What are the consequences of failing to compare with the closest prior art in a patent application?
Failing to compare with the closest prior art in a patent application can have significant consequences. The MPEP 716.02(e) states:
‘An affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness.’
The consequences of not doing so may include:
- The evidence of unexpected results may be considered insufficient or ineffective.
- The examiner may maintain or issue a rejection based on obviousness.
- The applicant may need to submit additional evidence or arguments, potentially prolonging the examination process.
- In the worst case, it could lead to a denial of the patent application if the applicant cannot effectively demonstrate non-obviousness.
Therefore, it’s crucial to identify and compare with the closest prior art to strengthen the case for patentability.
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