What evidence is required when relying on scientific theory in patent examinations?

Question

Accepted Answer

Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-29 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. When a patent examiner relies on a scientific theory during the examination process, it’s crucial to provide supporting evidence. According to MPEP 2144.02 : “When an examiner relies on a scientific theory, evidentiary support for the existence and meaning of that theory must be provided.” This requirement ensures that the application of scientific theories in patent examinations is not arbitrary but is based on established and verifiable scientific knowledge. Examiners must provide evidence that supports both the existence of the theory and its relevance to the specific patent application under review. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Requirement for Evidentiary Support of Scientific Theory MPEP 2144.02 Required Supporting a Rejection Under 35 U.S.C. 103 Using Scientific Theory and Legal Precedent MPEP 2144 Consistent Application of Obviousness Law MPEP 2144 Rationale for Modifying Prior Art Not Required to be Explicitly Stated MPEP 2144 Required Avoid Treating Obviousness Rationales as Per Se Rules MPEP 2144 Office Personnel May Use Legal Precedent for Obviousness Rejections MPEP 2144 Permitted Rationales Must Be Explained for Obviousness Rejection MPEP 2144 Required Caveat for Obviousness Analysis MPEP 2144 Explain Principle to Establish Obviousness MPEP 2144 Implicit Motivation to Combine References MPEP 2144 Permitted Other Related FAQs 5 FAQs Collapse How does the MPEP distinguish between compounds and mixtures in terms of obviousness? What is the significance of the In re Grose case in patent examination? What is the significance of &#8220;prima facie obviousness&#8221; in patent examination? How can applicants respond to obviousness reject...