MPEP § 2154 — MPEP § 2154
Current through: 2022-07-01

2154-Provisions Pertaining to Subject Matter in a U.S. Patent or Application Effectively Filed Before the Effective Filing Date
 of the Claimed Invention
 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2100 

 Section 2154 
 

 
 
 
 
 
 2154 Provisions Pertaining to Subject Matter in a U.S.
 Patent or Application Effectively Filed Before the Effective Filing Date of the Claimed
 Invention [R-11.2013]
 

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

 AIA 35 U.S.C.
 102(a)(2) sets forth three types of U.S. patent documents that are
 available as prior art as of the date they were effectively filed with respect to the
 subject matter relied upon in the document if they name another inventor. See
 MPEP §§
 2151 , 2154.01 , and 2154.01(a) 
 for a discussion of the types of patent documents that qualify as prior art under
 35 U.S.C.
 102(a)(2) . See MPEP § 2154.02 et seq. for prior art exceptions under 35 U.S.C.
 102(b)(2) to AIA 35 U.S.C. 102(a)(2) .
 

 
 2154.01 Prior Art Under AIA 35 U.S.C. 102(a)(2) “U.S.
 Patent Documents” [R-11.2013]
 

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

 AIA 35
 U.S.C. 102(a)(2) sets forth three types of patent documents that
 are available as prior art as of the date they were effectively filed with respect to
 the subject matter relied upon in the document if they name another inventor: (1) U.S.
 patents; (2) U.S. patent application publications; and (3) certain WIPO published
 applications. These documents are referred to collectively as “U.S. patent documents.”
 These documents may have different prior art effects under pre-AIA 35 U.S.C.
 102(e) than under AIA 35 U.S.C. 102(a)(2) . Note that a
 U.S. patent document may also be prior art under AIA 35 U.S.C.
 102(a)(1) if its issue or publication date is before the effective
 filing date of the claimed invention in question.
 

 If the issue date of the U.S. patent or publication date
 of the U.S. patent application publication or WIPO published application is not before
 the effective filing date of the claimed invention, it may be applicable as prior art
 under AIA 35
 U.S.C. 102(a)(2) if it was “effectively filed” before the
 effective filing date of the claimed invention in question with respect to the subject
 matter relied upon to reject the claim. MPEP §
 2152.01 discusses the “effective filing date” of a claimed
 invention. AIA 35 U.S.C. 102(d) sets forth the criteria to determine when
 subject matter described in a U.S. patent document was “effectively filed” for purposes
 of AIA 35
 U.S.C. 102(a)(2) .
 

 
 2154.01(a) WIPO Published Applications [R-01.2024]

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

 The WIPO publication of a PCT international application
 that designates the United States is an application for patent deemed published under
 35 U.S.C.
 122(b) for purposes of AIA 35 U.S.C.
 102(a)(2) under 35 U.S.C. 374 . Thus, under the
 AIA, WIPO publications of PCT applications that designate the United States are
 treated as U.S. patent application publications for prior art purposes, regardless of
 the international filing date, whether they are published in English, or whether the
 PCT international application enters the national stage in the United States.
 Accordingly, a U.S. patent, a U.S. patent application publication, or a WIPO
 published application that names another inventor and was effectively filed before
 the effective filing date of the claimed invention, is prior art under
 AIA 35
 U.S.C. 102(a)(2) , unless an exception under AIA 35 U.S.C.
 102(b)(2) applies. This differs from the treatment of a WIPO
 published application under pre-AIA 35 U.S.C. 102(e) , where a
 WIPO published application is treated as a U.S. patent application publication only
 if the PCT application was filed on or after November 29, 2000, designated the United
 States, and is published under PCT Article 21(2) in the English
 language. See MPEP §
 2136.03 , subsection II. 
 

 

 
 2154.01(b) Determining When Subject Matter Was
 Effectively Filed Under AIA 35 U.S.C. 102(d) [R-01.2024]
 

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

 AIA 35
 U.S.C. 102(d) provides that a U.S. patent, U.S. patent
 application publication, or WIPO published application (“U.S. patent document”) is
 prior art under AIA 35 U.S.C. 102(a)(2) with
 respect to any subject matter described in the patent or published application as of
 either its actual filing date ( AIA 35 U.S.C. 102(d)(1) ), or the
 filing date of a prior application to which there is a priority or benefit claim
 ( AIA
 35 U.S.C. 102(d)(2) ). For prior art determinations under
 AIA 35
 U.S.C. 102 , a reference patent document need only meet the
 “ministerial requirements” of 35 U.S.C. 119 and
 120 , and the provisional or other earlier application(s) to
 which the reference patent document claims a right of priority or benefit must
 “describe[] the subject matter” relied upon in the reference patent document as prior
 art. Penumbra, Inc. v. RapidPulse, Inc., 2023 USPQ2d 292,
 IPR2021-01466, Paper 34 (March 10, 2023) (precedential as to section II.E.3). The
 “ministerial requirements” of 35 U.S.C. 119 and
 120 are: (1) containing a priority or benefit claim to the
 prior-filed application; (2) being filed within the applicable filing period
 requirement (copending with or within twelve months of the earlier filing, as
 applicable); and (3) having a common inventor or joint inventor or being by the same
 applicant. See MPEP § 211 et. seq. 

 The AIA draws a distinction between actually being
 entitled to priority to, or the benefit of, a prior-filed application according to
 the definition of “effective filing date” of a claimed invention in AIA 35 U.S.C.
 100(i)(1)(B) , and merely being entitled to claim priority to,
 or the benefit of, a prior-filed application according to the use of “effectively
 filed” in AIA 35 U.S.C. 102(d) . As a result of this distinction, the
 question of whether a patent or published application is actually entitled to
 priority or benefit with respect to any of its claims is not at issue in determining
 the date the patent or published application was “effectively filed” for prior art
 purposes. Thus, there is no need to evaluate whether any claim of a U.S. patent
 document is actually entitled to priority or benefit under 35 U.S.C. 119 ,
 120 , 121 , 365 , or
 386 when applying such a document as prior art. “[T]he
 requirement that one of the claims in the patent [document] . . . be supported by the
 written description of the provisional application in compliance with
 pre-AIA 35
 U.S.C. 112 , first paragraph (or AIA 35 U.S.C. §
 112(a) ) is not applicable when examining an application subject
 to the first inventor to file provisions of the AIA.” Penumbra, 
 2023 USPQ2d at 15 (emphasis added) (quoting Memorandum re: Critical
 Reference Date Under pre-AIA 35 U.S.C. § 102(e) (April 5, 2018)). In
 other words, the requirement stated in Dynamic Drinkware, LLC, v. National
 Graphics, Inc., 800 F.3d 1375, 116 USPQ2d 1045 (Fed. Cir. 2015) does not
 apply to AIA 35 U.S.C. 102(d) . See MPEP § 2136.03 for
 the reference date under pre-AIA 35 U.S.C. 102(e) of U.S.
 patents, U.S. application publications, and international application publications
 entitled to the benefit of the filing date of prior application under
 35 U.S.C.
 119(e) , 120 , 121 , or
 365(c) .
 

 AIA 35
 U.S.C. 102(d) requires that a prior-filed application to which
 a priority or benefit claim is made must describe the subject matter from the U.S.
 patent document relied upon in a rejection. However, AIA 35 U.S.C.
 102(d) does not require that this description meet the
 enablement requirements of 35 U.S.C. 112(a) . As discussed
 previously with respect to AIA 35 U.S.C. 102(a)(1) , the
 Office does not view the AIA as changing the extent to which a claimed invention must
 be described for a prior art document to anticipate the claimed invention under
 AIA 35
 U.S.C. 102 .
 

 The AIA also eliminates the so-called
 Hilmer doctrine. Under the Hilmer doctrine,
 pre-AIA 35
 U.S.C. 102(e) limited the effective filing date for U.S.
 patents (and published applications) as prior art to their earliest U.S. filing date.
 In re Hilmer, 359 F.2d 859, 149 USPQ 480 (CCPA 1966). In
 contrast, AIA 35 U.S.C. 102(d) provides that if the U.S. patent document
 claims priority to one or more prior-filed foreign or international applications
 under 35 U.S.C.
 119 or 365 , the patent or published
 application was effectively filed on the filing date of the earliest such application
 that describes the subject matter. Therefore, if the subject matter relied upon is
 described in the application to which there is a priority or benefit claim, the U.S.
 patent document is effective as prior art as of the filing date of the earliest such
 application, regardless of where filed. When examining an application to which the
 AIA changes in 35 U.S.C. 102 and
 103 do not apply, Office personnel will continue to apply the
 Hilmer doctrine, and foreign priority dates may not be used in
 determining pre-AIA
 35 U.S.C. 102(e) prior art dates. Note that the international
 filing date of a published PCT application may be the pre-AIA 35 U.S.C.
 102(e) prior art date under pre-AIA law under certain
 circumstances. See MPEP § 2136 .
 

 

 
 2154.01(c) Requirement Of “Names Another
 Inventor” [R-11.2013]
 

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

 To qualify as prior art under AIA 35 U.S.C.
 102(a)(2) , the prior art U.S. patent, U.S. patent application
 publication, or WIPO published application (“U.S. patent document”) must “name[ ]
 another inventor.” This means that if there is any difference in inventive entity
 between the prior art U.S. patent document and the application under examination or
 patent under reexamination, the U.S. patent document satisfies the “names another
 inventor” requirement of AIA 35 U.S.C. 102(a)(2) . Thus, in
 the case of joint inventors, only one joint inventor needs to be different for the
 inventive entities to be different. Even if there are one or more joint inventors in
 common in a U.S. patent document and the later-filed application under examination or
 patent under reexamination, the U.S. patent document qualifies as prior art under
 AIA 35
 U.S.C. 102(a)(2) unless an exception in AIA 35 U.S.C.
 102(b)(2) is applicable.
 

 

 
 2154.01(d) Provisional Rejections Under 35 U.S.C.
 102(a)(2); Reference Is a Copending U.S. Patent Application [R-01.2024]
 

 If an earlier filed, copending, and unpublished U.S. patent
 application discloses subject matter which would anticipate the claims in a later
 filed pending U.S. application which has a different inventive entity, the examiner
 should determine whether a provisional rejection under 35 U.S.C.
 102(a)(2) of the later filed application can be made. In
 addition, a provisional rejection under 35 U.S.C. 102(a)(2) may be made,
 in the circumstances described below, if the earlier filed, pending application has
 been published as redacted ( 37 CFR 1.217 ) and the subject
 matter relied upon in the rejection is not supported in the redacted publication of
 the patent application.
 

 I. COPENDING U.S. APPLICATIONS HAVING AT LEAST ONE COMMON (JOINT) INVENTOR OR
 COMMON APPLICANT OR ARE COMMONLY ASSIGNED If a first application has (1) at least one common (joint)
 inventor or common applicant with a second application or the applications are
 commonly assigned, and (2) the first application, upon publication or issuance,
 would qualify as prior art under 35 U.S.C. 102(a)(2) to the
 second application, then a provisional anticipation or obviousness rejection of
 the second application may be made on the basis of the first application. Since
 the first application is not published or issued at the time of the rejection, the
 rejection must be provisionally made under 35 U.S.C.
 102(a)(2) or 103 .
 

 A provisional rejection based on 35 U.S.C.
 102(a)(2) prior art can be overcome in the same manner that
 a 35
 U.S.C. 102(a)(2) rejection can be overcome. See
 MPEP § 2152.06 . The provisional rejection
 can also be overcome by abandoning the applications and
 filing a new application containing the subject matter of both.
 

 Form paragraph 7.15.01.aia should be used when making a
 provisional rejection under 35 U.S.C. 102(a)(2) .
 
 

 II. COPENDING APPLICATIONS HAVING NO COMMON (JOINT) INVENTOR, APPLICANT, OR
 ASSIGNEE If there is no common assignee, common applicant, or common
 (joint) inventor and the application was not published pursuant to
 35 U.S.C.
 122(b) , the confidential status of applications under
 35 U.S.C.
 122(a) must be maintained and no rejection can be made
 relying on the first (earlier filed), unpublished application, or subject matter
 not supported in a redacted application publication, as prior art under
 35
 U.S.C. 102(a)(2) . For applications subject to
 pre-AIA 35
 U.S.C. 102(g) , if the filing dates of the applications are
 within 6 months of each other (3 months for simple subject matter) then
 interference may be proper. See MPEP Chapter 2300 . If the first
 application will not be published pursuant to 35 U.S.C. 122(b) , it must be
 allowed to issue once all the statutory requirements are met. After the patent has
 issued, it may be used as a reference in a rejection under 35 U.S.C.
 102(a)(2) in the still pending application as appropriate.
 See MPEP §§ 2120.01 and 2154 .
 

 

 

 
 2154.02 Prior Art Exceptions Under 35 U.S.C. 102(b)(2) to
 AIA 35 U.S.C. 102(a)(2) [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 §
 2131 - MPEP § 2138 for examination of
 applications subject to pre-AIA 35 U.S.C. 102 .] 

 See MPEP § 2154.02(a) for prior art
 exceptions to 35 U.S.C. 102(a)(2) under
 AIA 35
 U.S.C. 102(b)(2)(A) based on the inventor-originated disclosure
 exception. See MPEP § 2154.02(b) for prior art
 exceptions to AIA 35 U.S.C. 102(a)(2) based on
 inventor-originated prior public disclosures as provided for in AIA 35 U.S.C.
 102(b)(2)(B) . See MPEP §
 2154.02(c) for the prior art exception under AIA 35 U.S.C.
 102(b)(2)(C) to AIA 35 U.S.C. 102(a)(2) based on
 common ownership or obligation of assignment.
 

 
 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) [R-01.2024]
 

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

 AIA 35
 U.S.C. 102(b)(2)(A) provides an exception to the prior art
 provisions of AIA 35 U.S.C. 102(a)(2) . This
 exception limits the use of an inventor's or at least one joint inventor’s own work
 as prior art, when the inventor's or at least one joint inventor’s own work is
 disclosed in a U.S. patent, U.S. patent application publication, or WIPO published
 application (“U.S. patent document”) by another who obtained the subject matter
 directly or indirectly from the inventor or joint inventor. The AIA 35 U.S.C.
 102(b)(2)(A) exception may possibly apply to any U.S. patent
 document, regardless of its potential prior art date under AIA 35 U.S.C.
 102(a)(2) . In other words, there is no grace period limitation
 to the applicability of the AIA 35 U.S.C. 102(b)(2)(A) 
 exception.
 

 Specifically, AIA 35 U.S.C.
 102(b)(2)(A) provides that a disclosure which would otherwise
 qualify as prior art under AIA 35 U.S.C. 102(a)(2) is
 excepted as prior art if the subject matter disclosed was obtained directly or
 indirectly from the inventor or a joint inventor. Thus, if the subject matter in a
 U.S. patent document upon which the rejection is based is by another who obtained the
 subject matter from the inventor or a joint inventor, the applicant may establish by
 way of an affidavit or declaration of attribution under 37 CFR 1.130(a) 
 that a disclosure is not prior art under AIA 35 U.S.C.
 102(a)(2) . MPEP § 2155.03 discusses the use of
 affidavits or declarations of attribution under 37 CFR 1.130(a) to show that the
 disclosure was by another who obtained the subject matter disclosed directly or
 indirectly from the inventor or a joint inventor under the exception of
 AIA 35
 U.S.C. 102(b)(2)(A) for an inventor-originated disclosure.
 

 Applicants can include a statement regarding any
 inventor-originated disclosures made in U.S. patent documents in the specification
 upon filing. See 37 CFR 1.77(b)(6) and
 MPEP §
 608.01(a) . In order to be effective to show that an
 inventor-originated disclosure made in a U.S. patent document is not prior art under
 AIA 35
 U.S.C. 102(a)(2) because the AIA 35 U.S.C.
 102(b)(2)(A) exception applies, the statement must convey the
 same information as would be required in a declaration under 37 CFR
 1.130(a) . See MPEP §§ 717.01(a)(1) ,
 2155.01 , and 2155.03 . An applicant is not required to identify any
 inventor-originated disclosure made in a U.S. patent document or to use the format
 specified in 37 CFR 1.77(b)(6) , but
 identifying any such disclosures may expedite examination of the application and save
 applicants (and the Office) the costs related to an Office action and reply. If the
 patent application specification as filed contains a specific reference to an
 inventor-originated disclosure made in a U.S. patent document, and an oath or
 declaration under 37 CFR 1.63 from the inventor or
 the appropriate joint inventor(s) has been made of record, the Office will consider
 it apparent from the specification that the inventor-originated disclosure made in
 the U.S. patent document is attributable to the inventor or a joint inventor,
 provided there is a sufficient explanation of why the exception applies to a
 particular disclosure and there is no other evidence to the contrary. The applicant
 should also provide a copy of the inventor-originated disclosure made in a U.S.
 patent document (e.g., a copy of a U.S. patent application). Applicants may not use
 37 CFR
 1.77(b)(6) to add information about inventor-originated
 disclosures made in U.S. patent documents to the specification after the date that
 the application is filed. Applicants should use 37 CFR 1.130(a) to submit such
 information after filing. 
 

 

 
 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) [R-01.2024]
 

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

 AIA 35
 U.S.C. 102(b)(2)(B) provides a second exception to prior art
 under AIA
 35 U.S.C. 102(a)(2) . This provision excepts as prior art
 subject matter that was effectively filed by another after the subject matter had
 been publicly disclosed by the inventor, a joint inventor, or another who obtained
 the subject matter directly or indirectly from the inventor or joint inventor. The
 AIA 35
 U.S.C. 102(b)(2)(B) exception may possibly apply to any U.S.
 patent document, regardless of its potential prior art date under AIA 35 U.S.C.
 102(a)(2) . In other words, there is no grace period limitation
 to the applicability of the AIA 35 U.S.C. 102(b)(2)(B) 
 exception.
 

 Specifically, AIA 35 U.S.C.
 102(b)(2)(B) provides that a disclosure which would otherwise
 qualify as prior art under AIA 35 U.S.C. 102(a)(2) (a U.S.
 patent, U.S. patent application publication, or WIPO published application (“U.S.
 patent document”)) is excepted as prior art if the subject matter disclosed had been
 previously publicly disclosed by the inventor, a joint inventor, or another who
 obtained the subject matter directly or indirectly from the inventor or joint
 inventor. If a previous inventor-originated public disclosure is not within the grace
 period of AIA 35 U.S.C. 102(b)(1) , it would qualify as prior art under
 AIA 35
 U.S.C. 102(a)(1) , and could not be excepted under
 AIA 35
 U.S.C. 102(b)(1) . MPEP §
 2155.02 discusses the use of affidavits or declarations to
 show a prior public disclosure of the subject matter by the inventor or a joint
 inventor, and MPEP § 2155.03 discusses the use of
 affidavits or declarations to show a prior public disclosure of the subject matter by
 another who obtained the subject matter disclosed directly or indirectly from the
 inventor or a joint inventor.
 

 Similar to the previous discussion of AIA 35 U.S.C.
 102(b)(1)(B) , the exception in AIA 35 U.S.C.
 102(b)(2)(B) applies if the “subject matter disclosed [in the
 intervening disclosure] had, before such [intervening] disclosure was effectively
 filed under subsection (a)(2), been publicly disclosed by the inventor or a joint
 inventor or another who obtained the subject matter directly or indirectly from the
 inventor or joint inventor.” The exception in AIA 35 U.S.C.
 102(b)(2)(B) focuses on the “subject matter” that had been
 publicly disclosed by the inventor or a joint inventor (or another who obtained the
 subject matter directly or indirectly from the inventor or joint inventor). There is
 no requirement under 35 U.S.C. 102(b)(2)(B) that the
 mode of prior disclosure by the inventor or a joint inventor (or another who obtained
 the subject matter directly or indirectly from the inventor or joint inventor) be the
 same as the mode of disclosure of the intervening U.S. patent document(e.g.,
 patenting, publication, public use, sale activity). There is also no requirement that
 the prior disclosure by the inventor or a joint inventor be a verbatim or
 ipsissimis verbis disclosure of the intervening U.S. patent
 document. What is required for subject matter in the intervening U.S. patent document
 to be excepted under AIA 35 U.S.C. 102(b)(2)(B) is
 that the subject matter must have been previously publicly disclosed by the inventor
 or a joint inventor (or another who obtained the subject matter directly or
 indirectly from the inventor or joint inventor). The subject matter in the prior
 disclosure being relied upon under AIA 35 U.S.C. 102(a) must be the
 same "subject matter" as the subject matter previously publicly disclosed by the
 inventor for the exceptions in AIA 35 U.S.C. 102(b)(1)(B) and
 102(b)(2)(B) to apply. The exceptions in AIA 35 U.S.C.
 102(b)(1)(B) and 102(b)(2)(B) do not apply even if
 the only differences between the subject matter in the prior art disclosure that is
 relied upon under AIA 35 U.S.C. 102(a) and the
 subject matter previously publicly disclosed by the inventor are mere insubstantial
 changes, or only trivial or obvious variations. This guidance maintains the identical
 subject matter interpretation of AIA 35 U.S.C. 102(b)(1)(B) and
 102(b)(2)(B) .
 

 The exception in AIA 35 U.S.C.
 102(b)(2)(B) applies only to the subject matter in the
 intervening U.S. patent document being relied upon for a rejection under
 AIA 35
 U.S.C. 102(a)(2) that was also publicly disclosed by the
 inventor or a joint inventor (or another who obtained the subject matter directly or
 indirectly from the inventor or joint inventor) before the date the subject matter
 relied upon was effectively filed. The subject matter of an intervening U.S. patent
 document that was not previously publicly disclosed by the inventor or a joint
 inventor (or by another who obtained the subject matter from the inventor or joint
 inventor) is available as prior art under AIA 35 U.S.C.
 102(a)(2) . For example, if the inventor or a joint inventor had
 publicly disclosed A, B, and C, and a subsequent intervening U.S. patent document
 discloses A, B, C, and D, then D of the intervening U.S. patent document remains
 available as prior art under AIA 35 U.S.C. 102(a)(2) . In other
 words, the exception in AIA 35 U.S.C. 102(b)(2)(B) does
 not necessarily remove the entire disclosure in the intervening reference from being
 prior art.
 

 In addition, if subject matter of an intervening U.S.
 patent document is simply a more general description of the subject matter previously
 publicly disclosed by the inventor or a joint inventor (or another who obtained the
 subject matter directly or indirectly from the inventor or joint inventor), the
 exception in AIA 35 U.S.C. 102(b)(2)(B) 
 applies to such subject matter of the intervening U.S. patent document. To hold
 otherwise would unfairly deprive an inventor of a patent merely because a third party
 became aware of the inventor’s public disclosure and then filed a patent application
 disclosing a genericized version of it. For example, if the inventor or a joint
 inventor had publicly disclosed a species, and a subsequent intervening U.S. patent
 document discloses a genus (i.e., provides a more generic disclosure of the species),
 the disclosure of the genus in the intervening U.S. patent document is not available
 as prior art under AIA 35 U.S.C. 102(a)(2) .
 Conversely, if the inventor or a joint inventor had publicly disclosed a genus, and a
 subsequent intervening U.S. patent document discloses a species, the disclosure of
 the species in the subsequent intervening U.S. patent document would be available as
 prior art under AIA 35 U.S.C. 102(a)(2) .
 Likewise, if the inventor or a joint inventor had publicly disclosed a species, and a
 subsequent intervening U.S. patent document discloses an alternative species not also
 disclosed by the inventor or a joint inventor, the disclosure of the alternative
 species in the intervening U.S. patent document would be available as prior art under
 AIA 35
 U.S.C. 102(a)(2) because the “subject matter disclosed”
 requirement of AIA 35 U.S.C. 102(b)(2)(B) would
 not have been met.
 

 Finally, AIA 35 U.S.C. 102(b)(2)(B) does
 not discuss “the claimed invention” with respect to either the subject matter
 disclosed by the inventor or a joint inventor, or the subject matter of the
 subsequent intervening U.S. patent document. The only inquiry with respect to the
 claimed invention is whether or not the subject matter in the prior art disclosure
 being relied upon anticipates or renders obvious the claimed invention. A
 determination of whether the exception in AIA 35 U.S.C.
 102(b)(2)(B) is applicable to subject matter in an intervening
 U.S. patent document does not involve a comparison of the subject matter of the
 claimed invention to either the subject matter disclosed by the inventor or a joint
 inventor, or to the subject matter of the subsequent intervening U.S. patent
 document.
 

 Applicants can include a statement in the
 specification upon filing regarding any inventor-originated public disclosures of
 subject matter made prior to a potential AIA 35 U.S.C.
 102(a)(2) disclosure of that same subject matter. See
 37 CFR
 1.77(b)(6) and MPEP § 608.01(a) . In order to be
 effective to show that a potential AIA 35 U.S.C. 102(a)(2) 
 disclosure of subject matter is not prior art under AIA 35 U.S.C.
 102(a)(2) because the AIA 35 U.S.C.
 102(b)(2)(B) exception applies, the statement must convey the
 same information as would be required in a declaration under 37 CFR
 1.130(b) . See MPEP §§ 717.01(b)(1) ,
 2155.02 , and 2155.03 . An applicant is not required to identify any
 inventor-originated public disclosures of subject matter made prior to a potential
 AIA 35
 U.S.C. 102(a)(2) disclosure of that same subject matter, or to
 use the format specified in 37 CFR 1.77(b)(6) , but
 identifying any such public disclosures may expedite examination of the application
 and save applicants (and the Office) the costs related to an Office action and reply.
 If the patent application specification as filed contains a specific reference to an
 inventor-originated public disclosure of subject matter made prior to a potential
 AIA 35
 U.S.C. 102(a)(2) disclosure of that same subject matter, and an
 oath or declaration under 37 CFR 1.63 from the inventor or
 the appropriate joint inventor(s) has been made of record, the Office will consider
 it apparent from the specification that the potential AIA 35 U.S.C.
 102(a)(2) disclosure of the same subject matter is not in fact
 prior art under AIA 35 U.S.C. 102(a)(2) , provided
 there is a sufficient explanation of why the exception applies to a particular
 disclosure and there is no other evidence to the contrary. The applicant must also
 provide a copy of the prior inventor-originated public disclosure if it was made by
 way of a printed publication; see 37 CFR 1.130(b)(1) . Applicants
 may not use 37 CFR 1.77(b)(6) to add
 information to the specification about inventor-originated public disclosures of
 subject matter made prior to a potential AIA 35 U.S.C.
 102(a)(2) disclosure of that same subject matter after the date
 that the application is filed. Applicants should use 37 CFR 1.130(b) 
 to submit such information after filing.
 

 

 
 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) [R-01.2024]
 

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

 AIA 35
 U.S.C. 102(b)(2)(C) provides a third exception to the prior art
 provisions of AIA 35 U.S.C. 102(a)(2) . The
 exception of AIA 35 U.S.C. 102(b)(2)(C) 
 excepts subject matter disclosed in a U.S. patent, U.S. patent application
 publication, or WIPO published application (“U.S. patent document”) from constituting
 prior art under AIA 35 U.S.C. 102(a)(2) if the
 subject matter disclosed and the claimed invention, not later than the effective
 filing date of the claimed invention, “were owned by the same person or subject to an
 obligation of assignment to the same person.” The AIA 35 U.S.C.
 102(b)(2)(C) exception may possibly apply to any U.S. patent
 document, regardless of its potential prior art date under AIA 35 U.S.C.
 102(a)(2) . In other words, there is no grace period limitation
 to the applicability of the AIA 35 U.S.C. 102(b)(2)(C) 
 exception.
 

 AIA 35 U.S.C. 102(b)(2)(C) 
 resembles pre-AIA
 35 U.S.C. 103(c) in that both concern common ownership, and
 offer an avenue by which an applicant may avoid certain disclosures that are commonly
 owned or deemed commonly owned. However, there are significant differences between
 AIA 35
 U.S.C. 102(b)(2)(C) and pre-AIA 35 U.S.C. 103(c) . If the
 provisions of AIA 35 U.S.C. 102(b)(2)(C) are
 met, a U.S. patent document that might otherwise qualify as prior art under
 AIA 35
 U.S.C. 102(a)(2) is not available as prior art under either
 AIA 35
 U.S.C. 102 or 103 . This differs from
 pre-AIA 35
 U.S.C. 103(c) in which prior art can preclude patentability
 under pre-AIA 35
 U.S.C. 102 , even if the conditions of pre-AIA 35 U.S.C.
 103(c) are met. The consequence of this distinction is that a
 published application or an issued patent that falls under the common ownership
 exception of AIA 35 U.S.C. 102(b)(2)(C) may
 not be applied in either an anticipation or an obviousness rejection.
 

 It is important to note the circumstances in which the
 AIA 35
 U.S.C. 102(b)(2)(C) exception does not remove a U.S. patent
 document as a basis for a rejection. The AIA 35 U.S.C.
 102(b)(2)(C) exception does not apply to a disclosure that
 qualifies as prior art under AIA 35 U.S.C. 102(a)(1) 
 (disclosures made before the effective filing date of the claimed invention). Thus,
 if the publication date or issue date of a U.S. patent document is before the
 effective filing date of the claimed invention, it may be prior art under
 AIA 35
 U.S.C. 102(a)(1) , regardless of common ownership or the
 existence of an obligation to assign. Also, even if a U.S. patent or U.S. published
 application is not prior art under AIA 35 U.S.C. 102 or
 103 as a result of AIA 35 U.S.C.
 102(b)(2)(C) , a double patenting rejection (either statutory
 under 35 U.S.C.
 101 or non-statutory, sometimes called obviousness-type) may
 still be made on the basis of the claims of the U.S. patent or U.S. patent
 application publication. Furthermore, the U.S. patent document that does not qualify
 as prior art as a result of AIA 35 U.S.C. 102(b)(2)(C) may
 still be cited, in appropriate situations, to indicate the state of the art when
 making a lack of enablement rejection under 35 U.S.C.
 112(a) . A document does not need to qualify as prior art in
 order for its claims to provide the basis for a statutory or nonstatutory double
 patenting rejection. See, for example, MPEP § 804.03 . However, a secondary
 reference used in a nonstatutory double patenting rejection must be prior art; thus,
 when the AIA 35 U.S.C. 102(b)(2)(C) exception applies, a document
 cannot be used in this capacity. 
 

 The Office revised the rules of practice to include
 provisions that pertain to commonly owned or joint research agreement subject matter
 ( 37 CFR
 1.104(c)(4) and (c)(5) ). 37 CFR
 1.104(c)(4) applies to an application that is subject to
 AIA 35
 U.S.C. 102 and 35 U.S.C. 103 , and
 37 CFR
 1.104(c)(5) applies to an application that is subject to
 pre-AIA 35
 U.S.C. 102 and 103 . Commonly owned subject
 matter under AIA 35 U.S.C. 102 and
 103 is treated under 37 CFR 1.104(c)(4)(i) , and
 commonly owned subject matter under pre-AIA 35 U.S.C. 102 and
 103 is treated under 37 CFR 1.104(c)(5)(i) . See
 MPEP §
 2146.01 .
 

 A clear and conspicuous statement by the applicant (or
 the applicant's representative) that the claimed invention of the application under
 examination and the subject matter disclosed in the U.S. patent document applied as
 prior art were owned by the same person or subject to an obligation of assignment to
 the same person not later than the effective filing date of the claimed invention
 will be sufficient to establish that the AIA 35 U.S.C.
 102(b)(2)(C) exception applies. Likewise, when relying on the
 provisions of pre-AIA 35 U.S.C. 103(c) , the applicant (or the applicant's
 representative) can provide a similar statement required to disqualify the cited
 prior art. The applicant may present supporting evidence such as copies of assignment
 documents, but is not required to do so. Furthermore, the Office will not request
 corroborating evidence in the absence of independent evidence which raises doubt as
 to the veracity of such a statement. The statement under AIA 35 U.S.C.
 102(b)(2)(C) will generally be treated by Office personnel
 analogously to statements made under pre-AIA 35 U.S.C. 103(c) . See
 MPEP §
 2146.02 , subsection II. In order to comply with the rules,
 a statement is required regardless of any assignment information that may have been
 recorded in the assignment database maintained by the Office. 
 

 

 

 [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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 03/09/2026 20:50:41