MPEP 2123: Difference between revisions

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==[[MPEP 2123|2123 Rejection Over Prior Art's Broad Disclosure Instead of Preferred Embodiments]]==
==[[MPEP 2123|2123 Rejection Over Prior Art's Broad Disclosure Instead of Preferred Embodiments]]==


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I.PATENTS ARE RELEVANT AS PRIOR  
======I. PATENTS ARE RELEVANT AS PRIOR ART FOR ALL THEY CONTAIN======
ART FOR ALL THEY CONTAIN


“The use of patents as references is not limited to  
The use of patents as references is not limited to  
what the patentees describe as their own inventions or  
what the patentees describe as their own inventions or  
to the problems with which they are concerned. They  
to the problems with which they are concerned. They  
are part of the literature of the art, relevant for all they  
are part of the literature of the art, relevant for all they  
contain.” In re Heck, 699 F.2d 1331, 1332-33,
contain.  
216
USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In
re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275,
277 (CCPA 1968)).  


A reference may be relied upon for all that it would  
A reference may be relied upon for all that it would  
have reasonably suggested to one having ordinary  
have reasonably suggested to one having ordinary  
skill the art, including nonpreferred embodiments.  
skill the art, including nonpreferred embodiments.  
Merck & Co. v. Biocraft Laboratories, 874 F.2d 804,
10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S.
975 (1989). See also Upsher-Smith Labs. v. Pamlab,
LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215
(Fed. Cir. 2005)(reference disclosing optional inclusion
of a particular component teaches compositions
that both do and do not contain that component);
Celeritas Technologies Ltd. v. Rockwell International
Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-
23 (Fed. Cir. 1998) (The court held that the prior art
anticipated the claims even though it taught away
from the claimed invention. “The fact that a modem
with a single carrier data signal is shown to be less
than optimal does not vitiate the fact that it is disclosed.”).


 
See also [[MPEP_2131#2131.05_Nonanalogous_or_Disparaging_Prior_Art|MPEP § 2131.05]] and [[MPEP_2145#X._ARGUING_IMPROPER_RATIONALES_FOR_COMBINING_REFERENCES|§ 2145, subsection  
See also MPEP § 2131.05 and § 2145, subsection  
X.D.]], which discuss prior art that teaches away from  
X.D., which discuss prior art that teaches away from  
the claimed invention in the context of anticipation  
the claimed invention in the context of anticipation  
and obviousness, respectively.
and obviousness, respectively.


II.NONPREFERRED AND ALTERNATIVE  
======II. NONPREFERRED AND ALTERNATIVE EMBODIMENTS CONSTITUTE PRIOR ART======
EMBODIMENTS CONSTITUTE PRIOR  
ART


Disclosed examples and preferred embodiments do  
Disclosed examples and preferred embodiments do  
not constitute a teaching away from a broader disclosure  
not constitute a teaching away from a broader disclosure  
or nonpreferred embodiments. In re Susi,
or nonpreferred embodiments. A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.
440
 
F.2d 442, 169 USPQ 423 (CCPA 1971). “A
Furthermore, a prior art's mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.  
known or obvious composition does not become patentable  
<noinclude>{{MPEP Section|2122|2100|2124}}</noinclude>
simply because it has been described as somewhat  
inferior to some other product for the same use.”
In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130,
1132 (Fed. Cir. 1994) (The invention was directed to
an epoxy impregnated fiber-reinforced printed circuit
material. The applied prior art reference taught a
printed circuit material similar to that of the claims
but impregnated with polyester-imide resin instead of
epoxy. The reference, however, disclosed that epoxy
was known for this use, but that epoxy impregnated
circuit boards have “relatively acceptable dimensional
stability” and “some degree of flexibility,” but are
inferior to circuit boards impregnated with polyester-
imide resins. The court upheld the rejection concluding
that applicant’s argument that the reference
teaches away from using epoxy was insufficient to
overcome the rejection since “Gurley asserted no discovery
beyond what was known in the art.” 27 F.3d at
554, 31 USPQ2d at 1132.). Furthermore, “[t]he prior  
art’s mere disclosure of more than one alternative  
does not constitute a teaching away from any of these  
alternatives because such disclosure does not criticize,  
discredit, or otherwise discourage the solution  
claimed….” In re Fulton, 391 F.3d 1195, 1201,
73
USPQ2d 1141, 1146 (Fed. Cir. 2004).

Latest revision as of 22:45, May 31, 2020

← MPEP 2122 ↑ MPEP 2100 MPEP 2124 →


2123 Rejection Over Prior Art's Broad Disclosure Instead of Preferred Embodiments[edit | edit source]

I. PATENTS ARE RELEVANT AS PRIOR ART FOR ALL THEY CONTAIN[edit | edit source]

The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.

A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments.

See also MPEP § 2131.05 and § 2145, subsection X.D., which discuss prior art that teaches away from the claimed invention in the context of anticipation and obviousness, respectively.

II. NONPREFERRED AND ALTERNATIVE EMBODIMENTS CONSTITUTE PRIOR ART[edit | edit source]

Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.

Furthermore, a prior art's mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.

← MPEP 2122 ↑ MPEP 2100 MPEP 2124 →
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