MPEP 2100 Flashcards
What evidence can be used to overcome a prior art rejection in a product by process?
MPEP 2113 - Evidence that the two processes produce different properties is germane to the issue of patentability of the product-by-process claim.
Accordingly, a comparison of the results obtained by conducting the process recited in the claim versus the process used by the prior art and which shows that the claimed product exhibits an unexpectedly lower melting point would be a persuasive demonstration that, although the products would appear to be substantially identical, in fact, they are patentably different.
The patentability of a product-by-process claim is determined on the basis of
product characteristics, not process steps - MPEP 2113
The examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness. If the examiner does not produce a prima facie case, the applicant
is under no obligation to submit evidence of nonobviousness.
the fact that a specification does not contain a statement of utility for the claimed invention does not per se negate utility.
True or False
True - it can be well-established utility - 2107.02(II)
an invention has a well-established utility if:
(i) a person of ordinary skill in the art would immediately appreciate why the invention is useful based on the characteristics of the invention and (ii) the utility is specific, substantial, and credible.
MPEP § 2138 states “35 U.S.C. 102(g) may form the basis for an ex parte rejection if:
(1) the subject matter at issue has been actually reduced to practice by another before the applicant’s invention; and (2) there has been no abandonment, suppression or concealment.
