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2184 Determining Whether an Applicant Has Met the Burden of Proving Nonequivalence After a Prima Facie Case Is Made

MPEP SECTION SUMMARY

If the applicant disagrees with the inference of equivalence drawn from a prior art reference, the applicant may provide reasons why the prior art element should not be considered an equivalent to the invention disclosed in the specification. Further details on determining whether an applicant has met the burden of proving nonequivalence after a prima facie case is made are discussed.

Reasons why the prior art element should not be considered an equivalent to the invention disclosed in the specification may include:

teachings in the specification that the particular prior art is not equivalent
teachings in the prior art reference itself that may tend to show nonequivalence
37 CFR 1.132 affidavit evidence of facts tending to show nonequivalence

Factors determining whether one element is or is not an equivalent of another include:

whether the prior art element performs the function specified in the claim in substantially the same way, and produces substantially the same results as the corresponding element disclosed in the specification
whether a person of ordinary skill in the art would have recognized the interchange-ability of the element shown in the prior art for the corresponding element disclosed in the specification
whether the prior art element is a structural equivalent of the corresponding element disclosed in the specification being examined
whether there are insubstantial differences between the prior art element and the structure, material or acts disclosed in the specification

The applicant has the opportunity during proceedings before the Office to amend the claims so that the claimed invention meets all the statutory criteria for patentability