What types of comparative tests are acceptable for showing non-obviousness?

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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. MPEP 716.02(b) provides guidance on acceptable comparative tests for demonstrating non-obviousness: “Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims.” This means that both direct and indirect comparative tests can be used to show non-obviousness. Direct comparisons involve testing the claimed invention against the closest prior art. Indirect comparisons may involve testing related compounds or properties that can be reasonably linked to the claimed invention. The key is that the comparison must be relevant to the scope of the claims and provide meaningful insights into the unexpected nature of the invention. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Evidence for Unexpected Properties Must Compare Invention to Prior Art MPEP 716.02(b) Permitted Evidence of Unexpected Properties Rebut Obviousness MPEP 2143 Indirect Comparative Testing Sufficient to Rebut Obviousness MPEP 716.02(b) Requirement for Comparative Testing to Establish Prima Facie Case MPEP 716.02(b) Evidence of Unexpected Improvements Required MPEP 2145 Permitted Affidavit or Declaration Under 37 CFR 1.132 Must Follow Form Paragraph 7.66 MPEP 716 Required Evidence of Unexpected Results Can Rebut Obviousness MPEP 2143 Oath or Declaration Required for Traversing Rejections MPEP 716 Required Primary Examiner Must Review Evidence to Overcome Rejection MPEP 716 Publications May Serve as Evidence for Facts at Issue MPEP 716 Recommended Other Related FAQs 5 FAQs Collapse How can unexpected properties of an end product establish patentability of an intermediate? What i...