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2122    Discussion of Utility in the Prior Art  

MPEP SECTION SUMMARY

In order to constitute anticipatory prior art, a reference must identically disclose the claimed compound, but no utility need be disclosed by the reference.


2123    Rejection Over Prior Art’s Broad Disclosure Instead of Preferred Embodiments

MPEP SECTION SUMMARY

This section covers a rejection over a prior art's broad disclosure instead of preferred embodiments. Patents are relevant as prior art for all they contain. Nonpreferred and alternative embodiments constitute prior art.

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I.   PATENTS ARE RELEVANT AS PRIOR ART 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.


II.   NONPREFERRED AND ALTERNATIVE EMBODIMENTS CONSTITUTE PRIOR ART

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, “[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….”

 

» 2124 Exception to the Rule That the Critical Reference Date Must Precede the Filing Date