MPEP Section 2122, Discussion of Utility in the Prior Art

Executive summary:

This document contains Section 2122 ("Discussion of Utility in the Prior Art ") of the Manual of Patent Examining Procedure (the "M.P.E.P."), Eighth Edition, Eighth Revision (July 2010). This page was last updated in January 2011. You may return to the section index to find a particular section. Alternatively, you may search the MPEP using the search box that appears on the left side of every page of BitLaw--you may restrict your search to the MPEP on the search results page.

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2122 Discussion of Utility in the Prior Art [R-6]

UTILITY NEED NOT BE DISCLOSED IN REF-ERENCE

In order to constitute anticipatory prior art, a reference must identically disclose the claimed compound, but no utility need be disclosed by the reference. In re Schoenwald, 964 F.2d 1122, 22 USPQ2d 1671 (Fed. Cir. 1992) (The application claimed compounds used in ophthalmic compositions to treat dry eye syndrome. The examiner found a printed publication which disclosed the claimed compound but did not disclose a use for the compound. The court found that the claim was anticipated since the compound and a process of making it was taught by the reference. The court explained that "no utility need be disclosed for a reference to be anticipatory of a claim to an old compound." 964 F.2d at 1124, 22 USPQ2d at 1673. It is enough that the claimed compound is taught by the reference.). >See also Impax Labs. Inc. v. Aventis Pharm. Inc., 468 F.3d 1366, 1383, 8 USPQ2d 1001, 1013 (Fed. Cir. 2006) ("[P]roof of efficacy is not required for a prior art reference to be enabling for purposes of anticipation.").<