MPEP Q & A 240: What is an example of a situation that does not define ‘substantial utilities’?

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Question:

What is an example of a situation that does not define “substantial utilities”:

Answer:

The following are examples of situations that do not define “substantial utilities”:

  • (A) Basic research such as studying the properties of the claimed product itself or the mechanisms in which the material is involved;
  • (B) A method of treating an unspecified disease or condition;
  • (C) A method of assaying for or identifying a material that itself has no specific and/or substantial utility;
  • (D) A method of making a material that itself has no specific, substantial, and credible utility; and
  • (E) A claim to an intermediate product for use in making a final product that has no specific, substantial and credible utility.

Chapter Details:

The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers Patentability.

The answer is from the 9th Edition, Revision 10.2019. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 2107 of the MPEP.  The following is a brief summary of section 2107.

2107 Guidelines for Examination of Applications for Compliance with the Utility Requirement

This section describes the principles behind rejections based on utility (whether or not an invention has any use) and obviousness based on one or more prior art references. In addition, there is a discussion on how to interpret claims within the scope of these utility or obviousness rejections.

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