What is the significance of “utility” in prior art rejections?

Utility is a crucial concept in prior art rejections, particularly when operability is in question. The MPEP 2121.01 states:

“In order to constitute anticipatory prior art, a reference must identically disclose the claimed compound, but no utility need be disclosed by the reference.”

This means that:

• A prior art reference can be valid even if it doesn’t explicitly state a utility for the disclosed invention.
• The lack of a stated utility does not negate the reference’s potential as prior art.
• Examiners focus on the disclosed elements rather than their stated uses when considering prior art.

To learn more:

• utility
• prior art
• anticipation
• patent examination