MPEP § 2158 — MPEP § 2158
Current through: 2022-07-01

2158-AIA 35 U.S.C. 103 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2100 

 Section 2158 
 

 
 
 
 
 
 2158 AIA 35 U.S.C. 103 [R-07.2022]

 [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 § 2141 - MPEP § 2146 for
 information on pre-AIA
 35 U.S.C. 103 and AIA 35 U.S.C. 103 .] 

 AIA 35 U.S.C.
 103 sets forth the nonobviousness requirement for patentability.
 There are, however, some important changes from pre-AIA 35 U.S.C. 103 .
 

 The most significant difference between the
 AIA 35 U.S.C.
 103 and pre-AIA 35 U.S.C. 103(a) is that
 AIA 35 U.S.C.
 103 determines obviousness before the effective filing date of the
 claimed invention, rather than as of the time that the claimed invention was made. Under
 pre-AIA examination practice, the Office uses the effective filing date as a proxy for the
 invention date, unless there is evidence of record to establish an earlier date of
 invention. Thus, as a practical matter during examination, this distinction between the
 AIA 35 U.S.C.
 103 and pre-AIA 35 U.S.C. 103 will result in a
 difference in practice only when the case under examination is subject to pre-AIA 35 U.S.C. 103 
 , and there is evidence in the case concerning a date of invention prior to the effective
 filing date. Such evidence is ordinarily presented by way of an affidavit or declaration
 under 37 CFR
 1.131 .
 

 Next, the language of AIA 35 U.S.C.
 103 differs from that of pre-AIA 35 U.S.C. 103 in that
 AIA 35 U.S.C.
 103 requires consideration of “the differences between the claimed
 invention and the prior art,” while pre-AIA 35 U.S.C. 103 refers to “the
 differences between the subject matter sought to be patented and the prior art.” This
 difference in terminology does not indicate the need for any difference in approach to the
 question of obviousness. As pointed out by the Federal Circuit, “[t]he term ‘claims' has
 been used in patent legislation since the Patent Act of 1836 to define the invention that
 an applicant believes is patentable.” Hoechst-Roussel Pharms., Inc. v.
 Lehman, 109 F.3d 756, 758, 42 USPQ2d 1220, 1222 (Fed. Cir. 1997) (citing Act
 of July 4, 1836, ch. 357, § 6, 5 Stat. 117). Furthermore, in Graham v. John
 Deere, the second of the Supreme Court's factual inquiries (the “Graham
 factors”) is that the “differences between the prior art and the claims at issue are to be
 ascertained.” 383 U.S. 1, 17, 148 USPQ 459, 467. Thus, in interpreting 35 U.S.C. 103 as
 enacted in the 1952 Patent Act—language that remained unchanged until enactment of the
 AIA—the Court equated “the subject matter sought to be patented” with the claims.
 

 Further, AIA 35 U.S.C. 103 does not contain any
 provision similar to pre-AIA 35 U.S.C. 103(b) . Pre-AIA 35 U.S.C. 103(b) is narrowly
 drawn, applying only to nonobviousness of biotechnological inventions, and even then, only
 when specifically invoked by the patent applicant. Pre-AIA 35 U.S.C. 103(b) provides that
 under certain conditions, “a biotechnological process using or resulting in a composition
 of matter that is novel under section 102 and nonobvious under
 subsection [ 103(a) ] of this section shall be considered nonobvious.” In view of
 the case law since 1995, the need to invoke pre-AIA 35 U.S.C. 103(b) has been rare.
 As stated in MPEP § 2147 , in view of the Federal Circuit's decisions in
 In re Ochiai, 71 F.3d 1565, 37 USPQ2d 1127 (Fed. Cir. 1995) and
 In re Brouwer, 77 F.3d 422, 37 USPQ2d 1663 (Fed. Cir. 1996), the need
 to invoke pre-AIA 35
 U.S.C. 103(b) rarely arose. Those cases continue to retain their
 validity under the AIA.
 

 AIA 35 U.S.C. 103 also eliminates
 pre-AIA 35 U.S.C.
 103(c) , but corresponding provisions have been introduced in
 AIA 35
 U.S.C. 102(b)(2)(C) and 102(c) . Pre-AIA 35 U.S.C.
 103(c) applied if subject matter qualified as prior art only under
 pre-AIA 35 U.S.C.
 102(e) , (f) , and/or (g) , and only in the
 context of obviousness under pre-AIA 35 U.S.C. 103(a) . If subject
 matter developed by another person was commonly owned with the claimed invention, or if the
 subject matter was subject to an obligation of assignment to the same person, at the time
 the claimed invention was made, then pre-AIA 35 U.S.C. 103(a) did not
 preclude patentability. Furthermore, under pre-AIA 35 U.S.C. 103(c) , if a joint
 research agreement was in place on or before the date that the claimed invention was made,
 the claimed invention was made as a result of activities undertaken within the scope of the
 joint research agreement, and the application for patent disclosed or was amended to
 disclose the names of the parties to the joint research agreement, common ownership or an
 obligation to assign was deemed to exist. As discussed previously, AIA 35 U.S.C.
 102(b)(2)(C) and 102(c) expand on this concept. Under
 the AIA, the common ownership, obligation to assign, or joint research agreement must exist
 on or before the effective filing date of the claimed invention, rather than on or before
 the date the invention was made. If the provisions of AIA 35 U.S.C.
 102(b)(2)(C) are met, a disclosure is not prior art at all, whereas
 under pre-AIA 35 U.S.C.
 103(c) , certain prior art merely was defined as not precluding
 patentability. Finally, disclosures excepted as prior art under AIA 35 U.S.C.
 102(b)(2)(C) and 102(c) may not be applied in either an
 anticipation or an obviousness rejection, or as a secondary reference in a non-statutory
 double patenting rejection. In short, when an exception applies under the AIA, a reference
 may not be used for any purpose which requires prior art. However, the claims of such
 disclosures could be the basis for statutory double patenting or non-statutory double
 patenting rejections.
 

 Generally speaking, and with the exceptions noted herein,
 pre-AIA notions of obviousness continue to apply under the AIA. AIA 35 U.S.C.
 102(a) defines what is prior art both for purposes of novelty under
 AIA 35 U.S.C.
 102 as well as for purposes of obviousness under AIA 35 U.S.C.
 103 . See Hazeltine Res., Inc. v. Brenner, 382 U.S.
 252, 256, 147 USPQ 429, 430 (1965) (a previously filed patent application to another
 pending in the Office, but not patented or published, at the time an application is filed
 constitutes part of the “prior art” within the meaning of 35 U.S.C. 103 ). Thus,
 if a document qualifies as prior art under AIA 35 U.S.C. 102(a)(1) or
 (a)(2) , and is not subject to an exception under AIA 35 U.S.C.
 102(b) , it may be applied for what it describes or teaches to those
 skilled in the art in a rejection under AIA 35 U.S.C. 103 . This is in
 accordance with pre-AIA case law indicating that in making determinations under
 35 U.S.C.
 103 , “it must be known whether a patent or publication is in the
 prior art under 35 U.S.C.
 102 .” Panduit Corp. v. Dennison Mfg. Co., 810 F.2d
 1561, 1568, 1 USPQ2d 1593, 1597 (Fed. Cir. 1987). However, while a disclosure must enable
 those skilled in the art to make the invention in order to anticipate under
 35 U.S.C.
 102 , a non-enabling disclosure is prior art for all it teaches for
 purposes of determining obviousness under 35 U.S.C. 103 . Symbol Techs.
 Inc. v. Opticon Inc., 935 F.2d 1569, 1578, 19 USPQ2d 1241, 1247 (Fed. Cir.
 1991); Beckman Instruments v. LKB Produkter AB, 892 F.2d 1547, 1551, 13
 USPQ2d 1301, 1304 (Fed. Cir. 1989) (“Even if a reference discloses an inoperative device,
 it is prior art for all that it teaches.”). Office personnel should continue to follow
 guidance for formulating an appropriate rationale to support any conclusion of obviousness.
 See MPEP §
 2141 et seq. and the guidance documents available at https://www.uspto.gov/PatentExaminationGuidance .
 

 
 2158.01 Form Paragraphs for Use in Rejections Under AIA
 35 U.S.C. 103 [R-07.2022]
 

 The following form paragraphs should be used in making
 the appropriate rejections under 35 U.S.C. 103 .
 

 ¶ 7.06 Notice re prior art available under both pre-AIA and
 AIA
 

 In the event the determination of the status of the application as subject
 to AIA 35 U.S.C.
 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 
 and 103 )
 is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA) for
 the rejection will not be considered a new ground of rejection if the prior art relied upon,
 and the rationale supporting the rejection, would be the same under either status.
 

 Examiner Note:
 
 1. This form paragraph must be used in all Office
 Actions when a prior art rejection is made in an application with an actual filing
 date on or after March 16, 2013, that claims priority to, or the benefit of, an
 application filed before March 16, 2013.
 

 2. This form paragraph should only be used ONCE in an
 Office action. 
 
 
 

 ¶ 7.20.aia Statement of Statutory Basis, 35 U.S.C. 103

 The following is a quotation of 35 U.S.C. 103 
 which forms the basis for all obviousness rejections set forth in this Office
 action:
 

 
 A patent for a claimed invention may not be obtained,
 notwithstanding that the claimed invention is not identically disclosed as set forth in
 section 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. Patentability shall not be negated by the manner
 in which the invention was made.
 

 
 Examiner Note:
 
 1. This form paragraph should only be used in an
 application filed on or after March 16, 2013, where the claims are being examined under
 35
 U.S.C. 102 / 103 as amended by the Leahy-Smith
 America Invents Act. This form paragraph must be preceded by form paragraph
 7.03.aia .
 

 2. The statute is not to be cited in
 all Office actions. It is only required in first actions on
 the merits employing 35 U.S.C. 103 and final rejections.
 Where the statute is being applied, but is not cited in an action on the merits, use
 paragraph 7.103 .
 

 3. This form paragraph should only be used ONCE in a
 given Office action.
 

 4. This form paragraph must precede any of form
 paragraphs 7.20.01.aia , 7.20.02.aia ,
 7.20.04.aia , 7.20.05.aia ,
 7.21.aia ,
 7.21.01.aia , 7.21.02.aia , and
 7.22.aia 
 when this form paragraph is used to cite the statute in first actions and final
 rejections.
 
 
 

 ¶ 7.20.01.aia 103 Rejection Using Prior Art Excepted Under 102(b)(2)(C)
 Because Reference is Prior Art Under 102(a)(1)
 

 Applicant has provided a submission in this file that the claimed
 invention and the subject matter disclosed in the prior art reference were owned by, or
 subject to an obligation of assignment to, the same entity as [1] not later than
 the effective filing date of the claimed invention, or the subject matter disclosed in the
 prior art reference was developed and the claimed invention was made by, or on behalf of one
 or more parties to a joint research agreement not later than the effective filing date of the
 claimed invention. However, although subject matter disclosed in the reference
 [2] has been excepted as prior art under 35 U.S.C.
 102(a)(2) , it is still applicable as prior art under 35 U.S.C.
 102(a)(1) that cannot be excepted under 35 U.S.C.
 102(b)(2)(C) .
 

 Applicant may overcome this rejection under 35 U.S.C.
 102(a)(1) by a showing under 37 CFR 1.130(a) that the subject matter
 disclosed in the reference was obtained directly or indirectly from the inventor or a joint
 inventor of this application, and is therefore, not prior art as set forth in
 35 U.S.C.
 102(b)(1)(A) . Alternatively, applicant may rely on the exception under
 35 U.S.C.
 102(b)(1)(B) by providing evidence of a prior public disclosure via an
 affidavit or declaration under 37 CFR 1.130(b) .
 

 Examiner Note:
 
 1. This form paragraph should only be used in an application filed
 on or after March 16, 2013, where the claims are being examined under 35 U.S.C.
 102 / 103 as amended by the Leahy-Smith
 America Invents Act. This form paragraph must be preceded by form paragraph
 7.03.aia .
 
 

 2. This form paragraph must be included following form paragraph
 7.20.aia 
 or 7.15.aia 
 where the 103 rejection is based on subject matter disclosed in a reference
 that has since been excepted under 102(b)(2)(C) , but still qualifies as
 prior art under 35 U.S.C. 102(a)(1) .
 

 3. In bracket 1, identify the common assignee.

 4. In bracket 2, identify the reference which discloses the subject
 matter that has been excepted.
 
 
 

 ¶ 7.20.02.aia Joint Inventors, Common Ownership Presumed

 This application currently names joint inventors. In
 considering patentability of the claims the examiner presumes that the subject matter of the
 various claims was commonly owned at the time any inventions covered therein were effectively
 filed absent any evidence to the contrary. Applicant is advised of the obligation under
 37 CFR
 1.56 to point out the inventor and effective filing dates of each claim
 that was not commonly owned at the time a later invention was effectively filed in order for
 the examiner to consider the applicability of 35 U.S.C.
 102(b)(2)(C) for any potential 35 U.S.C.
 102(a)(2) prior art against the later invention.
 

 Examiner Note:
 
 1. This form paragraph should only be used in an
 application filed on or after March 16, 2013, where the claims are being examined under
 35
 U.S.C. 102 / 103 as amended by the Leahy-Smith
 America Invents Act. This form paragraph must be preceded by form paragraph
 7.03.aia .
 

 2. This paragraph must be used
 in all applications with joint inventors (unless the claims are
 clearly restricted to only one claimed invention, e.g., only a single claim is presented
 in the application).
 
 
 

 ¶ 7.20.04.aia 102 or 103 Rejection Using Prior Art Under 102(a)(2) That Is
 Attempted To Be Excepted Under 35 U.S.C. 102(b)(2)(C) Using the Common Ownership or Assignment
 Provision
 

 Applicant has attempted to show that subject matter disclosed in the
 reference [1] is excepted as prior art under 35 U.S.C.
 102(b)(2)(C) by showing that the claimed invention was owned by, or
 subject to an obligation of assignment to, the same entity as [2] at the time the
 claimed invention was effectively filed. However, applicant has failed to provide a statement
 that the claimed invention and the subject matter disclosed were owned by, or subject to an
 obligation of assignment to, the same person no later than the effective filing date of the
 claimed invention in a conspicuous manner, and therefore, the subject matter disclosed in the
 reference is not excepted as prior art under 35 U.S.C. 102(a)(2) . Applicant must file
 the required submission in order to properly except the subject matter under 35 U.S.C.
 102(b)(2)(C) . See MPEP § 2154.02(c) .
 

 In addition, applicant may rely upon the exception under
 35 U.S.C.
 102(b)(2)(A) to overcome the rejection under 35 U.S.C.
 102(a)(2) either by a showing under 37 CFR 1.130(a) that the subject matter
 disclosed in the reference was obtained directly or indirectly from the inventor or a joint
 inventor of this application, and is therefore not prior art under 35 U.S.C.
 102(a)(2) . Alternatively, applicant may rely on the exception under
 35 U.S.C.
 102(b)(2)(B) by providing evidence of a prior public disclosure via an
 affidavit or declaration under 37 CFR 1.130(b) . 
 

 Examiner Note:
 
 1. This form paragraph should only be used in an application filed
 on or after March 16, 2013, where the claims are being examined under 35 U.S.C.
 102 / 103 as amended by the Leahy-Smith
 America Invents Act. This form paragraph must be preceded by form
 paragraph 
 7.03.aia . 
 

 2. This form paragraph should be included in all actions containing
 rejections using 35 U.S.C. 102(a)(2) prior art,
 whether anticipation or obviousness rejections, where an attempt has been made to except
 subject matter disclosed in the reference under 35 U.S.C.
 102(b)(2)(C) , but where the applicant has not provided a proper
 statement indicating common ownership or assignment not later than the effective
 filing date of the claimed invention .
 

 3. In bracket 1, identify the commonly owned applied art (e.g.,
 patent or co-pending application).
 

 4. In bracket 2, identify the common assignee.
 
 

 ¶ 7.20.05.aia 102 or 103 Rejection Using Prior Art Under 102(a)(2) That Is
 Attempted To Be Excepted Under 35 U.S.C. 102(b)(2)(C) Using the Joint Research Agreement
 Provisions of 35 U.S.C. 102(c)
 

 Applicant has attempted to show that subject matter disclosed in the
 reference [1] is excepted as prior art under 35 U.S.C.
 102(b)(2)(C) by showing that the claimed invention was subject to a
 joint research agreement in effect not later than the effective filing date of the claimed
 invention. However, applicant has failed to [2] . Applicant must file the missing
 requirements in order to properly except the subject matter disclosed in the reference under
 35 U.S.C.
 102(b)(2)(C) . See 37 CFR 1.71(g)(1) and 1.104(c)(4)(ii) .
 

 In addition, applicant may overcome the rejection either by a showing
 under 37 CFR
 1.130(a) that the subject matter disclosed in the reference was
 obtained, either directly or indirectly from the inventor or a joint inventor of this
 application, and is therefore, not prior art under 35 U.S.C.
 102(a)(2) . Alternatively, applicant may rely on the exception under
 35 U.S.C.
 102(b)(2)(B) by providing evidence of a prior public disclosure via an
 affidavit or declaration under 37 CFR 1.130(b) .
 

 Examiner Note:
 
 1. This form paragraph should only be used in an application filed
 on or after March 16, 2013, where the claims are being examined under 35 U.S.C.
 102 / 103 as amended by the Leahy-Smith
 America Invents Act. This form paragraph must be preceded by form paragraph
 7.03.aia .
 
 

 2. This form paragraph must be included in all actions containing
 obviousness or anticipation rejections where an attempt has been made to except subject
 matter disclosed in the 35 U.S.C. 102(a)(2) prior art
 reference under 35 U.S.C. 102(b)(2)(C) using the
 joint research agreement provisions but the attempt is ineffective.
 

 3. In bracket 1, identify the reference which discloses subject
 matter that is sought to be excepted via 35 U.S.C. 102(b)(2)(C) .
 

 4. In bracket 2, identify the reason(s) why the attempt is
 ineffective. The reason(s) could be noncompliance with the statutory requirements of
 35 U.S.C.
 102(b)(2)(C) or rule requirements relating to the CREATE Act, such
 as failure to submit the required statement or failure to amend the specification to
 include the names of the parties to the joint research agreement. See 37 CFR 1.71(g)(1) 
 and 1.104(c)(4)(ii) .
 
 
 

 ¶ 7.21.aia Rejection, 35 U.S.C. 103

 Claim [1] is/are rejected under 35 U.S.C. 103 
 as being unpatentable over [2] . 
 

 Examiner Note:
 
 1. This form paragraph should only be used in an
 application filed on or after March 16, 2013, where the claims are being examined under
 35
 U.S.C. 102 / 103 as amended by the Leahy-Smith
 America Invents Act. This form paragraph must be preceded by form paragraph
 7.03.aia .
 
 

 2. This form paragraph must be preceded by either form
 paragraph 7.20.aia or form paragraph 7.103 .
 

 3. An explanation of the rejection must follow this form paragraph.
 See MPEP §
 2144 .
 

 4. If this rejection is a provisional 35 U.S.C.
 103 rejection based upon a copending application that would
 constitute prior art under 35 U.S.C. 102(a)(2) if patented or
 published, use form paragraph 7.21.01.aia instead of this paragraph. 
 

 5. In bracket 1, insert the claim numbers which are
 under rejection.
 

 6. In bracket 2, insert the prior art relied
 upon.
 

 7. For applications claiming priority to, or the benefit
 of, an application filed before March 16, 2013, this form paragraph must be preceded by
 form paragraph 7.06 .
 
 
 

 ¶ 7.21.01.aia Provisional Rejection, 35 U.S.C. 103, Common Assignee, Common
 Applicant, or at Least One Common (Joint) Inventor 
 

 Claim [1] is/are provisionally rejected under
 35 U.S.C.
 103 as being obvious over copending Application No. [2]
 which has a common [3] with the instant application. The copending
 application would constitute prior art under 35 U.S.C. 102(a)(2) if published or
 patented. This provisional rejection under 35 U.S.C. 103 is based upon a presumption
 of future publication or patenting of the copending application. [4] 

 This provisional rejection might be overcome by: (1) a showing under
 37 CFR
 1.130(a) that the subject matter disclosed in the copending application
 was obtained directly or indirectly from the inventor or a joint inventor of this application
 and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A) ; (2) a showing
 under 37 CFR
 1.130(b) of a prior public disclosure under 35 U.S.C.
 102(b)(2)(B) ; or (3) a statement pursuant to 35 U.S.C.
 102(b)(2)(C) establishing that, not later than the effective filing date
 of the claimed invention, the subject matter disclosed in the copending application and the
 claimed invention either were owned by the same person or subject to an obligation of
 assignment to the same person or subject to a joint research agreement. See generally
 MPEP §
 717.02 .
 

 Examiner Note:
 
 1. This form paragraph should only be used in an application filed
 on or after March 16, 2013, where the claims are being examined under 35 U.S.C.
 102 / 103 as amended by the Leahy-Smith
 America Invents Act. This form paragraph must be preceded by form paragraph
 7.03.aia .
 
 

 2. This form paragraph is used to provisionally reject claims over
 a copending application that discloses the claimed invention and would constitute prior
 art under 35
 U.S.C. 102(a)(2) if published under 35 U.S.C. 122 or
 patented. The copending application must have either a common assignee, common applicant
 ( 35 U.S.C.
 118 ) or at least one common (joint) inventor. 
 

 3. If the claimed invention is fully disclosed in the copending
 application, use form paragraph 7.15.01.aia . 
 

 4. In bracket 1, insert the claim number(s) which is/are under
 rejection.
 

 5. In bracket 2, insert the application number.

 6. In bracket 3, insert --assignee--, --applicant--, or --joint
 inventor--. 
 

 7. In bracket 4, insert an explanation of obviousness. See
 MPEP §
 2144 .
 

 8. If the claimed invention is not patentably distinct from the
 invention claimed in the copending application, a provisional nonstatutory double
 patenting rejection should additionally be made using form paragraphs
 8.33 and
 8.37 .
 
 
 

 ¶ 7.21.02.aia Rejection, 35 U.S.C. 103, Common Assignee, Common Applicant,
 or at Least One Common (Joint) Inventor
 

 Claim [1] is/are rejected under 35 U.S.C. 103 
 as being obvious over [2] .
 

 The applied reference has a common [3] with the instant
 application. Based upon the earlier effectively filed date of the reference, it constitutes
 prior art under 35
 U.S.C. 102(a)(2) . [4] 

 This rejection under 35 U.S.C. 103 might be overcome by: (1) a
 showing under 37 CFR
 1.130(a) that the subject matter disclosed in the reference was obtained
 directly or indirectly from the inventor or a joint inventor of this application and is thus
 not prior art in accordance with 35 U.S.C. 102(b)(2)(A) ; (2) a showing
 under 37 CFR
 1.130(b) of a prior public disclosure under 35 U.S.C.
 102(b)(2)(B) ; or (3) a statement pursuant to 35 U.S.C.
 102(b)(2)(C) establishing that, not later than the effective filing date
 of the claimed invention, the subject matter disclosed and the claimed invention were either
 owned by the same person or subject to an obligation of assignment to the same person or
 subject to a joint research agreement. See generally MPEP § 717.02 . 
 

 Examiner Note:
 
 1. This form paragraph should only be used in an application filed
 on or after March 16, 2013, where the claims are being examined under 35 U.S.C.
 102 / 103 as amended by the Leahy-Smith
 America Invents Act. This form paragraph must be preceded by form paragraph
 7.03.aia .
 

 2. This paragraph is used to reject over a reference (patent or
 published application) that discloses the claimed invention, and that ONLY qualifies as
 prior art under 35 U.S.C. 102(a)(2) . If the
 reference qualifies as prior art under 35 U.S.C. 102(a)(1) , then this form
 paragraph should not be used (form paragraph 7.21.aia should be used instead). The
 reference must have either a common assignee, a common applicant ( 35 U.S.C. 118 
 ), or at least one common (joint) inventor. This form paragraph should not 
 be used in applications when the reference is not prior art in view of the
 35 U.S.C.
 102(b)(2)(C) exception.
 

 3. In bracket 3, insert --assignee--, --applicant--, or --joint
 inventor--.
 

 4. In bracket 4, insert an explanation of obviousness. See
 MPEP §
 2144 .
 
 
 

 ¶ 7.22.aia Rejection, 35 U.S.C. 103, Further in View Of

 Claim [1] is/are rejected under 35 U.S.C. 103 
 as being unpatentable over [2] as applied to claim [3] above, and
 further in view of [4] . 
 

 Examiner Note:
 
 1. This form paragraph should only be used in an
 application filed on or after March 16, 2013, where the claims are being examined under
 35
 U.S.C. 102 / 103 as amended by the Leahy-Smith
 America Invents Act. This form paragraph must be preceded by form paragraph
 7.03.aia .
 
 

 2. This form paragraph must be preceded by form
 paragraph 7.21.aia .
 

 3. An explanation of the rejection must follow this form paragraph.
 See MPEP §
 2144 .
 
 
 

 ¶ 7.23.aia Test for Obviousness

 The factual inquiries for establishing a background for determining
 obviousness under 35 U.S.C. 103 are summarized as follows:
 

 
 1. Determining the scope and contents of the prior art.

 2. Ascertaining the differences between the prior art and the claims
 at issue.
 

 3. Resolving the level of ordinary skill in the pertinent art.

 4. Considering objective evidence present in the application
 indicating obviousness or nonobviousness.
 

 
 Examiner Note:
 
 1. This form paragraph should only be used in an application filed
 on or after March 16, 2013, where the claims are being examined under 35 U.S.C.
 102 / 103 as amended by the Leahy-Smith
 America Invents Act. This form paragraph must be preceded by form paragraph
 7.03.aia .
 
 

 2. This form paragraph may be used, if appropriate, in response to
 an argument regarding the applicability of the factors for determining obviousness.
 
 
 

 ¶ 7.27.aia Rejection, 35 U.S.C. 102 or 103

 Claim(s) [1] is/are rejected under 35 U.S.C.
 102 ( [2] ) as anticipated by or, in the alternative, under
 35 U.S.C.
 103 as obvious over [3] . 
 

 Examiner Note:
 
 1. This form paragraph should only be used in an
 application filed on or after March 16, 2013, where the claims are being examined under
 35
 U.S.C. 102 / 103 as amended by the Leahy-Smith
 America Invents Act. This form paragraph must be preceded by form paragraph
 7.03.aia .
 

 2. This form paragraph is NOT intended to be commonly
 used as a substitute for a rejection under 35 U.S.C.
 102 . In other words, a single rejection under either
 35
 U.S.C. 102 or 35 U.S.C. 103 should be made
 whenever possible. Examples of circumstances where this paragraph may be used are as
 follows: 
 When the interpretation of the claim(s) is or may
 be in dispute, i.e., given one interpretation, a rejection under 35 U.S.C.
 102 is appropriate and given another interpretation, a
 rejection under 35 U.S.C. 103 is appropriate. See
 MPEP §§
 2111 - 2116.01 for guidelines on claim
 interpretation.
 

 When the reference discloses all the limitations
 of a claim except a property or function, and the examiner cannot determine whether
 or not the reference inherently possesses properties which anticipate or render
 obvious the claimed invention but has basis for shifting the burden of proof to
 applicant as in In re Fitzgerald , 619 F.2d 67, 205 USPQ 594 (CCPA
 1980). See MPEP
 §§ 2112 - 2112.02 .
 

 When the reference teaches a small genus which
 places a claimed species in the possession of the public as in In re
 Schaumann , 572 F.2d 312, 197 USPQ 5 (CCPA 1978), and the species would
 have been obvious even if the genus were not sufficiently small to justify a
 rejection under 35 U.S.C. 102 . See
 MPEP §§
 2131.02 and 2144.08 for more information on
 anticipation and obviousness of species by a disclosure of a genus.
 

 When the reference teaches a product that appears
 to be the same as, or an obvious variant of, the product set forth in a
 product-by-process claim although produced by a different process. See In re
 Marosi , 710 F.2d 799, 218 USPQ 289 (Fed. Cir. 1983) and In re
 Thorpe , 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). See also
 MPEP §
 2113 .
 

 When the reference teaches all claim limitations except a
 means plus function limitation and the examiner is not certain whether the element
 disclosed in the reference is an equivalent of the claimed element and therefore
 anticipatory, or whether the prior art element is an obvious variant of the claimed
 element. See MPEP §§
 2183 - 2184 .
 

 When the ranges disclosed in the reference and
 claimed by applicant overlap in scope but the reference does not contain a specific
 example within the claimed range. See the concurring opinion in Ex parte
 Lee , 31 USPQ2d 1105 (Bd. Pat. App. & Inter. 1993). See
 MPEP §
 2131.03 .
 
 
 

 3. If the interpretation of the claim(s) renders the
 claim(s) indefinite, a rejection under 35 U.S.C.
 112(b) may be appropriate.
 

 4. In bracket 1, insert the claim number(s) which is/are
 under rejection.
 

 5. In bracket 2, insert the appropriate paragraph letter(s) in
 parenthesis.
 

 6. In bracket 3, insert the prior art reference relied upon
 for the rejection.
 

 7. A full explanation must follow this form paragraph, i.e., the
 examiner must provide an explanation of how the claims at issue could be considered to
 be anticipated, as well as how they could be considered to be obvious.
 

 8. This form paragraph must be preceded by
 7.07.aia
 and 7.08.aia and/or 7.12.aia or by form paragraph
 7.103 .
 

 9. For applications claiming priority to, or the benefit of, an
 application filed before March 16, 2013, this form paragraph must be preceded by form
 paragraph 7.06 .
 
 
 

 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 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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