be evidence of nonobviousness in patent applications. According to MPEP 716.02(a):
Absence of property which a claimed invention would have been expected to possess based on the teachings of the prior art is evidence of unobviousness.
This principle is illustrated by the case of Ex parte Mead Johnson & Co., cited in the MPEP:
- Claimed compounds were expected to possess beta-andrenergic blocking activity based on prior art disclosures.
- The fact that the claimed compounds did not possess this activity was an unexpected result.
- This unexpected absence of the expected property was sufficient to establish unobviousness under 35 U.S.C. 103.
It’s important to note that the absence of the expected property should be truly unexpected and significant. The absence should not be merely a result of a minor variation that would have been obvious to one skilled in the art.
When presenting this type of evidence, applicants should clearly explain why the absence of the property would have been unexpected based on the prior art teachings.
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