MPEP § 2128 — MPEP § 2128
Current through: 2022-07-01

2128-“Printed Publications” as Prior Art 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Chapter 2100 

 Section 2128 
 

 
 
 
 
 
 2128 “Printed Publications” as Prior Art [R-01.2024]

 [Editor Note: For applications subject to the first inventor to file (FITF)
 provisions of the AIA, see also MPEP §§ 2152.02(b) and
 2152.02(e) ] 

 I. A REFERENCE IS A “PRINTED PUBLICATION” IF IT IS ACCESSIBLE TO THE PUBLIC A reference is proven to be a “printed publication” “upon a
 satisfactory showing that such document has been disseminated or otherwise made
 available to the extent that persons interested and ordinarily skilled in the subject
 matter or art, exercising reasonable diligence, can locate it.” In re
 Wyer, 655 F.2d 221, 210 USPQ 790 (CCPA 1981) (quoting I.C.E. Corp.
 v. Armco Steel Corp., 250 F. Supp. 738, 743, 148 USPQ 537, 540 (SDNY 1966))
 (“We agree that ‘printed publication’ should be approached as a unitary concept. The
 traditional dichotomy between ‘printed’ and ‘publication’ is no longer valid. Given the
 state of technology in document duplication, data storage, and data retrieval systems,
 the ‘probability of dissemination’ of an item very often has little to do with whether
 or not it is ‘printed’ in the sense of that word when it was introduced into the patent
 statutes in 1836. In any event, interpretation of the words ‘printed’ and ‘publication’
 to mean ‘probability of dissemination’ and ‘public accessibility’ respectively, now
 seems to render their use in the phrase ‘printed publication’ somewhat redundant.”)
 In re Wyer, 655 F.2d at 226, 210 USPQ at 794. See also
 Voter Verified, Inc. v. Premier Election Solutions , 698 F.3d 1374,
 1380, 104 USPQ2d 1553, 1556-57 (Fed. Cir. 2012) (“the ultimate question is whether the
 reference was ‘available to the extent that persons interested and ordinary skilled in
 the subject matter or art[,] exercising reasonable diligence, can locate it’” (citations
 omitted)). 
 

 The Federal Circuit stated the following in
 Medtronic, Inc. v. Barry , 891 F.3d 1368, 1380, 127 USPQ2d 1208,
 1216-17 (Fed. Cir. 2018): 
 

 
 Whether a reference qualifies as a “printed
 publication” is a legal conclusion based on underlying factual determinations.
 Suffolk Techs., LLC v. AOL Inc. , 752 F.3d 1358, 1364 (Fed. Cir.
 2014) (citation omitted). “The ‘printed publication’ provision of § 102(b) ‘was
 designed to prevent withdrawal by an inventor ... of that which was already in the
 possession of the public.’ ” Bruckelmyer v. Ground Heaters, Inc. ,
 445 F.3d 1374, 1378 (Fed. Cir. 2006) (alteration in original) (quoting In re
 Wyer , 655 F.2d 221, 226 (C.C.P.A. 1981)); see Blue Calypso, LLC
 v. Groupon, Inc. , 815 F.3d 1331, 1348 (Fed. Cir. 2016) (“This rule is
 grounded on the principle that once an invention is in the public domain, it is no
 longer patentable by anyone.” (internal quotation marks and citations omitted) ).
 Medtronic, as the patent challenger, bears the burden of establishing that a
 particular document is a printed publication. See Blue Calypso ,
 815 F.3d at 1350–51 (holding that petitioner failed to carry its burden of proving
 public accessibility of the allegedly invalidating reference).
 

 The determination of whether a document is a
 “printed publication” under 35 U.S.C. § 102(b) “involves a
 case-by- case inquiry into the facts and circumstances surrounding the reference’s
 disclosure to members of the public.” In re Klopfenstein , 380 F.3d
 1345, 1350 (Fed. Cir. 2004). “Because there are many ways in which a reference may be
 disseminated to the interested public, ‘public accessibility’ has been called the
 touchstone in determining whether a reference constitutes a ‘printed publication’ bar
 under 35 U.S.C. §
 102(b) .” Blue Calypso, 815 F.3d at 1348 (quoting In re
 Hall , 781 F.2d 897, 898–99 (Fed. Cir. 1986)). “A reference will be
 considered publicly accessible if it was ‘disseminated or otherwise made available to
 the extent that persons interested and ordinarily skilled in the subject matter or
 art exercising reasonable diligence[] can locate it.’” Id. (quoting Kyocera
 Wireless Corp. v. Int’l Trade Comm’n , 545 F.3d 1340, 1350 (Fed. Cir.
 2008)). 
 

 
 See also Carella v. Starlight Archery, 804 F.2d 135,
 231 USPQ 644 (Fed. Cir. 1986) (Starlight Archery argued that Carella’s patent claims to
 an archery sight were anticipated under pre-AIA 35 U.S.C. 102(a) by an
 advertisement in a Wisconsin Bow Hunter Association (WBHA) magazine and a WBHA mailer
 prepared prior to Carella’s filing date. However, there was no evidence as to when the
 mailer was received by any of the addressees. Plus, the magazine had not been mailed
 until 10 days after Carella’s filing date. The court held that since there was no proof
 that either the advertisement or mailer was accessible to any member of the public
 before the filing date there could be no rejection under pre-AIA 35 U.S.C.
 102(a) .). 
 

 When a document is cited in a rejection of a claim in an
 examination of a patent application or during an reexamination proceeding, an applicant
 or patent owner may challenge its public availability and/or the date it became publicly
 accessible, even when the document itself contains a publication date, by filing a
 proper affidavit or declaration under 37 CFR 1.132 that includes facts and
 evidence to support the applicant or patent owner's position. See MPEP § 716 et seq. 

 II. ELECTRONIC PUBLICATIONS AS PRIOR ART 
 

 A. Status as a “Printed Publications” An electronic publication, including an online database or Internet
 publication (e.g., discussion group, forum, digital video, or social media post), is
 considered to be a “printed publication” within the meaning of 35 U.S.C.
 102(a)(1) and pre-AIA 35 U.S.C. 102(a) and (b) 
 provided the publication was accessible to persons concerned with the art to which
 the document relates. See In re Wyer, 655 F.2d 221, 227, 210 USPQ
 790, 795 (CCPA 1981) (“Accordingly, whether information is printed, handwritten, or
 on microfilm or a magnetic disc or tape, etc., the one who wishes to characterize the
 information, in whatever form it may be, as a ‘printed publication’ ... should
 produce sufficient proof of its dissemination or that it has otherwise been available
 and accessible to persons concerned with the art to which the document relates and
 thus most likely to avail themselves of its contents.’” (citations omitted).). See
 also Amazon.com v. Barnesandnoble.com, 73 F. Supp. 2d 1228,
 53 USPQ2d 1115, 1119 (W.D. Wash. 1999) (Pages from a website were relied on by
 defendants as an anticipatory reference (to no avail), however status of the
 reference as prior art was not challenged.); In re Epstein, 32
 F.3d 1559, 31 USPQ2d 1817 (Fed. Cir. 1994) (Database printouts of abstracts which
 were not themselves prior art publications were properly relied as providing evidence
 that the software products referenced therein were “first installed” or “released”
 more than one year prior to applicant’s filing date.); Suffolk Tech v. AOL
 and Google, 752 F.3d 1358, 110 USPQ2d 2034 (Fed. Cir. 2014) (A newsgroup
 posting constituted prior art as it was directed to those having ordinary skill in
 the art and was publicly accessible because the post was sufficiently
 disseminated.)
 

 The Office policy requiring recordation of the field of search and
 search results (see MPEP § 719.05 ) weighs in favor of finding that internet
 and online database references cited by the examiner are “accessible to persons
 concerned with the art to which the document relates and thus most likely to avail
 themselves of its contents.” Wyer, 655 F.2d at 221, 210 USPQ at
 790. Office copies of an electronic document must be retained if the same document
 may not be available for retrieval in the future. This is especially important for
 sources obtained from the internet and online databases.
 

 B. Date of Availability Electronic publications on the internet or on an online database
 are considered to be publicly available as of the date the item was publicly posted.
 See subsection I above. Absent evidence of the date that the disclosure was publicly
 posted, if the publication itself does not include a publication date (or retrieval
 date), it cannot be relied upon as prior art under 35 U.S.C.
 102(a)(1) and pre-AIA 35 U.S.C. 102(a) or (b) .
 However, it may be relied upon to provide evidence regarding the state of the art.
 Examiners may ask the Scientific and Technical Information Center to find the
 earliest date of publication or posting. See MPEP § 901.06(a) , subsection IV.G.
 
 

 C. Extent of Teachings Relied Upon An electronic publication, like any publication, may be relied upon
 for all that it would have reasonably suggested to one having ordinary skill in the
 art. See MPEP
 § 2121.01 and § 2123 . Note, however, that if an
 electronic document which is the abstract of a patent or printed publication is
 relied upon in a rejection under 35 U.S.C. 102 or
 35 U.S.C.
 103 , only the text of the abstract (and not the underlying
 document) may be relied upon to support the rejection. In situations where the
 electronic version and the published paper version of the same or a corresponding
 patent or printed publication differ appreciably, each may need to be cited and
 relied upon as independent references based on what they disclose. 
 

 D. Internet Usage Policy See MPEP § 904.02(c) for the portions of the Internet Usage
 Policy pertaining to internet searching and documenting search strategies. See
 MPEP §
 707.05(e) for the proper citation of electronic documents.
 
 

 E. Wayback Machine
 ® The Wayback Machine ® is a
 digital library maintained by the Internet Archive (a non-profit organization) for
 viewing archived versions of websites. Simply, the Wayback
 Machine ® uses software programs, known as crawlers, to
 surf the internet and automatically store copies of web objects (web pages, images,
 videos, etc.), preserving these objects as they exist at the point and time of
 capture. These web objects are stored as web captures. Each capture has a time stamp
 including the year/month/day/hour/minute/second the capture was made and the URL of
 the original website. Accordingly, the Wayback Machine ® 
 provides the ability to view and browse internet information that may no longer be
 available on the original website. 
 

 Publications obtained via the Wayback
 Machine ® are prima facie deemed to
 be publicly accessible at the date and time provided in the time stamp. The burden
 then shifts to the applicant should they wish to challenge the authenticity,
 reliability or accessibility of such information. See Valve Corp. v.
 Ironburg Inventions Ltd., 8 F.4th 1364, 1374-75, 2021 USPQ2d 867 (Fed.
 Cir. 2021) (relying on Wayback Machine ® to establish date
 of publication). 
 

 F. Social
 Media Social media websites on the internet, such as
 YouTube ® , Twitter ® ,
 Facebook ® , and public forum posts, can be a source of
 prior art, provided the public accessibility requirements, as laid out in subsection
 I are met. Thus, all information on social media is not necessarily publicly
 accessible. Public accessibility is determined on a case-by-case basis taking into
 consideration factors such as, where the information is posted, privacy restrictions
 placed on the posting, the length of time it was posted, and whether the information
 is indexed for searching. 
 

 Some social media websites are not archived by the
 Wayback Machine ® . Therefore, examiners may have to rely on
 the timestamps on the social media sites to establish the public accessibility date.
 However, the accuracy of timestamps on social media websites may need to be
 scrutinized with care, as the reliability of some websites do not approach those of
 other types of internet publications, such as those providing peer-reviewed material.
 When a document is cited in a rejection of a claim, an applicant or patent owner may
 challenge its public availability and/or date that it became publicly available, even
 where the information self-contains a publication date, by filing a proper affidavit
 or declaration under 37 CFR 1.132 . See
 MPEP §
 716 et seq. 

 For examples of social media website citation formats
 see MPEP §
 707.05(e) . 
 

 III. EXAMINER NEED NOT PROVE ANYONE ACTUALLY LOOKED AT THE DOCUMENT There is no need to prove that someone actually looked at a publication
 when that publication is accessible to the public through a library or patent office.
 See In re Wyer, 655 F.2d 221, 210 USPQ 790 (CCPA 1981); In
 re Hall, 781 F.2d 897, 228 USPQ 453 (Fed. Cir. 1986). “A reference is
 considered publicly accessible 'upon a satisfactory showing that such document has been
 disseminated or otherwise made available to the extent that persons interested and
 ordinarily skilled in the subject matter or art, exercising reasonable diligence, can
 locate it.’ 'If accessibility is proved, there is no requirement to show that particular
 members of the public actually received the information.'” Jazz Pharm., Inc. v.
 Amneal Pharm., LLC, 895 F.3d 1347, 1355-1356 (Fed. Cir. 2018) (quoting
 Wyer, 655 F.2d at 226) and Constant v. Advanced
 Micro-Devices, Inc., 848 F.2d 1560, 1569, 7 USPQ2d 1057, 1062-63 (Fed. Cir.
 1988)). 
 

 
 2128.01 Level of Public Accessibility Required [R-07.2022]

 The statutory phrase “printed publication” has been
 interpreted to mean that before the critical date the reference must have been
 sufficiently accessible to the public interested in the art; dissemination and public
 accessibility are the keys to the legal determination whether a prior art reference was
 “published.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560,
 1568, 7 USPQ2d 1057, 1062 (Fed. Cir. 1988).
 

 I. A THESIS PLACED IN A UNIVERSITY LIBRARY OR A DOCUMENT PLACED IN AN ONLINE
 DATABASE MAY BE PRIOR ART IF SUFFICIENTLY ACCESSIBLE TO THE PUBLIC A doctoral thesis indexed and shelved in a library is sufficiently
 accessible to the public to constitute prior art as a “printed publication.”
 In re Hall, 781 F.2d 897, 228 USPQ 453 (Fed. Cir. 1986). Even
 if access to the library is restricted, a reference will constitute a “printed
 publication” as long as a presumption is raised that the portion of the public
 concerned with the art would know of the invention. In re Bayer, 
 568 F.2d 1357, 196 USPQ 670 (CCPA 1978).
 

 In In re Hall, general library cataloging and
 shelving practices showed that a doctoral thesis deposited in university library
 would have been indexed, cataloged and shelved and thus available to the public
 before the critical date. Compare In re Cronyn, 890 F.2d 1158, 13
 USPQ2d 1070 (Fed. Cir. 1989) wherein doctoral theses were shelved and indexed by
 index cards filed alphabetically by student name and kept in a shoe box in the
 chemistry library. The index cards only listed the student name and title of the
 thesis. In Cronyn, the court held that the students’ theses were
 not accessible to the public because they had not been either cataloged or indexed in
 a meaningful way, e.g., by title or in some other way that bears a relationship to
 the subject of the thesis, but instead were cataloged by the researcher's name.
 Compare In re Bayer, 568 F.2d 1357, 196 USPQ 670 (CCPA 1978) (A
 reference will constitute a “printed publication” as long as a presumption is raised
 that the portion of the public concerned with the art would know of the invention
 even if accessibility is restricted to only this part of the public. But
 accessibility to applicant’s thesis was restricted to only three members of a
 graduate committee. There can be no presumption that those concerned with the art
 would have known of the invention in this case.).
 

 In determining whether a document in an online
 database is a printed publication, public accessibility is key. See
 MPEP §
 2128 , subsection I. In Voter Verified, Inc. v.
 Premier Election Sols., Inc. the court found that “(i)ndexing is not ‘a
 necessary condition for a reference to be publicly accessible’; it is but one among
 many factors that may bear on public accessibility.” Voter Verified, Inc. v.
 Premier Election Sols., Inc., 698 F.3d 1374, 1381, 104 USPQ2d 1553, 1557
 (Fed. Cir. 2012) (quoting In re Lister, 583 F.3d 1307, 1312, 92
 USPQ2d 1225, 1228 (Fed. Cir. 2009)). The court further stated that “indexing is no
 more or less important in evaluating the public accessibility of online references
 than for those fixed in more traditional, tangible media”. Id. See
 also Telefonaktiebolaget LM Ericsson v. TCL Corp., 941 F.3d 1341,
 1346-47, 2019 USPQ2d 428076 (Fed. Cir. 2019) (The court found the Jentschel reference
 was available to the public based on a declaration and evidence that the reference
 was received and shelved in a German library. Ericsson argued that public
 accessibility required something more than simply shelving of the reference in a
 library. The court found Ericsson’s argument unpersuasive because it was undisputed
 that the library was accessible to the public and that the reference was published as
 a journal for at least 30 years. The court pointed out that Ericsson produced no
 evidence to counter the public accessibility evidence of record.).
 

 A document in an online database is not always deemed
 a printed publication. In Acceleration Bay, LLC v. Activision Blizzard
 Inc. , 908 F.3d 765, 773, USPQ2d 1507, 1514 (Fed. Cir. 2018), the court
 agreed with the Board that an electronic technical report did not constitute a
 “printed publication” within the meaning of (pre‑AIA) 35 U.S.C. 102(a) . The
 court agreed with the Board that an interested skilled artisan, using reasonable
 diligence, would not have been able to find the technical report on the CSE Technical
 Reports Library website despite some indexing and search functionality on the website
 that permitted technical accessibility. Technical reports were listed only by author
 or year, and there was no evidence how many reports were in the Library’s database in
 1999. It was determined that at best, an artisan might have located the cited
 technical report by skimming through potentially hundreds of titles in the same year,
 with most containing unrelated subject matter, or by viewing all titles in the
 database listed by author, when the authors were not particularly well known. Also,
 the website’s advanced search form was found to be deficient because the ability to
 search keywords for author, title, and abstract fields was not reliable.
 

 II. ORALLY PRESENTED PAPER CAN CONSTITUTE A “PRINTED PUBLICATION” IF WRITTEN
 COPIES ARE AVAILABLE WITHOUT RESTRICTION A paper which is orally presented in a forum open to all interested
 persons constitutes a “printed publication” if written copies are disseminated
 without restriction. Massachusetts Institute of Technology v. AB Fortia,
 774 F.2d 1104, 1109, 227 USPQ 428, 432 (Fed. Cir. 1985) (Paper orally
 presented to between 50 and 500 persons at a scientific meeting open to all persons
 interested in the subject matter, with written copies distributed without restriction
 to all who requested, is a printed publication. Six persons requested and obtained
 copies.); see also M & K Holdings, Inc. v. Samsung Elecs. Co., 
 985 F.3d 1376, 2021 USPQ2d 123 (Fed. Cir. 2021). An oral presentation at a scientific
 meeting or a demonstration at a trade show may be prior art under 35 U.S.C.
 102(a)(1) ’s provision: “otherwise available to the public.” See
 MPEP
 § 2152.02(e) . 
 

 III. INTERNAL DOCUMENTS INTENDED TO BE CONFIDENTIAL ARE NOT “PRINTED
 PUBLICATIONS” Documents and items only distributed internally within an
 organization which are intended to remain confidential are not “printed publications”
 no matter how many copies are distributed. There must be an existing policy of
 confidentiality or agreement to remain confidential within the organization. Mere
 intent to remain confidential is insufficient. In re George, 
 2 USPQ2d 1880 (Bd. Pat. App. & Inter. 1987) (Research reports disseminated
 in-house to only those persons who understood the policy of confidentiality regarding
 such reports are not printed publications even though the policy was not specifically
 stated in writing.); Garret Corp. v. United States, 422 F.2d 874,
 878, 164 USPQ 521, 524 (Ct. Cl.1970) (“While distribution to government agencies and
 personnel alone may not constitute publication ... distribution to commercial
 companies without restriction on use clearly does.”); Northern Telecom Inc.
 v. Datapoint Corp., 908 F.2d 931, 15 USPQ2d 1321 (Fed. Cir. 1990) (Four
 reports on the AESOP-B military computer system which were not under security
 classification were distributed to about fifty organizations involved in the AESOP-B
 project. One document contained the legend “Reproduction or further dissemination is
 not authorized.” The other documents were of the class that would contain this
 legend. The documents were housed in Mitre Corporation’s library. Access to this
 library was restricted to those involved in the AESOP-B project. The court held that
 public access was insufficient to make the documents “printed publications.”).
 

 IV. PUBLICLY DISPLAYED REFERENCES CAN CONSTITUTE A “PRINTED PUBLICATION” EVEN IF
 THE REFERENCES ARE NOT DISSEMINATED BY COPIES OR INDEXED IN A LIBRARY OR
 DATABASE A publicly displayed document where persons of ordinary skill in the
 art could see it and are not precluded from copying it can constitute a “printed
 publication,” even if it is not disseminated by the distribution of reproductions or
 copies and/or indexed in a library or database. 
 

 As stated in In re Klopfenstein, 
 380 F.3d 1345, 1348, 72 USPQ2d 1117, 1119 (Fed. Cir. 2004), “the key inquiry is
 whether or not a reference has been made ‘publicly accessible.’” Prior to the
 critical date, a fourteen-slide presentation disclosing the invention was printed and
 pasted onto poster boards. The printed slide presentation was displayed with no
 confidentiality restrictions for approximately three cumulative days at two different
 industry events. Id. at 1347, 72 USPQ2d at 1118. The court noted
 that “an entirely oral presentation at a scientific conference that includes neither
 slides nor copies of the presentation is without question not a 'printed publication'
 for the purposes of [pre-AIA] 35 U.S.C. § 102(b) . Furthermore, a presentation that
 includes a transient display of slides is likewise not necessarily a ‘printed
 publication.’” Id. at 1349 n.4, 72 USPQ2d at 1120 n.4. In
 resolving whether or not a temporarily displayed reference that was neither
 distributed nor indexed was nonetheless made sufficiently publicly accessible to
 count as a “printed publication” under pre-AIA 35 U.S.C. 102(b) , the
 court considered the following factors: “the length of time the display was
 exhibited, the expertise of the target audience, the existence (or lack thereof) of
 reasonable expectations that the material displayed would not be copied, and the
 simplicity or ease with which the material displayed could have been copied.”
 Id. at 1350, 72 USPQ2d at 1120. Upon reviewing the above
 factors, the court concluded that the display “was sufficiently publicly accessible
 to count as a ‘printed publication.’” Id. at 1352, 72 USPQ2d at
 1121. 
 

 Similarly, in Medtronic Inc., v.
 Barry (891 F.3d 1368, 127 USPQ 1208) (Fed. Cir. 2018) a video and slides
 presented at two conferences prior to the critical date were found to be publically
 accessible. When considering the factors set forth in In re
 Klopfenstein , the court stated “[i]t may be relevant to determine
 whether … members were expected to maintain the confidentiality of received materials
 or would be permitted to share or even publicize the insights gained and materials
 collected…”. Id at 127 USPQ2d at 1218. In addition, in
 GoPro, Inc. v. Contour IP Holding LLC , 908 F.3d 690, 128 USPQ2d
 1447 (Fed. Cir. 2018), the court stated that the expertise of the target audience is
 a factor in determining public accessibility but is not dispositive of the inquiry.
 “Rather, our case law directs us to also consider the nature of the conference or
 meeting; whether there are restrictions on public disclosure of the information;
 expectations of confidentiality; and expectations of sharing the information.”
 Id. at 695, 128 USPQ2d at 1451. 
 

 See also Jazz Pharm., Inc. v. Amneal Pharm.,
 LLC , 895 F.3d 1347, 127 USPQ2d 1485 (Fed. Cir. 2018) (A notice in the
 Federal Register which included instructions on accessing reference materials was
 sufficient for the materials to be considered publicly accessible; the Board did not
 need to find that specific persons actually received or examined the materials).
 

 “We have consistently held that indexing or
 searchability is unnecessary for a reference to be a printed publication.”
 Jazz Pharm., Inc. v. Amneal Pharm., LLC , 895 F.3d 1347, 1359,
 127 USPQ2d 1485,1493 (Fed. Cir. 2018). But see Acceleration Bay, LLC v.
 Activision Blizzard Inc. , 908 F.3d 765, 773, USPQ2d 1507, 1514 (Fed.
 Cir. 2018)(an electronic technical report did not constitute a “printed publication”
 because the indexing or searchability was deficient, and an interested skilled
 artisan, using reasonable diligence, would have to skim through potentially hundreds
 of titles in the same year, with most containing unrelated subject matter). 
 

 Note that an oral presentation at a scientific meeting
 or a demonstration at a trade show may be prior art under 35 U.S.C.
 102(a)(1) ’s provision: “otherwise available to the public.” See
 MPEP
 § 2152.02(e) . “Trade shows are not unlike conferences - a
 trade show is directed to individuals interested in the commercial and developmental
 aspects of products. If one desires to examine certain new products on the market,
 attending a trade show involving identical or similar products is a good option.”
 GoPro, Inc. v. Contour IP Holding LLC , 908 F.3d 690, 694, 128
 USPQ2d 1447, 1451 (Fed. Cir. 2018). 
 

 

 
 2128.02 Date Publication Is Available as a Reference [R-10.2019]
 I. DATE OF ACCESSIBILITY CAN BE SHOWN THROUGH EVIDENCE OF ROUTINE BUSINESS
 PRACTICES Evidence showing routine business practices can be used to establish
 the date on which a publication became accessible to the public. Specific evidence
 showing when the specific document actually became available is not always necessary.
 Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 7 USPQ2d 1057 (Fed. Cir.), cert.
 denied, 988 U.S. 892 (1988) (Court held that evidence submitted by Intel
 regarding undated specification sheets showing how the company usually treated such
 specification sheets was enough to show that the sheets were accessible by the public
 before the critical date.); In re Hall, 781 F.2d 897, 228 USPQ 453
 (Fed. Cir. 1986) (Librarian’s affidavit establishing normal time frame and practice
 for indexing, cataloging and shelving doctoral theses established that the thesis in
 question would have been accessible by the public before the critical date.);
 In re Lister, 583 F.3d 1307, 1317, 92 USPQ2d 1225, 1231-32
 (Fed. Cir. 2009) (“The government urges us that it is appropriate in this case to
 presume that the manuscript information was added to the Westlaw and Dialog databases
 prior to the critical date because the critical date was more than a year after the
 certificate of registration was granted. However, absent any evidence pertaining to
 the general practices of the Copyright Office, Westlaw, and Dialog, or the typical
 time that elapses between copyright registration, inclusion in the Copyright Office’s
 automated catalog, and subsequent incorporation into one of the commercial databases,
 any presumption along those lines would be pure speculation."). 
 

 II. A JOURNAL ARTICLE OR OTHER PUBLICATION BECOMES AVAILABLE AS PRIOR ART ON DATE
 IT IS RECEIVED BY A MEMBER OF THE PUBLIC A publication disseminated by mail is not prior art until it is
 received by at least one member of the public. Thus, a magazine or technical journal
 is effective as of the date when the first person receives it, not the date it was
 mailed or sent to the publisher. In re Schlittler, 234 F.2d 882,
 110 USPQ 304 (CCPA 1956). 
 

 

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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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