How does the USPTO handle prior art references with both operable and inoperable features?
How does the USPTO handle prior art references with both operable and inoperable features?
The USPTO has a specific approach to handling prior art references that contain both operable and inoperable features. According to MPEP 716.07:
“Where the affidavit or declaration presented asserts inoperability in features of the reference which are not relied upon, the reference is still effective as to other features which are operative. Claims may not be allowed merely because the reference relied on is inoperative as to certain features not claimed, if the reference is operative as to other features essential to the claims.”
This policy means that:
- A prior art reference can still be valid even if some of its features are inoperable.
- The USPTO focuses on the operability of features that are relevant to the claims being examined.
- Inoperable features that are not essential to the claims do not necessarily invalidate the entire reference.
- Examiners must evaluate the relevance and operability of specific features in relation to the claimed invention.
This approach ensures that valuable prior art is not discarded due to partial inoperability, while still maintaining the integrity of the examination process.
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