Does a prior art reference need to disclose utility to anticipate a claim?

Question

Accepted Answer

Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-30 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. No, a prior art reference does not need to disclose utility to anticipate a claim. The Manual of Patent Examining Procedure (MPEP) Section 2122 states: “In order to constitute anticipatory prior art, a reference must identically disclose the claimed compound, but no utility need be disclosed by the reference.” This means that if a prior art reference discloses the claimed compound and a process of making it, it can be considered anticipatory even if it doesn’t specify a use for the compound. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Claimed Compound Must Be Disclosed Without Utility MPEP 2122 Required Claimed Compound Disclosed Without Use MPEP 2122 Utility Is Not Needed for Anticipation MPEP 2122 Required Claim Anticipated by Reference MPEP 2122 Design Must Be Identical to Prior Art MPEP 1504.02 Required Invention Must Not Be Anticipated by Prior Art MPEP 1504.02 Permitted Claim Must Be Considered as a Whole for Nonstatutory Double Patenting MPEP 1504.06 Required Patent Over One Year Old Is Prior Art MPEP 1504.06 Permitted Prior Art Structure Meets Intended Use Preamble MPEP 2111.02 Permitted Inherent Teaching of Prior Art MPEP 2112 Other Related FAQs 5 FAQs Collapse What is required for a reference to be anticipatory prior art? Can a compound be anticipated if its use is not disclosed in the prior art? How does the MPEP define &#8220;utility&#8221; in the context of prior art? How does the MPEP address utility disclosure in anticipatory references? Is proof of efficacy required for a prior art reference to be enabling for anticipation?