MPEP § 2151 — MPEP § 2151
Current through: 2022-07-01

2151-Overview of the Changes to 35 U.S.C. 102 and 103 in the AIA 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2100 

 Section 2151 
 

 
 
 
 
 
 2151 Overview of the Changes to 35 U.S.C. 102 and 103 in
 the AIA [R-01.2024]
 

 [Editor Note: This MPEP section is only applicable to applications
 subject to examination under the first inventor to file (FITF) provisions of the AIA as
 set forth in 35 U.S.C. 100 (note) . See MPEP §
 2159 et seq. to determine whether an application is subject to
 examination under the FITF provisions, and MPEP § 2131 - MPEP § 2138 for
 examination of applications subject to pre-AIA 35 U.S.C. 102 .] 

 After the AIA, 35 U.S.C. 102 continues to set forth
 the scope of prior art that will preclude the grant of a patent on a claimed invention, but
 revises what qualifies as prior art. Specifically, AIA 35 U.S.C.
 102(a)(1) and (a)(2) set forth what qualifies as
 prior art. AIA
 35 U.S.C. 102(a)(1) provides that a person is not entitled to a
 patent if the claimed invention was patented, described in a printed publication, or in
 public use, on sale, or otherwise available to the public before the effective filing date
 of the claimed invention. AIA 35 U.S.C. 102(a)(2) provides that a
 person is not entitled to a patent if the claimed invention was described in a patent
 issued under 35 U.S.C.
 151 , or in an application for patent published or deemed published
 under 35 U.S.C.
 122(b) , in which the patent or application, as the case may be, names
 another inventor, and was effectively filed before the effective filing date of the claimed
 invention. AIA
 35 U.S.C. 102(b) sets forth exceptions to prior art established in
 AIA 35
 U.S.C. 102(a) . Specifically, AIA 35 U.S.C.
 102(b)(1) sets forth exceptions to prior art established in
 AIA 35
 U.S.C. 102(a)(1) , and AIA 35 U.S.C. 102(b)(2) sets forth
 exceptions to prior art established in AIA 35 U.S.C. 102(a)(2) .
 

 The AIA also provides definitions in 35 U.S.C. 100 of
 the meaning of the terms “claimed invention,” “effective filing date,” “inventor,” and
 “joint inventor” (or “coinventor”). The AIA defines the term “claimed invention” in
 35 U.S.C.
 100(j) as the subject matter defined by a claim in a patent or an
 application for a patent. The AIA defines the term “effective filing date” for a claimed
 invention in a patent or application for patent (other than a reissue application or
 reissued patent) in 35 U.S.C. 100(i)(1) as meaning the
 earlier of: (1) The actual filing date of the patent or the application for the patent
 containing the claimed invention; or (2) the filing date of the earliest provisional,
 nonprovisional, international (PCT), or foreign patent application to which the patent or
 application is entitled to benefit or priority as to such claimed invention. The AIA
 defines the term “inventor” in 35 U.S.C. 100(f) as the individual or,
 if a joint invention, the individuals collectively who invented or discovered the subject
 matter of the invention, and in 35 U.S.C. 100(g) defines the term
 “joint inventor” and “coinventor” to mean any one of the individuals who invented or
 discovered the subject matter of a joint invention.
 

 As discussed previously, AIA 35 U.S.C.
 102(a)(1) provides that a person is not entitled to a patent if the
 claimed invention was patented, described in a printed publication, or in public use, on
 sale, or otherwise available to the public before the effective filing date of the claimed
 invention. Under pre-AIA
 35 U.S.C. 102(a) and (b) , knowledge or use of the invention
 ( pre-AIA 35 U.S.C.
 102(a) ), or public use or sale of the invention ( pre-AIA 35 U.S.C.
 102(b) ), was required to be in the United States to qualify as a
 prior art activity. Under the AIA, a prior public use, sale activity, or other disclosure
 has no geographic requirement (i.e., need not be in the United States) to qualify as prior
 art.
 

 AIA 35 U.S.C.
 102(b)(1) provides that certain disclosures made one year or less
 before the effective filing date of a claimed invention shall not be prior art under
 35 U.S.C.
 102(a)(1) with respect to the claimed invention if: (1) The
 disclosure was made by the inventor or joint inventor or by another who obtained the
 subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
 (2) the subject matter disclosed had, before such disclosure, been publicly disclosed by
 the inventor or a joint inventor or by another who obtained the subject matter disclosed
 directly or indirectly from the inventor or a joint inventor. Thus, AIA 35 U.S.C.
 102(b)(1) effectively provides a one-year grace period (grace period)
 after a first inventor-originated disclosure of an invention (i.e., a disclosure by an
 inventor or joint inventor, or another who obtained directly or indirectly from the
 inventor or a joint inventor) within which the inventor, assignee, obligated assignee, or
 other party having sufficient interest may file a patent application which is not subject
 to such disclosure and certain other disclosures as prior art. The one-year grace period in
 AIA 35
 U.S.C. 102(b)(1) is measured from the filing date of the earliest
 U.S. or foreign patent application to which a proper benefit or priority claim to such
 invention has been asserted in the patent or application and the earlier application
 supports the claimed invention in the manner required by 35 U.S.C.
 112(a) . Under pre-AIA 35 U.S.C. 102(b) , the one-year
 grace period is measured from the filing date of the earliest application filed in the
 United States (directly or through the PCT) and not from the dates of earlier filed foreign
 patent applications. Similar to pre-AIA 35 U.S.C. 102(b) , the one-year
 grace period in AIA 35 U.S.C. 102(b)(1) is extended to the next succeeding business
 day if the end of the one-year grace period otherwise falls on a Saturday, Sunday, or
 federal holiday. Ex parte Olah, 131 USPQ 41 (Bd. App. 1960) and
 35 U.S.C.
 21(b) . The provisions of 35 U.S.C. 21(b) still apply
 notwithstanding the provisions of 37 CFR 1.6(a)(2) and 37 CFR 1.10 , which
 accord a filing date as of the date of deposit as Priority Mail
 Express ® with the U.S. Postal Service, and 37 CFR 1.6(a)(4) ,
 which accords a filing date as of the date of submission using the USPTO patent electronic
 filing system. See also MPEP §§ 2153.01(a) and
 2153.02 .
 

 The date of invention is not relevant under
 AIA 35 U.S.C.
 102 . Thus, a prior art disclosure could not be antedated by showing
 that the inventor invented the claimed invention prior to the effective date of the prior
 art disclosure of the subject matter (e.g., under the provisions of 37 CFR
 1.131 ).
 

 As discussed previously, AIA 35 U.S.C.
 102(a)(2) provides that a person is not entitled to a patent if the
 claimed invention was described in a U.S. patent, a U.S. patent application publication, or
 an application for patent deemed published under 35 U.S.C. 122(b) (collectively referred
 to as “U.S. patent documents”), that names another inventor and was effectively filed
 before the effective filing date of the claimed invention. Under 35 U.S.C. 374 , a
 World Intellectual Property Organization (WIPO) publication of a Patent Cooperation Treaty
 (PCT) international application that designates the United States is an application for
 patent deemed published under 35 U.S.C. 122(b) for purposes of
 AIA 35
 U.S.C. 102(a)(2) . Thus, under the AIA, WIPO publications of PCT
 applications that designate the United States are treated as U.S. patent application
 publications for prior art purposes, regardless of the international filing date, whether
 they are published in English, or whether the PCT international application enters the
 national stage in the United States. Accordingly, a WIPO publication of a PCT application
 (WIPO published application) that designates the United States, a U.S. patent, or a U.S.
 patent application publication that names another inventor and was effectively filed before
 the effective filing date of the claimed invention, is prior art under AIA 35 U.S.C.
 102(a)(2) . Under pre-AIA 35 U.S.C. 102(e) , a WIPO
 published application designating the United States is treated as a U.S. patent application
 publication only if the PCT application was filed on or after November 29, 2000, and
 published under PCT
 Article 21(2) in the English language. See MPEP § 2136.03 ,
 subsection III.
 

 AIA 35 U.S.C.
 102(d) defines “effectively filed” for the purpose of determining
 whether a particular U.S. patent document is prior art under AIA 35 U.S.C.
 102(a)(2) to a claimed invention. A U.S. patent document is
 considered to have been effectively filed for purposes of its prior art effect under
 35 U.S.C.
 102(a)(2) with respect to any subject matter it describes on the
 earlier of: (1) The actual filing date of the patent or the application for patent; or (2)
 if the patent or application for patent is entitled to claim the benefit of, or priority
 to, the filing date of an earlier U.S. provisional, U.S. nonprovisional, international
 (PCT), or foreign patent application, the filing date of the earliest such application that
 describes the subject matter of the claimed invention. Thus, a U.S. patent document is
 effective as prior art as of the filing date of the earliest application to which benefit
 or priority is claimed and which describes the subject matter relied upon, regardless of
 whether the earliest such application is a U.S. provisional or nonprovisional application,
 an international (PCT) application, or a foreign patent application.
 

 AIA 35 U.S.C.
 102(b)(2)(A) and (B) provide that a disclosure shall not
 be prior art to a claimed invention under 35 U.S.C. 102(a)(2) if: (1) The subject
 matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
 or (2) the subject matter disclosed had, before such subject matter was effectively filed
 under 35 U.S.C.
 102(a)(2) , been publicly disclosed by the inventor or a joint
 inventor or another who obtained the subject matter disclosed directly or indirectly from
 the inventor or a joint inventor. Thus, under the AIA, a U.S. patent document that was not
 issued or published more than one year before the effective filing date of the claimed
 invention is not prior art to the claimed invention if: (1) The U.S. patent document was by
 another who obtained the subject matter disclosed from the inventor or a joint inventor; or
 (2) the inventor or a joint inventor, or another who obtained the subject matter disclosed
 from an inventor or joint inventor, had publicly disclosed the subject matter before the
 35 U.S.C.
 102(d) (“effectively filed”) date of the U.S. patent document. 
 

 Additionally, AIA 35 U.S.C. 102(b)(2)(C) provides
 that a disclosure made in a U.S. patent document shall not be prior art to a claimed
 invention under 35 U.S.C. 102(a)(2) if, not later than the effective filing date of
 the claimed invention, the subject matter disclosed and the claimed invention were owned by
 the same person or subject to an obligation of assignment to the same person. This
 provision replaces the exception in pre-AIA 35 U.S.C. 103(c) that applied
 only in the context of an obviousness analysis under 35 U.S.C.
 103(a) to prior art that was commonly owned at the time the claimed
 invention was made, and which qualified as prior art only under pre-AIA 35 U.S.C.
 102(e) , (f) , and/or (g) . Thus, the AIA
 provides that certain prior patents and published patent applications of co-workers and
 collaborators are not prior art either for purposes of determining novelty
 ( 35 U.S.C.
 102 ) or nonobviousness ( 35 U.S.C. 103 ). This exception,
 however, only removes disclosures as prior art under AIA 35 U.S.C.
 102(a)(2) , namely, U.S. patent documents that were not published
 before, but that were effectively filed before, the effective filing date of the claimed
 invention. This exception is not effective to except prior art that is also available under
 35 U.S.C.
 102(a)(1) , that is, patents, printed publications, public uses, sale
 activities, or other publicly available disclosures published or occurring before the
 effective filing date of the claimed invention. A prior disclosure, as defined in
 AIA 35
 U.S.C. 102(a)(1) , by a co-worker or collaborator is prior art under
 AIA 35
 U.S.C. 102(a)(1) unless it falls within an exception under
 AIA 35
 U.S.C. 102(b)(1) , regardless of whether the subject matter of the
 prior disclosure and the claimed invention was commonly owned not later than the effective
 filing date of the claimed invention.
 

 The AIA eliminates the provisions in pre-AIA 35 U.S.C.
 102(c) (abandonment of the invention), 102(d) (premature
 foreign patenting), 102(f) (derivation), and 102(g) (prior invention by another, but
 see below for discussion of continued limited applicability). Under the AIA, abandonment of
 the invention or premature foreign patenting is not relevant to patentability. Prior
 invention by another is likewise not relevant to patentability under the AIA unless there
 is a prior disclosure or filing of an application by another. A situation in which an
 application names a person who is not the actual inventor as the inventor
 ( pre-AIA 35 U.S.C.
 102(f) ) will be handled in a derivation proceeding under
 35 U.S.C.
 135 , by a correction of inventorship under 37 CFR 1.48 to name
 the actual inventor, or through a rejection under 35 U.S.C. 101 and 35 U.S.C. 115 . See
 MPEP §
 2157 .
 

 AIA 35 U.S.C.
 102(c) provides for deemed common ownership of subject matter made
 pursuant to joint research agreements. Under 35 U.S.C. 100(h) , the term “joint
 research agreement” as used in AIA 35 U.S.C. 102(c) is defined as a
 written contract, grant, or cooperative agreement entered into by two or more persons or
 entities for the performance of experimental, developmental, or research work in the field
 of the claimed invention. AIA 35 U.S.C. 102(c) specifically
 provides that subject matter disclosed and a claimed invention shall be deemed to have been
 owned by the same person or subject to an obligation of assignment to the same person in
 applying the provisions of AIA 35 U.S.C. 102(b)(2)(C) if: (1) The
 subject matter disclosed was developed and the claimed invention was made by, or on behalf
 of, one or more parties to a joint research agreement that was in effect on or before the
 effective filing date of the claimed invention; (2) the claimed invention was made as a
 result of activities undertaken within the scope of the joint research agreement; and (3)
 the application for patent for the claimed invention discloses or is amended to disclose
 the names of the parties to the joint research agreement.
 

 AIA 35 U.S.C.
 103 provides that a patent for a claimed invention may not be
 obtained, notwithstanding that the claimed invention is not identically disclosed as set
 forth in 35
 U.S.C. 102 , if the differences between the claimed invention and the
 prior art are such that the claimed invention as a whole would have been obvious before the
 effective filing date of the claimed invention to a person having ordinary skill in the art
 to which the claimed invention pertains. In addition, AIA 35 U.S.C.
 103 provides that patentability shall not be negated by the manner in
 which the invention was made. This provision tracks pre-AIA 35 U.S.C. 103(a) , except that
 the temporal focus for the obviousness inquiry is before the effective filing date of the
 claimed invention, rather than at the time of the invention. The provisions of
 pre-AIA 35 U.S.C.
 103(c) have been replaced with AIA 35 U.S.C.
 102(b)(2)(C) and (c) , and the provisions of
 pre-AIA 35 U.S.C.
 103(b) pertaining to biotechnological processes have been
 eliminated.
 

 AIA 35 U.S.C.
 102 and 103 took effect on March 16, 2013.
 These provisions apply to any patent application that contains or contained at any time:
 (1) a claim to a claimed invention that has an effective filing date as defined in
 35 U.S.C.
 100(i) that is on or after March 16, 2013; or (2) a designation as a
 continuation, divisional, or continuation-in-part of an application that contains or
 contained at any time a claim to a claimed invention that has an effective filing date that
 is on or after March 16, 2013. Such an application is referred to as an AIA (first inventor
 to file) application (hereinafter “AIA application”). AIA 35 U.S.C.
 102 and 103 also apply to any patent resulting
 from an AIA application. See Public Law 112-29, § 3(n)(1), 125 Stat. at 293. See also
 MPEP §
 2159 et seq. for guidance in determining whether an application is subject to
 AIA 35 U.S.C.
 102 and 103 .
 

 The AIA provides that the provisions of pre-AIA 35 U.S.C.
 102(g) apply to each claim of an AIA application for patent if the
 patent application: (1) contains or contained at any time a claim to a claimed invention
 having an effective filing date as defined in 35 U.S.C. 100(i) that occurs before
 March 16, 2013; or (2) is ever designated as a continuation, divisional, or
 continuation-in-part of an application that contains or contained at any time a claim to a
 claimed invention that has an effective filing date before March 16, 2013. Public Law
 112-29, § 3(n)(2), 125 Stat. at 293. Pre-AIA 35 U.S.C. 102(g) also applies
 to any patent resulting from an AIA application to which pre-AIA 35 U.S.C.
 102(g) applied. See MPEP § 2138 for guidance on application of
 pre-AIA 35 U.S.C.
 102(g) and form paragraph 7.14.aia . 
 

 If an application (1) contains or contained at any time a
 claimed invention having an effective filing date that is before March 16, 2013, or ever
 claimed the benefit of an earlier filing date under 35 U.S.C. 120 , 121 , or
 365(c) based upon an earlier application that ever contained a
 claimed invention having an effective filing date as defined in 35 U.S.C.
 100(i) that is before March 16, 2013, and (2) also contains or
 contained at any time any claimed invention having an effective filing date as defined in
 35 U.S.C.
 100(i) that is on or after March 16, 2013, or ever claimed the
 benefit of an earlier filing date under 35 U.S.C. 119 , 120 ,
 121 , 365 or 386 based
 upon an earlier application that ever contained a claimed invention having an effective
 filing date as defined in 35 U.S.C. 100(i) that is on or after
 March 16, 2013, then AIA 35 U.S.C. 102 and 103 apply to
 the application, and each claimed invention in the application is also subject to
 pre-AIA 35 U.S.C.
 102(g) .
 

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 2101-2102-[Reserved] 

 2103-Patent Examination Process 

 2104-Requirements of 35 U.S.C. 101 
 2104.01-Barred by Atomic Energy Act 

 
 

 2105-Patent Eligible Subject Matter — Living Subject Matter 

 2106-Patent Subject Matter Eligibility 
 2106.01-[Reserved] 

 2106.02-[Reserved] 

 2106.03-Eligibility Step 1: The Four Categories of Statutory Subject Matter 

 2106.04-Eligibility Step 2A: Whether a Claim is Directed to a Judicial Exception 
 2106.04(a)-Abstract Ideas 
 2106.04(a)(1)-Examples of Claims That Do Not Recite Abstract Ideas 

 2106.04(a)(2)-Abstract Idea Groupings 

 2106.04(a)(3)-Tentative Abstract Ideas 

 
 

 2106.04(b)-Laws of Nature, Natural Phenomena & Products of Nature 

 2106.04(c)-The Markedly Different Characteristics Analysis 

 2106.04(d)-Integration of a Judicial Exception Into A Practical Application 
 2106.04(d)(1)-Evaluating Improvements in the Functioning of a Computer, or an Improvement to Any Other Technology or Technical Field in
 Step 2A Prong Two 

 2106.04(d)(2)-Particular Treatment and Prophylaxis in Step 2A Prong Two 

 
 

 
 

 2106.05-Eligibility Step 2B: Whether a Claim Amounts to Significantly More 
 2106.05(a)-Improvements to the Functioning of a Computer or To Any Other Technology or Technical Field 

 2106.05(b)-Particular Machine 

 2106.05(c)-Particular Transformation 

 2106.05(d)-Well-Understood, Routine, Conventional Activity 

 2106.05(e)-Other Meaningful Limitations 

 2106.05(f)-Mere Instructions To Apply An Exception 

 2106.05(g)-Insignificant Extra-Solution Activity 

 2106.05(h)-Field of Use and Technological Environment 

 
 

 2106.06-Streamlined Analysis 
 2106.06(a)-Eligibility is Self Evident 

 2106.06(b)-Clear Improvement to a Technology or to Computer Functionality 

 
 

 2106.07-Formulating and Supporting Rejections For Lack Of Subject Matter Eligibility 
 2106.07(a)-Formulating a Rejection For Lack of Subject Matter Eligibility 
 2106.07(a)(1)-Form Paragraphs for use in Lack of Subject Matter Eligibility Rejections 

 
 

 2106.07(b)-Evaluating Applicant’s Response 

 2106.07(c)-Clarifying the Record 

 
 

 
 

 2107-Guidelines for Examination of Applications for Compliance with the Utility Requirement 
 2107.01-General Principles Governing Utility Rejections 

 2107.02-Procedural Considerations Related to Rejections for Lack of Utility 

 2107.03-Special Considerations for Asserted Therapeutic or Pharmacological Utilities 

 
 

 2108-[Reserved] 

 2109-Inventorship 

 2109.01-Joint Inventorship 

 2110-[Reserved] 

 2111-Claim Interpretation; Broadest Reasonable Interpretation 
 2111.01-Plain Meaning 

 2111.02-Effect of Preamble 

 2111.03-Transitional Phrases 

 2111.04-“Adapted to,” “Adapted for,” “Wherein,” “Whereby,” and Contingent Clauses 

 2111.05-Functional and Nonfunctional Descriptive Material 

 
 

 2112-Requirements of Rejection Based on Inherency; Burden of Proof 
 2112.01-Composition, Product, and Apparatus Claims 

 2112.02-Process Claims 

 
 

 2113-Product-by-Process Claims 

 2114-Apparatus and Article Claims — Functional Language 

 2115-Material or Article Worked Upon by Apparatus 

 2116-Novel, Nonobvious Starting Material or End Product 
 2116.01-Novel, Nonobvious Starting Material or End Product 

 
 

 2117-Markush Claims 

 2118-2119-[Reserved] 

 2120-Rejection on Prior Art 
 2120.01-Rejections Under 35 U.S.C. 102(a)(1) and (a)(2) and Pre-AIA 35 U.S.C. 102(a), (b), or (e): Printed Publication or Patent 

 2120.02-Rejections Under 35 U.S.C. 102(a)(1) or Pre-AIA 35 U.S.C. 102(a) or (b): Knowledge by Others, or Public Use, or On Sale 

 
 

 2121-Prior Art; General Level of Operability Required to Make a Prima Facie Case 
 2121.01-Use of Prior Art in Rejections Where Operability is in Question 

 2121.02-Compounds and Compositions — What Constitutes Enabling Prior Art 

 2121.03-Plant Genetics — What Constitutes Enabling Prior Art 

 2121.04-Apparatus and Articles — What Constitutes Enabling Prior Art 

 
 

 2122-Discussion of Utility in the Prior Art 

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

 2124-Exception to the Rule That the Reference Must be Prior Art 
 2124.01-Tax Strategies Deemed Within the Prior Art 

 
 

 2125-Drawings as Prior Art 

 2126-Availability of a Document as a “Patent” for Purposes of Rejection Under 35 U.S.C. 102(a) or Pre-AIA 35 U.S.C. 102(a), (b),
 and (d) 
 2126.01-Date of Availability of a Patent as a Reference 

 2126.02-Scope of Reference’s Disclosure Which Can Be Used to Reject Claims When the Reference Is a “Patent” but Not a “Publication” 

 
 

 2127-Domestic and Foreign Patent Applications as Prior Art 

 2128-“Printed Publications” as Prior Art 
 2128.01-Level of Public Accessibility Required 

 2128.02-Date Publication Is Available as a Reference 

 
 

 2129-Admissions as Prior Art 

 2130-[Reserved] 

 2131-Anticipation — Application of 35 U.S.C. 102 
 2131.01-Multiple Reference 35 U.S.C. 102 Rejections 

 2131.02-Genus-Species Situations 

 2131.03-Anticipation of Ranges 

 2131.04-Secondary Considerations 

 2131.05-Nonanalogous or Disparaging Prior Art 

 
 

 2132-Pre-AIA 35 U.S.C. 102(a) 
 2132.01-Overcoming a Pre-AIA 35 U.S.C. 102(a) Rejection based on a Printed Publication or Patent 

 
 

 2133-Pre-AIA 35 U.S.C. 102(b) 
 2133.01-Rejections of Continuation-In-Part (CIP) Applications 

 2133.02-Rejections Based on Publications and Patents 
 2133.02(a)-Overcoming a Pre-AIA 35 U.S.C. 102(b) Rejection Based on a Printed Publication or Patent 

 
 

 2133.03-Rejections Based on “Public Use” or “On Sale” 
 2133.03(a)-“Public Use” 

 2133.03(b)-“On Sale” 

 2133.03(c)-The “Invention” 

 2133.03(d)-“In This Country” 

 2133.03(e)-Permitted Activity; Experimental Use 
 2133.03(e)(1)-Commercial Exploitation 

 2133.03(e)(2)-Intent 

 2133.03(e)(3)-“Completeness” of the Invention 

 2133.03(e)(4)-Factors Indicative of an Experimental Purpose 

 2133.03(e)(5)-Experimentation and Degree of Supervision and Control 

 2133.03(e)(6)-Permitted Experimental Activity and Testing 

 2133.03(e)(7)-Activity of an Independent Third Party Inventor 

 
 

 
 

 
 

 2134-Pre-AIA 35 U.S.C. 102(c) 

 2135-Pre-AIA 35 U.S.C. 102(d) 
 2135.01-The Four Requirements of Pre-AIA 35 U.S.C. 102(d) 

 
 

 2136-Pre-AIA 35 U.S.C. 102(e) 
 2136.01-Status of Unpublished or Published as Redacted U.S. Application as a Reference Under Pre-AIA 35 U.S.C. 102(e) 

 2136.02-Content of the Prior Art Available Against the Claims 

 2136.03-Critical Reference Date 

 2136.04-Different Inventive Entity; Meaning of “By Another” 

 2136.05-Overcoming a Rejection Under Pre-AIA 35 U.S.C. 102(e) 
 2136.05(a)-Antedating a Pre-AIA 35 U.S.C. 102(e) Reference 

 2136.05(b)-Showing The Reference Is Describing An Inventor's Or At Least One Joint Inventor's Own Work 

 
 

 
 

 2137-Pre-AIA 35 U.S.C. 102(f) 
 2137.01-[Reserved] 

 2137.02-[Reserved] 

 
 

 2138-Pre-AIA 35 U.S.C. 102(g) 
 2138.01-Interference Practice 

 2138.02-“The Invention Was Made in This Country” 

 2138.03-“By Another Who Has Not Abandoned, Suppressed, or Concealed It” 

 2138.04-“Conception” 

 2138.05-“Reduction to Practice” 

 2138.06-“Reasonable Diligence” 

 
 

 2139-Rejections Under Pre-AIA 35 U.S.C. 102 
 2139.01-Effective Filing Date of a Claimed Invention Under Pre-AIA 35 U.S.C. 102 

 2139.02-Determining Whether To Apply Pre-AIA 35 U.S.C. 102(a), (b), or (e) 

 2139.03-Form Paragraphs for Use in Rejections Under Pre-AIA 35 U.S.C. 102 

 
 

 2140-[Reserved] 

 2141-Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103 
 2141.01-Scope and Content of the Prior Art 
 2141.01(a)-Analogous and Nonanalogous Art 

 
 

 2141.02-Differences Between Prior Art and Claimed Invention 

 2141.03-Level of Ordinary Skill in the Art 

 
 

 2142-Legal Concept of Prima Facie Obviousness 

 2143-Examples of Basic Requirements of a Prima Facie Case of Obviousness 
 2143.01-Suggestion or Motivation To Modify the References 

 2143.02-Reasonable Expectation of Success Is Required 

 2143.03-All Claim Limitations Must Be Considered 

 
 

 2144-Supporting a Rejection Under 35 U.S.C. 103 
 2144.01-Implicit Disclosure 

 2144.02-Reliance on Scientific Theory 

 2144.03-Reliance on Common Knowledge in the Art or “Well Known” Prior Art 

 2144.04-Legal Precedent as Source of Supporting Rationale 

 2144.05-Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions 

 2144.06-Art Recognized Equivalence for the Same Purpose 

 2144.07-Art Recognized Suitability for an Intended Purpose 

 2144.08-Obviousness of Species When Prior Art Teaches Genus 

 2144.09-Close Structural Similarity Between Chemical Compounds (Homologs, Analogues, Isomers) 

 
 

 2145-Consideration of Applicant’s Rebuttal Arguments and Evidence 

 2146-Pre-AIA 35 U.S.C. 103(c) 
 2146.01-Prior Art Disqualification Under Pre-AIA 35 U.S.C. 103(c) 

 2146.02-Establishing Common Ownership or Joint Research Agreement Under Pre-AIA 35 U.S.C. 103(c) 

 2146.03-Examination Procedure With Respect to Pre-AIA 35 U.S.C. 103(c) 
 2146.03(a)-Provisional Rejection (Obviousness) Under 35 U.S.C. 103(a) Using Provisional Prior Art Under Pre-AIA 35 U.S.C. 102(e) 

 
 

 
 

 2147-Biotechnology Process Applications; Pre-AIA 35 U.S.C. 103(b) 

 2148-Form Paragraphs for Use in Rejections Under Pre-AIA 35 U.S.C. 103 

 2149-[Reserved] 

 2150-Examination Guidelines for 35 U.S.C. 102 and 103 as Amended by the First Inventor To File Provisions of the Leahy-Smith America
 Invents Act 

 2151-Overview of the Changes to 35 U.S.C. 102 and 103 in the AIA 

 2152-Detailed Discussion of AIA 35 U.S.C. 102(a) and (b) 
 2152.01-Effective Filing Date of the Claimed Invention 

 2152.02-Prior Art Under AIA 35 U.S.C. 102(a)(1) (Patented, Described in a Printed Publication, or in Public Use, on Sale, or Otherwise
 Available to the Public) 
 2152.02(a)-Patented 

 2152.02(b)-Described in a Printed Publication 

 2152.02(c)-In Public Use 

 2152.02(d)-On Sale 

 2152.02(e)-Otherwise Available to the Public 

 2152.02(f)-No Requirement of “By Others” 

 
 

 2152.03-Admissions 

 2152.04-The Meaning of “Disclosure” 

 2152.05-Determining Whether To Apply 35 U.S.C. 102(a)(1) or 102(a)(2) 

 2152.06-Overcoming a 35 U.S.C. 102(a)(1) or 102(a)(2) Rejection 

 2152.07-Form Paragraphs for Use in Rejections Under AIA 35 U.S.C. 102 

 
 

 2153-Prior Art Exceptions Under 35 U.S.C. 102(b)(1) to AIA 35 U.S.C. 102(a)(1) 
 2153.01-Prior Art Exception Under AIA 35 U.S.C. 102(b)(1)(A) To AIA 35 U.S.C. 102(a)(1) (Grace Period Inventor-Originated Disclosure
 Exception) 
 2153.01(a)-Grace Period Inventor-Originated Disclosure Exception 

 2153.01(b)-[Reserved] 

 
 

 2153.02-Prior Art Exception Under AIA 35 U.S.C. 102(b)(1)(B) to AIA 35 U.S.C. 102(a)(1) (Inventor-Originated Prior Public Disclosure
 Exception) 

 
 

 2154-Provisions Pertaining to Subject Matter in a U.S. Patent or Application Effectively Filed Before the Effective Filing Date
 of the Claimed Invention 
 2154.01-Prior Art Under AIA 35 U.S.C. 102(a)(2) “U.S. Patent Documents” 
 2154.01(a)-WIPO Published Applications 

 2154.01(b)-Determining When Subject Matter Was Effectively Filed Under AIA 35 U.S.C. 102(d) 

 2154.01(c)-Requirement Of “Names Another Inventor” 

 2154.01(d)-Provisional Rejections Under 35 U.S.C. 102(a)(2); Reference Is a Copending U.S. Patent Application 

 
 

 2154.02-Prior Art Exceptions Under 35 U.S.C. 102(b)(2) to AIA 35 U.S.C. 102(a)(2) 
 2154.02(a)-Prior Art Exception Under AIA 35 U.S.C. 102(b)(2)(A) to AIA 35 U.S.C. 102(a)(2) (Inventor-Originated Disclosure Exception) 

 2154.02(b)-Prior Art Exception Under AIA 35 U.S.C. 102(b)(2)(B) to AIA 35 U.S.C. 102(a)(2) (Inventor-Originated Prior Public Disclosure
 Exception) 

 2154.02(c)-Prior Art Exception Under AIA 35 U.S.C. 102(b)(2)(C) to AIA 35 U.S.C. 102(a)(2) (Common Ownership or Obligation of Assignment) 

 
 

 
 

 2155-Use of Affidavits or Declarations Under 37 CFR 1.130 To Overcome Prior Art Rejections 
 2155.01-Showing That the Disclosure Was Made by the Inventor or a Joint Inventor 

 2155.02-Showing That the Subject Matter Disclosed Had Been Previously Publicly Disclosed by the Inventor or a Joint Inventor 

 2155.03-Showing That the Disclosure was Made, or That Subject Matter had Been Previously Publicly Disclosed, by Another Who Obtained
 the Subject Matter Disclosed Directly or Indirectly From the Inventor or a Joint Inventor 

 2155.04-Enablement 

 2155.05-Who May File an Affidavit or Declaration Under 37 CFR 1.130 

 2155.06-Situations in Which an Affidavit or Declaration Is Not Available 

 
 

 2156-Joint Research Agreements 

 2157-Improper Naming of Inventors 

 2158-AIA 35 U.S.C. 103 
 2158.01-Form Paragraphs for Use in Rejections Under AIA 35 U.S.C. 103 

 
 

 2159-Applicability Date Provisions and Determining Whether an Application Is Subject to the First Inventor To File Provisions of
 the AIA 
 2159.01-Applications Filed Before March 16, 2013 

 2159.02-Applications Filed on or After March 16, 2013 

 2159.03-Applications Subject to the AIA but Also Containing a Claimed Invention Having an Effective Filing Date Before March 16, 2013 

 2159.04-Applicant Statement in Transition Applications Containing a Claimed Invention Having an Effective Filing Date on or After
 March 16, 2013 

 
 

 2160-[Reserved] 

 2161-Three Separate Requirements for Specification Under 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph 
 2161.01-Computer Programming, Computer Implemented Inventions, and 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph 

 
 

 2162-Policy Underlying 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph 

 2163-Guidelines for the Examination of Patent Applications Under the 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, first paragraph,
 “Written Description” Requirement 
 2163.01-Support for the Claimed Subject Matter in Disclosure 

 2163.02-Standard for Determining Compliance With the Written Description Requirement 

 2163.03-Typical Circumstances Where Adequate Written Description Issue Arises 

 2163.04-Burden on the Examiner with Regard to the Written Description Requirement 

 2163.05-Changes to the Scope of Claims 

 2163.06-Relationship of Written Description Requirement to New Matter 

 2163.07-Amendments to Application Which Are Supported in the Original Description 
 2163.07(a)-Inherent Function, Theory, or Advantage 

 2163.07(b)-Incorporation by Reference 

 
 

 
 

 2164-The Enablement Requirement 
 2164.01-Test of Enablement 
 2164.01(a)-Undue Experimentation Factors 

 2164.01(b)-How to Make the Claimed Invention 

 2164.01(c)-How to Use the Claimed Invention 

 
 

 2164.02-Working and Prophetic Examples 

 2164.03-Relationship of Predictability of the Art and the Enablement Requirement 

 2164.04-Burden on the Examiner Under the Enablement Requirement 

 2164.05-Determination of Enablement Based on Evidence as a Whole 
 2164.05(a)-Specification Must Be Enabling as of the Filing Date 

 2164.05(b)-Specification Must Be Enabling to Persons Skilled in the Art 

 
 

 2164.06-Quantity of Experimentation 
 2164.06(a)-Examples of Enablement Issues-Missing Information 

 2164.06(b)-Examples of Enablement Issues — Biological and Chemical Cases 

 2164.06(c)-Examples of Enablement Issues – Computer Programming Cases 

 
 

 2164.07-Relationship of Enablement Requirement to Utility Requirement of 35 U.S.C. 101 

 2164.08-Enablement Commensurate in Scope With the Claims 
 2164.08(a)-Single Means Claim 

 2164.08(b)-Inoperative Subject Matter 

 2164.08(c)-Critical Feature Not Claimed 

 
 

 
 

 2165-The Best Mode Requirement 
 2165.01-Considerations Relevant to Best Mode 

 2165.02-Best Mode Requirement Compared to Enablement Requirement 

 2165.03-Requirements for Rejection for Lack of Best Mode 

 2165.04-Examples of Evidence of Concealment 

 
 

 2166-Rejections Under 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph 

 2167-2170-[Reserved] 

 2171-Two Separate Requirements for Claims Under 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, Second Paragraph 

 2172-Subject Matter Which the Inventor or a Joint Inventor Regards as The Invention 
 2172.01-Unclaimed Essential Subject Matter 

 
 

 2173-Claims Must Particularly Point Out and Distinctly Claim the Invention 
 2173.01-Interpreting the Claims 

 2173.02-Determining Whether Claim Language is Definite 

 2173.03-Correspondence Between Specification and Claims 

 2173.04-Breadth Is Not Indefiniteness 

 2173.05-Specific Topics Related to Issues Under 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, Second Paragraph 
 2173.05(a)-New Terminology 

 2173.05(b)-Relative Terminology 

 2173.05(c)-Numerical Ranges and Amounts Limitations 

 2173.05(d)-Exemplary Claim Language (“for example,” “such as”) 

 2173.05(e)-Lack of Antecedent Basis 

 2173.05(f)-Reference to Limitations in Another Claim 

 2173.05(g)-Functional Limitations 

 2173.05(h)-Alternative Limitations 

 2173.05(i)-Negative Limitations 

 2173.05(j)-Old Combination 

 2173.05(k)-Aggregation 

 2173.05(l)-[Reserved] 

 2173.05(m)-Prolix 

 2173.05(n)-Multiplicity 

 2173.05(o)-Double Inclusion 

 2173.05(p)-Claim Directed to Product-By- Process or Product and Process 

 2173.05(q)-“Use” Claims 

 2173.05(r)-Omnibus Claim 

 2173.05(s)-Reference to Figures or Tables 

 2173.05(t)-Chemical Formula 

 2173.05(u)-Trademarks or Trade Names in a Claim 

 2173.05(v)-Mere Function of Machine 

 
 

 2173.06-Practice Compact Prosecution 

 
 

 2174-Relationship Between the Requirements of 35 U.S.C. 112(a) and (b) or Pre-AIA 35 U.S.C. 112, First and Second Paragraphs 

 2175-Form Paragraphs for Use in Rejections Under 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, Second Paragraph 

 2176-2180-[Reserved] 

 2181-Identifying and Interpreting a 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, Sixth Paragraph Limitation 

 2182-Search and Identification of the Prior Art 

 2183-Making a Prima Facie Case of Equivalence 

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

 2185-Related Issues Under 35 U.S.C. 112(a) or (b) and Pre-AIA 35 U.S.C. 112, First or Second Paragraphs 

 2186-Relationship to the Doctrine of Equivalents 

 2187-Form Paragraphs for Use Relating to 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, Sixth Paragraph 

 2188-2189-[Reserved] 

 2190-Prosecution Laches and Res Judicata 

 

 

 
 

 
 
 

 
 

 

 
 
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