What is the requirement for substituting equivalents in patent obviousness?
When considering the substitution of equivalents in patent obviousness determinations, there are specific requirements outlined in MPEP 2144.06. The key requirement is that the equivalency must be recognized in the prior art. As stated in the MPEP:
“In order to rely on equivalence as a rationale supporting an obviousness rejection, the equivalency must be recognized in the prior art, and cannot be based on applicant’s disclosure or the mere fact that the components at issue are functional or mechanical equivalents.”
This means that the patent examiner cannot simply declare two components as equivalent based on the current application or their similar functions. There must be evidence in the prior art that recognizes the equivalency. However, it’s important to note that “An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious.” This principle allows for some flexibility in applying the doctrine of equivalents in obviousness determinations.
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