How does the size of a genus affect the requirements for overcoming a rejection?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-10 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. The size of a genus can significantly affect the requirements for overcoming a rejection. For smaller genera, showing possession of fewer species may be sufficient, while larger genera may require more extensive evidence. As explained in MPEP 715.03 : “In the case of a small genus such as the halogens, which consists of four species, a reduction to practice of three, or perhaps even two, species might show possession of the generic invention, while in the case of a genus comprising hundreds of species, reduction to practice of a considerably larger number of species would be necessary.” This guidance highlights the importance of considering the size and complexity of the genus when preparing evidence to overcome a rejection. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Reduction to Practice for Small vs Large Genera MPEP 715.03 Explain Lack of Reduction to Practice Showing MPEP 715 Required Either Diligence or Reduction to Practice Must Be Established MPEP 715 Recommended Affidavit Must Establish Reduction to Practice Before Filing Date MPEP 715 Required Alleged Reduction to Practice Required MPEP 715 Recommended Requirement for Reduction to Practice After Reference Date MPEP 715 Requirement for Prior Reduction to Practice MPEP 715 Explain Lack of Reduction to Practice Showing in Bracket 2 MPEP 715 Required Diligence Not Required After Reduction to Practice MPEP 715 Required Showing Completion of Species Not Sufficient for Generic Invention MPEP 715.03 Other Related FAQs 5 FAQs Collapse How can an applicant overcome a species rejection under 37 CFR 1.131(a)? What is the difference between species and embodiments in patent rejections? What is the general rule ...