MPEP § 2187 — MPEP § 2187
Current through: 2022-07-01

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

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2100 

 Section 2187 
 

 
 
 
 
 
 2187 Form Paragraphs for Use Relating to 35 U.S.C. 112(f)
 or Pre-AIA 35 U.S.C. 112, Sixth Paragraph [R-07.2022]
 

 Form paragraphs 7.30.03.h , 7.30.03 , and 7.30.05 - 7.30.07 should be used, as appropriate,
 when a claim limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C.
 112 , sixth paragraph. See MPEP § 2181 . For rejections under
 35 U.S.C.
 112(b) or pre-AIA 35 U.S.C. 112 , second paragraph
 relating to 35
 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph,
 use form paragraphs 7.34.23 - 7.34.24 

 ¶ 7.30.03.h Header for Claim Interpretation

 CLAIM INTERPRETATION 

 Examiner Note:
 
 1. This form paragraph may be used in a first Office action or
 when a claim interpretation issue first arises, and need only be used once in an
 application, when appropriate. 
 

 2. This form paragraph may be used to preface any clarifying
 remarks regarding claim interpretation that the examiner chooses to add to enhance the
 prosecution record.
 

 3. This form paragraph should precede form paragraphs 7.30.03 and
 7.30.05 ,
 when applicable.
 
 
 

 ¶ 7.30.03 Statement of Statutory Basis, 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
 paragraph
 

 The following is a quotation of 35 U.S.C.
 112(f) :
 

 
 
 (f) ELEMENT IN CLAIM FOR A
 COMBINATION.—An element in a claim for a combination may be
 expressed as a means or step for performing a specified function
 without the recital of structure, material, or acts in support
 thereof, and such claim shall be construed to cover the
 corresponding structure, material, or acts described in the
 specification and equivalents thereof. 
 

 
 
 The following is a quotation of pre-AIA 35 U.S.C.
 112 , sixth paragraph:
 

 
 An element in a claim for a combination may
 be expressed as a means or step for performing a specified function without the
 recital of structure, material, or acts in support thereof, and such claim shall
 be construed to cover the corresponding structure, material, or acts described in
 the specification and equivalents thereof.
 

 
 Examiner Note:
 
 1. The statute is no longer being
 re-cited in all Office actions. It is only required in first actions on the
 merits and final rejections. Where the statute is not being cited in an
 action on the merits, use paragraph 7.103 .
 

 2. Use this paragraph ONLY ONCE in a
 given Office action when claim elements use “means” (or “step for”) or
 otherwise invoke treatment under 35 U.S.C.
 112(f) or pre-AIA 35 U.S.C.
 112 , sixth paragraph.
 

 3. This form paragraph must be preceded by
 7.30.03.h and followed with form paragraph
 7.30.05 . 
 
 
 

 ¶ 7.30.05 Broadest Reasonable Interpretation under 35 U.S.C.
 112(f) or pre-AIA 35 U.S.C. 112, Sixth Paragraph: Use of “Means” (or “Step”) in Claim
 Drafting and Rebuttable Presumptions Raised
 

 The claims in this application are given their broadest
 reasonable interpretation using the plain meaning of the claim language in light of the
 specification as it would be understood by one of ordinary skill in the art. The
 broadest reasonable interpretation of a claim element (also commonly referred to as a
 claim limitation) is limited by the description in the specification when
 35
 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth
 paragraph, is invoked.
 

 As explained in MPEP § 2181 , subsection I, claim
 limitations that meet the following three-prong test will be interpreted under
 35
 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth
 paragraph:
 

 
 (A) the claim limitation uses the term "means" or "step"
 or a term used as a substitute for "means" that is a generic placeholder
 (also called a nonce term or a non-structural term having no specific
 structural meaning) for performing the claimed function;
 

 (B) the term "means" or "step" or the generic placeholder
 is modified by functional language, typically, but not always linked by the
 transition word "for" (e.g., "means for") or another linking word or phrase,
 such as "configured to" or "so that"; and
 

 (C) the term "means" or "step" or the generic placeholder
 is not modified by sufficient structure, material, or acts for performing
 the claimed function. 
 

 
 Use of the word "means" (or "step") in a claim with
 functional language creates a rebuttable presumption that the claim limitation is to be
 treated in accordance with 35 U.S.C. 112(f) or
 pre-AIA 35
 U.S.C. 112 , sixth paragraph. The presumption that the claim
 limitation is interpreted under 35 U.S.C. 112(f) or
 pre-AIA 35
 U.S.C. 112 , sixth paragraph, is rebutted when the claim
 limitation recites function without reciting sufficient structure, material or acts to
 entirely perform the recited function.
 

 Absence of the word "means" (or "step") in a claim creates a
 rebuttable presumption that the claim limitation is not to be treated in accordance with
 35
 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth
 paragraph. The presumption that the claim limitation is not interpreted under
 35
 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth
 paragraph, is rebutted when the claim limitation recites function without reciting
 sufficient structure, material or acts to entirely perform the recited function.
 

 Claim limitations in this application that use the word
 "means" (or "step") are being interpreted under 35 U.S.C.
 112(f) or pre-AIA 35 U.S.C. 112 , sixth
 paragraph, except as otherwise indicated in an Office action. Conversely, claim
 limitations in this application that do not use the word "means" (or "step") are not
 being interpreted under 35 U.S.C. 112(f) or
 pre-AIA 35
 U.S.C. 112 , sixth paragraph, except as otherwise indicated in
 an Office action.
 

 Examiner Note:
 
 1. Use this paragraph ONLY ONCE in a given Office
 action the first time that a claim limitation uses "means" (or "step") or
 otherwise invokes treatment under 35 U.S.C.
 112(f) or pre-AIA 35 U.S.C.
 112 , sixth paragraph, by using a substitute term for
 "means" that serves as a generic placeholder.
 

 2. This paragraph must be preceded with form
 paragraph 7.30.03 unless already cited in a
 previous Office action.
 

 3. When a claim limitation is being interpreted
 under 35 U.S.C. 112(f) or
 pre-AIA 35 U.S.C. 112 , sixth paragraph (i.e., it
 meets the three-prong test), to provide clarification the examiner may
 identify the structure, material, or act disclosed in the specification that
 supports the recited function by adding explanatory remarks after this
 paragraph.
 

 4. When the presumptions raised are rebutted by the
 claim language, for example by not using "means" and failing to recite
 structure that performs the function, or by using "means" along with
 definite structure that performs the function, use form paragraph
 7.30.06 and/or
 7.30.07 . 
 Follow this form paragraph with form paragraph
 7.30.06 when, despite the absence
 of the word "means," a claim limitation is interpreted under
 35 U.S.C.
 112(f) or pre-AIA 35 U.S.C.
 112 , sixth paragraph.
 

 Follow this form paragraph with form paragraph
 7.30.07 when, despite the presence
 of the word "means," a claim limitation is
 not being interpreted
 under 35 U.S.C.
 112(f) or pre-AIA 35 U.S.C.
 112 , sixth paragraph.
 
 
 

 5. A claim limitation interpreted under 35 U.S.C.
 112(f) or pre-AIA 35 U.S.C.
 112 , sixth paragraph, that raises issues under
 35 U.S.C. 112(a) 
 and/or 112(b) or
 pre-AIA 35 U.S.C. 112 , first and/or second
 paragraphs, respectively, should also be addressed, as appropriate. See
 MPEP §
 2185 .
 
 
 

 ¶ 7.30.06 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, Sixth Paragraph,
 Invoked Despite Absence of "Means"
 

 This application includes one or more claim limitations that do not use
 the word "means," but are nonetheless being interpreted under 35 U.S.C.
 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph,
 because the claim limitation(s) uses a generic placeholder that is coupled with functional
 language without reciting sufficient structure to perform the recited function and the generic
 placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
 [1] in claim [2] .
 

 Because this/these claim limitation(s) is/are being interpreted under
 35 U.S.C.
 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph,
 it/they is/are being interpreted to cover the corresponding structure described in the
 specification as performing the claimed function, and equivalents thereof.
 

 If applicant does not intend to have this/these limitation(s) interpreted
 under 35 U.S.C.
 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph,
 applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under
 35 U.S.C.
 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph
 (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a
 sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the
 claimed function so as to avoid it/them being interpreted under 35 U.S.C.
 112(f) or pre-AIA 35 U.S.C. 112 , sixth
 paragraph.
 

 Examiner Note:
 
 1. Use this paragraph ONLY ONCE in a given Office action the
 first time that a claim limitation invokes treatment under 35 U.S.C.
 112(f) or pre-AIA 35 U.S.C. 112 , sixth
 paragraph by using a substitute term for "means" that serves as a generic
 placeholder.
 

 2. In bracket 1, identify each claim limitation, and in
 bracket 2 indicate the claim(s) in which each respective limitation appears.
 

 3. This paragraph must be preceded with form paragraph
 7.30.05 
 unless already cited in a previous Office action.
 
 
 

 ¶ 7.30.07 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, Sixth Paragraph, Not Invoked Despite Presence of "Means" or "Step"

 This application includes one or more claim limitations that use
 the word "means" or "step" but are nonetheless not being
 interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph
 because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely
 perform the recited function. Such claim limitation(s) is/are: [1] in claim
 [2] .
 

 Because this/these claim limitation(s) is/are
 not being interpreted under 35 U.S.C.
 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph,
 it/they is/are not being interpreted to cover only the
 corresponding structure, material, or acts described in the specification as performing the
 claimed function, and equivalents thereof.
 

 If applicant intends to have this/these limitation(s) interpreted
 under 35 U.S.C.
 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph,
 applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts
 that performs the claimed function; or (2) present a sufficient showing that the claim
 limitation(s) does/do not recite sufficient structure, materials, or acts to perform the
 claimed function.
 

 Examiner Note:
 
 1. Use this paragraph ONLY ONCE in a given Office action the
 first time that a claim limitation includes the word "means" or "step" but does
 not invoke treatment under 35 U.S.C.
 112(f) or pre-AIA 35 U.S.C. 112 , sixth
 paragraph because sufficient structure, materials, or acts to perform the recited
 function are present. 
 

 2. In bracket 1, identify each claim limitation, and in
 bracket 2 indicate the claim(s) in which each respective limitation appears.
 

 3. This paragraph must be preceded with form paragraph
 7.30.05 
 unless already cited in a previous Office action.
 
 
 

 ¶ 7.34.23 Rejections Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112,
 Second Paragraph: Claim Limitation is Interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C.
 112, Sixth paragraph, but Disclosure of the Structure, Material, or Acts for Performing the
 Function Recited in a Claim Is Lacking, Insufficient, or Not Clearly Linked
 

 Claim limitation " [1] " invokes 35 U.S.C.
 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph.
 However, the written description fails to disclose the corresponding structure, material, or
 acts for performing the entire claimed function and to clearly link the structure, material,
 or acts to the function. [2] Therefore, the claim is indefinite and is rejected
 under 35 U.S.C.
 112(b) or pre-AIA 35 U.S.C. 112 , second
 paragraph.
 

 Applicant may:

 
 (a) Amend the claim so that the claim limitation will no longer be
 interpreted as a limitation under 35 U.S.C. 112(f) or
 pre-AIA 35 U.S.C.
 112 , sixth paragraph;
 

 (b) Amend the written description of the specification such that it
 expressly recites what structure, material, or acts perform the entire claimed function,
 without introducing any new matter ( 35 U.S.C. 132(a) ); or
 

 (c) Amend the written description of the specification such that it
 clearly links the structure, material, or acts disclosed therein to the function recited
 in the claim, without introducing any new matter ( 35 U.S.C. 132(a) ).
 

 
 If applicant is of the opinion that the written description of the
 specification already implicitly or inherently discloses the corresponding structure,
 material, or acts and clearly links them to the function so that one of ordinary skill in the
 art would recognize what structure, material, or acts perform the claimed function, applicant
 should clarify the record by either:
 

 
 (a) Amending the written description of the specification such that
 it expressly recites the corresponding structure, material, or acts for performing the
 claimed function and clearly links or associates the structure, material, or acts to the
 claimed function, without introducing any new matter ( 35 U.S.C. 132(a) );
 or 
 

 (b) Stating on the record what the corresponding structure,
 material, or acts, which are implicitly or inherently set forth in the written
 description of the specification, perform the claimed function. For more information,
 see 37 CFR
 1.75(d) and MPEP §§ 608.01(o) and
 2181 . 
 

 
 Examiner Note:
 
 1. In bracket 1, recite the limitation that invokes 35 U.S.C.
 112(f) or pre-AIA 35 U.S.C. 112 , sixth
 paragraph. 
 

 2. In bracket 2, explain why there is insufficient disclosure of the
 corresponding structure, material, or acts for performing the entire claimed function or
 why there is no clear linkage between the structure, material, or acts and the function.
 For example, explain that (i) the disclosure is devoid of any structure that performs
 the function in the claim, (ii) the structure described in the specification does not
 perform the entire function in the claim, or (iii) no association between the structure
 and the function can be found in the specification. 
 

 3. This form paragraph must be preceded by form paragraphs
 7.30.03.h , 7.30.03 , and
 7.30.05 
 (to set forth the claim interpretation and statutory basis for 35 U.S.C.
 112(f) or pre-AIA 35 U.S.C. 112 , sixth
 paragraph), and then 7.30.02 or 7.103 and 7.34.01 (to set forth the statutory basis for the
 indefiniteness rejection and identify the claim at issue) and
 7.30.06 ,
 if appropriate (invoked despite the absence of means).
 

 4. When a rejection is made under 35 U.S.C.
 112(b) or pre-AIA 35 U.S.C. 112 , second
 paragraph, because the disclosure is inadequate to support the limitation interpreted
 under 35
 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth
 paragraph, a rejection under 35 U.S.C. 112(a) or
 pre-AIA 35 U.S.C.
 112 , first paragraph, for lack of written description should also
 be considered. See MPEP §
 2181 , subsection IV.
 
 
 

 ¶ 7.34.24 Rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, Second
 Paragraph: Unclear Whether Claim Limitation Is To Be Interpreted Under 35 U.S.C. 112(f) or
 pre-AIA 35 U.S.C. 112, Sixth Paragraph – Result of 3-Prong Test Inconclusive
 

 Claim limitation [1] has been evaluated under the three-prong
 test set forth in MPEP §
 2181 , subsection I, but the result is inconclusive. Thus, it is
 unclear whether this limitation should be interpreted under 35 U.S.C.
 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph,
 because [2] . The boundaries of this claim limitation are ambiguous; therefore,
 the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112 ,
 second paragraph. 
 

 In response to this rejection, applicant must clarify whether this
 limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 ,
 sixth paragraph. Mere assertion regarding applicant’s intent to invoke or not invoke
 35 U.S.C.
 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph is
 insufficient. Applicant may:
 

 
 (a) Amend the claim to clearly invoke 35 U.S.C.
 112(f) or pre-AIA 35 U.S.C. 112 , sixth
 paragraph, by reciting "means" or a generic placeholder for means, or by reciting
 "step." The "means," generic placeholder, or "step" must be modified by functional
 language, and must not be modified by sufficient structure, material, or acts for
 performing the claimed function;
 

 (b) Present a sufficient showing that 35 U.S.C.
 112(f) or pre-AIA 35 U.S.C. 112 , sixth
 paragraph, should apply because the claim limitation recites a function to be performed
 and does not recite sufficient structure, material, or acts to perform that function; 
 

 (c) Amend the claim to clearly avoid invoking 35 U.S.C.
 112(f) or pre-AIA 35 U.S.C. 112 , sixth
 paragraph, by deleting the function or by reciting sufficient structure, material or
 acts to perform the recited function; or
 

 (d) Present a sufficient showing that 35 U.S.C.
 112(f) or pre-AIA 35 U.S.C. 112 , sixth
 paragraph, does not apply because the limitation does not recite a function or does
 recite a function along with sufficient structure, material or acts to perform that
 function. 
 

 
 Examiner Note:
 
 1. This paragraph should be used after the examiner has attempted to
 perform the three-prong analysis from MPEP § 2181 , subsection I, and is
 unable to conclude whether the claim limitation should be treated under
 35 U.S.C.
 112(f) or pre-AIA 35 U.S.C. 112 , sixth
 paragraph, because of ambiguous words in the claim. This situation should be rare.
 

 2. In bracket 1, identify the claim and claim limitation that causes
 the claim to be rejected under 35 U.S.C. 112(b) or
 pre-AIA 35 U.S.C.
 112 , second paragraph.
 

 3. In bracket 2, identify the reason that the three-prong test was
 inclusive. The possibilities include: 
 the term "means" or generic placeholder is modified by a
 word, which is ambiguous regarding whether it conveys structure or function;
 

 the term "step" is modified by a word, which is ambiguous
 regarding whether it conveys an act or a function;
 

 the claim limitation uses the word "means" or a generic
 placeholder coupled with functional language, but it is modified by some structure or
 material that is ambiguous regarding whether that structure or material is sufficient
 for performing the claimed function;
 

 the claim limitation uses the word "step" coupled with
 functional language, but it is modified by some act that is ambiguous regarding
 whether that act is sufficient for performing the claimed function.
 
 
 

 4. This form paragraph may also be used in response to an
 applicant's reply in which applicant disputes the application of 35 U.S.C.
 112(f) or pre-AIA 35 U.S.C. 112 , sixth
 paragraph. See MPEP §
 706.07(a) for guidance on when the second action may be made
 final. 
 

 5. This form paragraph must be preceded by form paragraphs
 7.30.03.h , 7.30.03 , and
 7.30.05 
 (to set forth the claim interpretation and statutory basis for 35 U.S.C.
 112(f) or pre-AIA 35 U.S.C. 112 , sixth
 paragraph), and then 7.30.02 or 7.103 and 7.34.01 (to set forth the statutory basis for the
 indefiniteness rejection). 
 
 
 

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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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