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Question:
List two examples of situations that require or constitute carrying out further research to identify or reasonably confirm a “real world” context of use and, therefore, do not define “substantial utilities.”
Answer:
The following are examples of situations that require or constitute carrying out further research to identify or reasonably confirm a “real world” context of use and, therefore, 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 07.2022, Published February 2023. 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.
2107.01 General Principles Governing Utility Rejections
Useful inventions have a practical utility or specific utility without having to pursue further research to identify or reasonably confirm it. An applicant must identify why an invention is useful (unless it has a well-established utility), otherwise the claimed invention will be deficient under 35 U.S.C. 101 and 35 U.S.C. 112 first paragraph.