MPEP 2122
Discussion of Utility in the Prior Art

Ninth Edition of the MPEP, Revision 07.2022, Last Revised in February 2023

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2122    Discussion of Utility in the Prior Art [R-08.2017]


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, 1124, 22 USPQ2d 1671, 1673 (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." 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, 81 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.").