MPEP § 2148 — MPEP § 2148
Current through: 2022-07-01

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

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2100 

 Section 2148 
 

 
 
 
 
 
 2148 Form Paragraphs for Use in Rejections Under
 Pre-AIA 35 U.S.C. 103 [R-07.2022]
 

 The following form paragraphs should be used in making the
 appropriate rejections under pre-AIA 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.fti Statement of Statutory Basis, Pre-AIA 35 U.S.C.
 103(a)
 

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

 
 (a) A patent may not be obtained though the invention is not
 identically disclosed or described as set forth in section 102 , if the
 differences between the subject matter sought to be patented and the prior art are such
 that the subject matter as a whole would have been obvious at the time the invention was
 made to a person having ordinary skill in the art to which said subject matter pertains.
 Patentability shall not be negated by the manner in which the invention was made. 
 

 
 Examiner Note:
 
 1. The statute is not to be cited in
 all Office actions. It is only required in first actions on
 the merits employing pre-AIA 35 U.S.C. 103(a) and final
 rejections. Where the statute is being applied, but is not cited in an action on the
 merits, use paragraph 7.103 .
 

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

 3. This form paragraph must precede form paragraphs
 7.20.01.fti - 7.22.fti when this form paragraph is
 used to cite the statute in first actions and final rejections.
 
 
 

 ¶ 7.20.01.fti Pre-AIA 103(a) Rejection Using Prior Art Under Pre-AIA 102(e),
 (f), or (g) That Is Not Disqualified Under Pre-AIA 35 U.S.C. 103(c) Because Reference Is Prior
 Art Under Another Subsection of Pre-AIA 35 U.S.C. 102
 

 Applicant has provided a submission in this file that the invention
 was owned by, or subject to an obligation of assignment to, the same entity as
 [1] at the time this invention was made, or was subject to a joint research
 agreement at the time this invention was made. However, reference [2] qualifies
 as prior art under another subsection of pre-AIA 35 U.S.C. 102 , and therefore is
 not disqualified as prior art under pre-AIA 35 U.S.C. 103(c) .
 

 Applicant may overcome the applied art either by a showing
 under 37 CFR
 1.132 that the invention disclosed therein was derived from the inventor
 of this application, and is therefore, not the invention “by another,” or by antedating the
 applied art under 37 CFR 1.131(a) .
 

 Examiner Note:
 
 1. This form paragraph must be included following form paragraph
 7.20.fti in all actions containing rejections under pre-AIA 35 U.S.C. 103(a) using art
 that is disqualified under pre-AIA 103(c) using
 pre-AIA
 102(e) , (f) , or (g) , but which
 qualifies under another section of pre-AIA 35 U.S.C. 102 .
 

 2. In bracket 1, identify the common
 assignee.
 

 3. In bracket 2, identify the reference which has been
 disqualified.
 
 
 

 ¶ 7.20.02.fti Joint Inventors, Common Ownership Presumed

 This application currently names joint inventors. In considering
 patentability of the claims under pre-AIA 35 U.S.C. 103(a) , the examiner presumes
 that the subject matter of the various claims was commonly owned at the time any inventions
 covered therein were made absent any evidence to the contrary. Applicant is advised of the
 obligation under 37 CFR
 1.56 to point out the inventor and invention dates of each claim that
 was not commonly owned at the time a later invention was made in order for the examiner to
 consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential
 pre-AIA 35 U.S.C.
 102(e) , (f) or (g) prior art under pre-AIA
 35 U.S.C.
 103(a) .
 

 Examiner Note:
 
 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.fti Pre-AIA 103(a) Rejection Using Prior Art Under Pre-AIA 102(e),
 (f), or (g) That Is Attempted To Be Disqualified Under pre-AIA 35 U.S.C. 103(c) Using the
 Common Ownership or Assignment Provision
 

 Applicant has attempted to disqualify reference [1] under
 pre-AIA 35 U.S.C.
 103(c) by showing that the invention was owned by, or subject to an
 obligation of assignment to, the same entity as [2] at the time this invention
 was made. However, applicant has failed to provide a statement that the application and the
 reference were owned by, or subject to an obligation of assignment to, the same person at the
 time the invention was made in a conspicuous manner, and therefore, the reference is not
 disqualified as prior art under pre-AIA 35 U.S.C. 103(a) . Applicant must
 file the required submission in order to properly disqualify the reference under
 pre-AIA 35 U.S.C.
 103(c) . See MPEP § 2146.02 , subsection II.
 

 In addition, applicant may overcome the applied art either
 by a showing under 37
 CFR 1.132 that the invention disclosed therein was derived from the
 inventor of this application, and is therefore not the invention “by another,” or by
 antedating the applied art under 37 CFR 1.131(a) .
 

 Examiner Note:
 
 1. This form paragraph must be included in all actions containing
 rejections under pre-AIA 35 U.S.C. 103(a) where an attempt has been made to
 disqualify the reference under pre-AIA 35 U.S.C. 103(c) , but where
 the applicant has not provided a proper statement indicating common ownership or
 assignment at the time the invention was made .
 

 2. In brackets 1 and 2, identify the commonly owned
 applied art (e.g., patent or co-pending application).
 
 
 

 ¶ 7.20.05.fti Pre-AIA 103(a) Rejection Using Prior Art Under Pre-AIA 102(e),
 (f), or (g) That Is Attempted To Be Disqualified Under Pre-AIA 35 U.S.C. 103(c) Using the
 Joint Research Agreement Provisions
 

 Applicant has attempted to disqualify reference [1] under
 pre-AIA 35 U.S.C.
 103(c) by showing that the invention was subject to a joint research
 agreement at the time this invention was made. However, applicant has failed to
 [2] . Applicant must file the missing requirements in order to properly
 disqualify the reference under pre-AIA 35 U.S.C. 103(c) . See
 37 CFR
 1.71(g) and 1.104(c) and MPEP §
 2146.02 , subsection III.
 

 In addition, applicant may overcome the applied art either
 by a showing under 37
 CFR 1.132 that the invention disclosed therein was derived from the
 inventor of this application, and is therefore, not the invention “by another,” or by
 antedating the applied art under 37 CFR 1.131(a) .
 

 Examiner Note:
 
 1. This form paragraph must be included in all actions containing
 rejections under pre-AIA 35 U.S.C. 103(a) where an attempt has been made to
 disqualify the reference under pre-AIA 35 U.S.C. 103(c) using the
 joint research agreement provisions but the disqualification attempt is ineffective.
 

 2. In bracket 1, identify the reference which is sought to be
 disqualified under pre-AIA 35 U.S.C. 103(c) .
 

 3. In bracket 2, identify the reason(s) why the disqualification
 attempt is ineffective. The reason(s) could be noncompliance with the statutory
 requirements of pre-AIA 35 U.S.C. 103(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
 1.104(c)(5)(ii) .
 
 
 

 ¶ 7.21.fti Rejection, Pre-AIA 35 U.S.C. 103(a)

 Claim [1] is/are rejected under pre-AIA 35 U.S.C. 103(a) 
 as being unpatentable over [2] . 
 

 Examiner Note:
 
 1. This paragraph must be preceded by either form
 paragraph 7.20.fti or form paragraph 7.103 .
 

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

 3. If the rejection relies upon prior art under pre-AIA 35 U.S.C.
 102(e) , use pre-AIA 35 U.S.C. 102(e) as amended
 by the American Inventors Protection Act to determine the reference’s prior art date,
 unless the reference is a U.S. patent issued directly, or indirectly, from an
 international application which has an international filing date prior to November 29,
 2000. In other words, use pre-AIPA 35 U.S.C.
 102(e) only if the reference is a U.S. patent issued directly
 or indirectly from either a national stage of an international application (application
 under 35 U.S.C.
 371 ) which has an international filing date prior to November 29,
 2000 or a continuing application claiming benefit under 35 U.S.C. 120 ,
 121 or 365(c) to an international
 application having an international filing date prior to November 29, 2000. See the
 Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the
 determination of the reference’s 35 U.S.C. 102(e) date. 
 

 4. If the applicability of this rejection (e.g., the availability
 of the prior art as a reference under pre-AIA 35 U.S.C. 102(a) or
 pre-AIA 35 U.S.C.
 102(b) ) prevents the reference from being disqualified under
 pre-AIA 35 U.S.C.
 103(c) , form paragraph 7.20.01.fti must follow this form
 paragraph. 
 

 5. If this rejection is a provisional pre-AIA 35 U.S.C.
 103(a) rejection based upon a copending application that would
 comprise prior art under pre-AIA 35 U.S.C. 102(e) if patented
 or published, use form paragraph 7.21.01.fti instead of this paragraph. 
 

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

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

 ¶ 7.21.01.fti Provisional Rejection, Pre-AIA 35 U.S.C. 103(a), Common
 Assignee, Common Applicant, or at Least One Common (Joint) Inventor
 

 Claim [1] is/are provisionally rejected under
 pre-AIA 35 U.S.C.
 103(a) 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 pre-AIA 35 U.S.C. 102(e) if published or
 patented. This provisional rejection under pre-AIA 35 U.S.C. 103(a) is based upon a
 presumption of future publication or patenting of the copending application. [4] 

 This provisional rejection might be overcome either by a showing under
 37 CFR
 1.132 that any invention disclosed but not claimed in the copending
 application was derived from the inventor or joint inventors (i.e., the inventive entity) of
 this application and is thus not the invention “by another,” or by a showing of a date of
 invention for the instant application prior to the pre-AIA 35 U.S.C. 102(e) date of the
 copending application under 37 CFR 1.131(a) . This rejection might also
 be overcome by showing that the copending application is disqualified under pre-AIA 35 U.S.C. 103(c) 
 as prior art in a rejection under pre-AIA 35 U.S.C. 103(a) .
 See
 MPEP §
 2146 et seq.
 

 Examiner Note:
 
 1. This paragraph is used to provisionally reject claims not
 patentably distinct from the disclosure in a copending application that would be prior
 art under pre-AIA 35 U.S.C. 102(e) to the claimed invention if published or issued as a
 patent and also has 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 when the
 copending application is disqualified under pre-AIA 35 U.S.C. 103(c) as prior
 art in a pre-AIA 35
 U.S.C. 103(a) rejection.
 
 See MPEP §
 2146.03(a) . 
 

 2. Use pre-AIA 35 U.S.C. 102(e) as amended
 by the American Inventors Protection Act (AIPA) to determine the copending application's
 prior art date, unless the copending application is based directly, or indirectly, from
 an international application which has an international filing date prior to November
 29, 2000. If the copending application is either a national stage of an international
 application (application under 35 U.S.C. 371 ) which has an
 international filing date prior to November 29, 2000, or a continuing application
 claiming benefit under 35 U.S.C. 120 , 121 ,
 365(c) , or 386(c) to an international
 application having an international filing date prior to November 29, 2000, use
 pre-AIPA 35
 U.S.C. 102(e) to determine the copending application’s prior art
 date. See the Examiner Notes for form paragraphs 7.12.fti and
 7.12.01.fti to assist in the determination of the
 reference’s pre-AIA and pre-AIPA 35 U.S.C. 102(e) dates, respectively.
 

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

 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 obviousness double
 patenting rejection should additionally be made using form paragraphs
 8.33 and
 8.37 .
 

 9. A rejection should additionally be made under pre-AIA 35 U.S.C.
 103(a) using form paragraph 7.21.fti if: 
 evidence indicates that the copending application is
 also prior art under pre-AIA 35 U.S.C. 102(f) or
 (g) (e.g., applicant has named the prior inventor in response
 to a requirement made using form paragraph 8.28.fti ); and
 

 the copending application has not been disqualified as
 prior art in a pre-AIA 35 U.S.C. 103(a) rejection pursuant to
 pre-AIA 35
 U.S.C. 103(c) .
 
 
 
 
 

 ¶ 7.21.02.fti Rejection, pre-AIA 35 U.S.C. 103(a), Common Assignee, Common
 Applicant, or at Least One Common (Joint) Inventor
 

 Claim [1] is/are rejected under pre-AIA 35 U.S.C. 103(a) 
 as being obvious over [2] .
 

 The applied reference has a common [3] with the instant
 application. Based upon the pre-AIA 35 U.S.C. 102(e) date of the reference, it constitutes prior
 art. This rejection under pre-AIA 35 U.S.C. 103(a) might be overcome by: (1) a showing under
 37 CFR
 1.132 that any invention disclosed but not claimed in the reference was
 derived from the inventor of this application and is thus not an invention “by another”; (2) a
 showing of a date of invention for the claimed subject matter of the application which
 corresponds to subject matter disclosed but not claimed in the reference, prior to the
 pre-AIA 35 U.S.C.
 102(e) date of the reference under 37 CFR 1.131(a) ; or
 (3) an oath or declaration under 37 CFR 1.131(c) stating that the
 application and reference are currently owned by the same party and that the inventor or joint
 inventors (i.e., the inventive entity) named in the application is the prior inventor under
 pre-AIA 35 U.S.C.
 104 as in effect on March 15, 2013, together with a terminal disclaimer
 in accordance with 37 CFR
 1.321(c) . This rejection might also be overcome by showing that the
 reference is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a
 rejection under pre-AIA 35
 U.S.C. 103(a) .
 See
 MPEP §
 2146 et seq. [4] 

 Examiner Note:
 
 1. 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 pre-AIA 35 U.S.C. 102(e) . If the reference qualifies as prior art
 under pre-AIA 35
 U.S.C. 102(a) or (b) , then this form paragraph should
 not be used (form paragraph 7.21.fti 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 disqualified under pre-AIA 35 U.S.C.
 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.
 See
 MPEP §
 2146.03 .
 

 2. Pre-AIA 35 U.S.C.
 102(e) as amended by the American Inventors Protection Act of 1999
 (AIPA) must be applied if the reference is by another and is one of the following: 
 a U.S. patent or a publication of a U.S. application for
 patent filed under 35 U.S.C. 111(a) ;
 

 a U.S. patent issued directly or indirectly from, or a U.S. or
 WIPO publication of, an international application (PCT) if the international
 application has an international filing date on or after November 29,
 2000 ;
 

 a U.S. patent issued from, or a WIPO publication of, an
 international design application that designates the United States.
 
 
 See the Examiner Notes for form paragraph
 7.12.fti 
 to assist in the determination of the pre-AIA 35 U.S.C. 102(e) date of the
 reference.
 

 

 3. Pre-AIPA 35 U.S.C. 102(e) must be applied if the reference is a U.S. patent issued
 directly, or indirectly, from an international application filed prior to November 29,
 2000. See the Examiner Notes for form paragraph 7.12.01.fti to assist in the
 determination of the pre-AIPA 35 U.S.C. 102(e) date of the reference. 
 

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

 5. In bracket 2, insert the prior art reference(s) relied upon for
 the obviousness rejection.
 

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

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

 ¶ 7.22.fti Rejection, pre-AIA 35 U.S.C. 103(a), Further in View
 Of
 

 Claim [1] rejected under pre-AIA 35 U.S.C.
 103(a) as being unpatentable over [2] as applied to claim
 [3] above, and further in view of [4] .
 

 Examiner Note:
 
 1. This form paragraph must be preceded by form
 paragraph 7.21.fti .
 

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

 3. If the rejection relies upon prior art under pre-AIA 35 U.S.C.
 102(e) , use pre-AIA 35 U.S.C. 102(e) as amended
 by the American Inventors Protection Act to determine the reference’s prior art date,
 unless the reference is a U.S. patent issued directly, or indirectly, from an
 international application which has an international filing date prior to November 29,
 2000. In other words, use pre-AIPA 35 U.S.C. 102(e) only if the reference is a U.S.
 patent issued directly or indirectly from either a national stage of an international
 application (application under 35 U.S.C. 371 ) which has an
 international filing date prior to November 29, 2000 or a continuing application
 claiming benefit under 35 U.S.C. 120 , 121 ,
 365(c) or 386(c) to an international
 application having an international filing date prior to November 29, 2000. See the
 Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the
 determination of the reference’s 35 U.S.C. 102(e) date.
 
 
 

 ¶ 7.23.fti Test for Obviousness

 The factual inquiries for establishing a background for determining
 obviousness under pre-AIA 35
 U.S.C. 103(a) 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:

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

 

 ¶ 7.27.fti Rejection, pre-AIA 35 U.S.C. 102 or pre-AIA 103(a)

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

 Examiner Note:
 
 1. This form paragraph is NOT intended to be commonly
 used as a substitute for a rejection under pre-AIA 35 U.S.C. 102 . In other
 words, a single rejection under either pre-AIA 35 U.S.C. 102 or
 pre-AIA 35 U.S.C.
 103(a) should be made whenever possible using appropriate form
 paragraphs 7.15.fti to 7.19.fti , 7.21.fti and
 7.22.fti .
 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 pre-AIA 35 U.S.C.
 102 is appropriate and given another interpretation, a
 rejection under pre-AIA 35 U.S.C. 103(a) 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 .
 
 
 

 2. If the interpretation of the claim(s) renders the
 claim(s) indefinite, a rejection under 35 U.S.C. 112(b) or
 pre-AIA 35 U.S.C.
 112 , 2nd paragraph, may be appropriate.
 

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

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

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

 6. A full explanation should follow this form
 paragraph.
 

 7. If the rejection relies upon prior art under pre-AIA 35 U.S.C.
 102(e) , use pre-AIA 35 U.S.C. 102(e) as amended
 by the American Inventors Protection Act (AIPA) to determine the reference’s prior art
 date, unless the reference is a U.S. patent issued directly, or indirectly, from an
 international application which has an international filing date prior to November 29,
 2000. In other words, use pre-AIPA 35 U.S.C. 102(e) only
 if the reference is a U.S. patent issued directly or indirectly from either a national
 stage of an international application (application under 35 U.S.C. 371 )
 which has an international filing date prior to November 29, 2000, or a continuing
 application claiming benefit under 35 U.S.C. 120 , 121 or
 365(c) , or 386(c) to an international
 application having an international filing date prior to November 29, 2000. See the
 Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the
 determination of the reference’s pre-AIA and pre-AIPA 35 U.S.C. 102(e) 
 dates, respectively. 
 

 8. This form paragraph must be preceded by
 7.07.fti ,
 one or more of form paragraphs 7.08.fti
 to 7.14.fti as appropriate, and form paragraph
 7.20.fti 
 or by form paragraph 7.103 .
 

 9. For applications with an actual filing date on or
 after March 16, 2013, that claim priority to, or the benefit of, an application filed
 before March 16, 2013, this form paragraph must be preceded by form paragraph
 7.06 .
 
 
 

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 2101-2102-[Reserved] 

 2103-Patent Examination Process 

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

 
 

 2105-Patent Eligible Subject Matter — Living Subject Matter 

 2106-Patent Subject Matter Eligibility 
 2106.01-[Reserved] 

 2106.02-[Reserved] 

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

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

 2106.04(a)(2)-Abstract Idea Groupings 

 2106.04(a)(3)-Tentative Abstract Ideas 

 
 

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

 2106.04(c)-The Markedly Different Characteristics Analysis 

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

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

 
 

 
 

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

 2106.05(b)-Particular Machine 

 2106.05(c)-Particular Transformation 

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

 2106.05(e)-Other Meaningful Limitations 

 2106.05(f)-Mere Instructions To Apply An Exception 

 2106.05(g)-Insignificant Extra-Solution Activity 

 2106.05(h)-Field of Use and Technological Environment 

 
 

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

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

 
 

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

 
 

 2106.07(b)-Evaluating Applicant’s Response 

 2106.07(c)-Clarifying the Record 

 
 

 
 

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

 2107.02-Procedural Considerations Related to Rejections for Lack of Utility 

 2107.03-Special Considerations for Asserted Therapeutic or Pharmacological Utilities 

 
 

 2108-[Reserved] 

 2109-Inventorship 

 2109.01-Joint Inventorship 

 2110-[Reserved] 

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

 2111.02-Effect of Preamble 

 2111.03-Transitional Phrases 

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

 2111.05-Functional and Nonfunctional Descriptive Material 

 
 

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

 2112.02-Process Claims 

 
 

 2113-Product-by-Process Claims 

 2114-Apparatus and Article Claims — Functional Language 

 2115-Material or Article Worked Upon by Apparatus 

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

 
 

 2117-Markush Claims 

 2118-2119-[Reserved] 

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

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

 
 

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

 2121.02-Compounds and Compositions — What Constitutes Enabling Prior Art 

 2121.03-Plant Genetics — What Constitutes Enabling Prior Art 

 2121.04-Apparatus and Articles — What Constitutes Enabling Prior Art 

 
 

 2122-Discussion of Utility in the Prior Art 

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

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

 
 

 2125-Drawings as Prior Art 

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

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

 
 

 2127-Domestic and Foreign Patent Applications as Prior Art 

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

 2128.02-Date Publication Is Available as a Reference 

 
 

 2129-Admissions as Prior Art 

 2130-[Reserved] 

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

 2131.02-Genus-Species Situations 

 2131.03-Anticipation of Ranges 

 2131.04-Secondary Considerations 

 2131.05-Nonanalogous or Disparaging Prior Art 

 
 

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

 
 

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

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

 
 

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

 2133.03(b)-“On Sale” 

 2133.03(c)-The “Invention” 

 2133.03(d)-“In This Country” 

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

 2133.03(e)(2)-Intent 

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

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

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

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

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

 
 

 
 

 
 

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

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

 
 

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

 2136.02-Content of the Prior Art Available Against the Claims 

 2136.03-Critical Reference Date 

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

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

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

 
 

 
 

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

 2137.02-[Reserved] 

 
 

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

 2138.02-“The Invention Was Made in This Country” 

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

 2138.04-“Conception” 

 2138.05-“Reduction to Practice” 

 2138.06-“Reasonable Diligence” 

 
 

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

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

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

 
 

 2140-[Reserved] 

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

 
 

 2141.02-Differences Between Prior Art and Claimed Invention 

 2141.03-Level of Ordinary Skill in the Art 

 
 

 2142-Legal Concept of Prima Facie Obviousness 

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

 2143.02-Reasonable Expectation of Success Is Required 

 2143.03-All Claim Limitations Must Be Considered 

 
 

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

 2144.02-Reliance on Scientific Theory 

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

 2144.04-Legal Precedent as Source of Supporting Rationale 

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

 2144.06-Art Recognized Equivalence for the Same Purpose 

 2144.07-Art Recognized Suitability for an Intended Purpose 

 2144.08-Obviousness of Species When Prior Art Teaches Genus 

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

 
 

 2145-Consideration of Applicant’s Rebuttal Arguments and Evidence 

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

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

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

 
 

 
 

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

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

 2149-[Reserved] 

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

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

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

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

 2152.02(b)-Described in a Printed Publication 

 2152.02(c)-In Public Use 

 2152.02(d)-On Sale 

 2152.02(e)-Otherwise Available to the Public 

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

 
 

 2152.03-Admissions 

 2152.04-The Meaning of “Disclosure” 

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

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

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

 
 

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

 2153.01(b)-[Reserved] 

 
 

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

 
 

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

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

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

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

 
 

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

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

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

 
 

 
 

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

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

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

 2155.04-Enablement 

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

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

 
 

 2156-Joint Research Agreements 

 2157-Improper Naming of Inventors 

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

 
 

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

 2159.02-Applications Filed on or After March 16, 2013 

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

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

 
 

 2160-[Reserved] 

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

 
 

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

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

 2163.02-Standard for Determining Compliance With the Written Description Requirement 

 2163.03-Typical Circumstances Where Adequate Written Description Issue Arises 

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

 2163.05-Changes to the Scope of Claims 

 2163.06-Relationship of Written Description Requirement to New Matter 

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

 2163.07(b)-Incorporation by Reference 

 
 

 
 

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

 2164.01(b)-How to Make the Claimed Invention 

 2164.01(c)-How to Use the Claimed Invention 

 
 

 2164.02-Working and Prophetic Examples 

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

 2164.04-Burden on the Examiner Under the Enablement Requirement 

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

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

 
 

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

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

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

 
 

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

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

 2164.08(b)-Inoperative Subject Matter 

 2164.08(c)-Critical Feature Not Claimed 

 
 

 
 

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

 2165.02-Best Mode Requirement Compared to Enablement Requirement 

 2165.03-Requirements for Rejection for Lack of Best Mode 

 2165.04-Examples of Evidence of Concealment 

 
 

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

 2167-2170-[Reserved] 

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

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

 
 

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

 2173.02-Determining Whether Claim Language is Definite 

 2173.03-Correspondence Between Specification and Claims 

 2173.04-Breadth Is Not Indefiniteness 

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

 2173.05(b)-Relative Terminology 

 2173.05(c)-Numerical Ranges and Amounts Limitations 

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

 2173.05(e)-Lack of Antecedent Basis 

 2173.05(f)-Reference to Limitations in Another Claim 

 2173.05(g)-Functional Limitations 

 2173.05(h)-Alternative Limitations 

 2173.05(i)-Negative Limitations 

 2173.05(j)-Old Combination 

 2173.05(k)-Aggregation 

 2173.05(l)-[Reserved] 

 2173.05(m)-Prolix 

 2173.05(n)-Multiplicity 

 2173.05(o)-Double Inclusion 

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

 2173.05(q)-“Use” Claims 

 2173.05(r)-Omnibus Claim 

 2173.05(s)-Reference to Figures or Tables 

 2173.05(t)-Chemical Formula 

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

 2173.05(v)-Mere Function of Machine 

 
 

 2173.06-Practice Compact Prosecution 

 
 

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

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

 2176-2180-[Reserved] 

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

 2182-Search and Identification of the Prior Art 

 2183-Making a Prima Facie Case of Equivalence 

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

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

 2186-Relationship to the Doctrine of Equivalents 

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

 2188-2189-[Reserved] 

 2190-Prosecution Laches and Res Judicata 

 

 

 
 

 
 
 

 
 

 

 
 
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