How does the predictability of the technology affect obviousness analysis for species claims?

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.

The predictability of the technology is an important factor in obviousness analysis for species claims. As stated in MPEP 2144.08:

“Consider the predictability of the technology. If the technology is unpredictable, it is less likely that structurally similar species will render a claimed species obvious because it may not be reasonable to infer that they would share similar properties.“

Key considerations:

• In unpredictable fields, structurally similar compounds may not have similar properties
• Unpredictability can weigh against a conclusion of obviousness
• However, absolute predictability is not required for obviousness
• A reasonable expectation of success is sufficient

Examiners must carefully evaluate the level of predictability in the relevant technology when analyzing obviousness of species claims, particularly in fields like chemistry and biotechnology where small structural changes can lead to significant differences in properties or functions.