What is the practice for genus-species cases where predictability is in question?

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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. In cases where predictability is in question, the practice for genus-species cases is more stringent. As stated in MPEP 715.03 : “In cases where predictability is in question, on the other hand, a showing of prior completion of one or a few species within the disclosed genus is generally not sufficient to overcome the reference or activity.” This means that inventors may need to provide more comprehensive evidence to establish possession of the generic invention. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Showing Completion of Species Not Sufficient for Generic Invention MPEP 715.03 Prior Completion Not Sufficient for Generic Invention MPEP 715.03 Date to Overcome Prior Art Is Effective Date MPEP 715 Indirect Antedating of Reference or Activity MPEP 715.03 Prohibited Single Species Completion Sufficient to Antedate Reference Under 37 CFR 1.131(a) MPEP 715.03 Species Completion Required for Generic Invention MPEP 715.03 Requirement for Pre-AIA Prior Art Disclosure MPEP 715.03 Claimed Species Overcome by Prior Completion MPEP 715.03 Permitted Claimed Species Can Be Modified to Prior Art MPEP 715.03 Requirement for Showing Inventor’s Possession of 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 for antedating references for generic claims? What is the test for determining if an inventor possessed a generic invention? How does the size of a genus affect the requirements for overcoming a rejection?