How does MPEP 2123 address the use of broad disclosures in prior art?
MPEP 2123 provides guidance on using broad disclosures in prior art for patent rejections. It emphasizes that a reference’s entire disclosure should be considered, not just its preferred embodiments:
“A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments.”
This means that even if a prior art reference broadly discloses a concept without specifically focusing on it, that disclosure can still be used in a rejection. The MPEP further clarifies:
“Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments.”
This guidance encourages patent examiners to consider the full scope of a prior art reference, including its broad disclosures, when evaluating patentability. It prevents applicants from avoiding prior art by arguing that a reference’s preferred embodiments don’t match their claims exactly.
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