How can extrinsic evidence be used to support a 35 U.S.C. 102 rejection?

Extrinsic evidence can be used to support a 35 U.S.C. 102 rejection in several ways, as outlined in MPEP 2131.01:

1. To prove that a primary reference contains an “enabled disclosure.”
2. To explain the meaning of a term used in the primary reference.
3. To show that a characteristic not disclosed in the reference is inherent.

The MPEP states: “To serve as an anticipation when the reference is silent about the asserted inherent characteristic, such gap in the reference may be filled with recourse to extrinsic evidence. Such evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.”

This approach allows for a more comprehensive evaluation of prior art while maintaining the integrity of the anticipation rejection under 35 U.S.C. 102.

To learn more:

• extrinsic evidence
• 35 U.S.C. 102
• anticipation
• enabled disclosure
• inherent characteristics