How can an applicant rebut a rejection based on lack of utility?

When a patent application is rejected under 35 U.S.C. 101 for lack of utility, along with a corresponding rejection under 35 U.S.C. 112(a), the burden shifts to the applicant to rebut the examiner’s prima facie showing. The MPEP provides guidance on how an applicant can respond:

“There is no predetermined amount or character of evidence that must be provided by an applicant to support an asserted utility. Rather, the character and amount of evidence needed to support an asserted utility will vary depending on what is claimed, and whether the asserted utility appears to contravene established scientific principles and beliefs.”

The MPEP further clarifies the standard of proof required:

“Furthermore, the applicant does not have to provide evidence sufficient to establish that an asserted utility is true ‘beyond a reasonable doubt.’ Instead, evidence will be sufficient if, considered as a whole, it leads a person of ordinary skill in the art to conclude that the asserted utility is more likely than not true.”

This means that applicants should provide evidence tailored to their specific invention and its claimed utility, with the goal of convincing a person skilled in the art that the utility is more likely true than not.

Requirement for Describing How to Use Invention MPEP 2164.07 Informative
Invention Must Have Specific Use MPEP 2164.07 Informative
Disclosure of Utility Does Not Guarantee Compliance with 112(a) MPEP 2164.07 Informative
Claims Must Be Supported by Utility MPEP 2164.07 Recommended
Enablement Fails Without Utility MPEP 2164.07 Informative