MPEP § 2166 — MPEP § 2166
Current through: 2022-07-01

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

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2100 

 Section 2166 
 

 
 
 
 
 
 2166 Rejections Under 35 U.S.C. 112(a) or Pre-AIA 35
 U.S.C. 112, First Paragraph [R-10.2019]
 

 Rejections based on 35 U.S.C. 112(a) or the first paragraph
 of pre-AIA 35 U.S.C.
 112 are discussed in MPEP §§ 2161 - 2165.04 . For a
 discussion of the utility requirements of 35 U.S.C. 112(a) or the first paragraph
 of pre-AIA 35 U.S.C.
 112 , first paragraph, and 35 U.S.C. 101 , see
 MPEP
 §§ 2107 - 2107.03 . Form paragraphs
 7.30.01 , 7.31.01 through 7.31.05 and 7.33.01 should be used,
 as appropriate, to make rejections under 35 U.S.C. 112(a) or the first paragraph
 of pre-AIA 35 U.S.C.
 112 .
 

 ¶ 7.30.01 Statement of Statutory Basis, 35 U.S.C. 112(a) or the first
 paragraph of pre-AIA 35 U.S.C. 112
 

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

 
 (a) IN GENERAL.—The specification shall contain a written
 description of the invention, and of the manner and process of making and using it, in such
 full, clear, concise, and exact terms as to enable any person skilled in the art to which
 it pertains, or with which it is most nearly connected, to make and use the same, and shall
 set forth the best mode contemplated by the inventor or joint inventor of carrying out the
 invention.
 

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

 
 The specification shall contain a written description of the
 invention, and of the manner and process of making and using it, in such full, clear,
 concise, and exact terms as to enable any person skilled in the art to which it pertains,
 or with which it is most nearly connected, to make and use the same and shall set forth the
 best mode contemplated by the inventor of carrying out his invention.
 

 
 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. Form paragraphs
 7.30.01 
 and 7.30.02 
 are to be used ONLY ONCE in a given Office action.
 
 
 

 ¶ 7.31.01 Rejection, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 1st
 Paragraph, Description Requirement, Including New Matter Situations
 

 Claim [1] rejected under 35 U.S.C.
 112(a) or pre-AIA 35 U.S.C. 112 , first paragraph, as
 failing to comply with the written description requirement. The claim(s) contains subject
 matter which was not described in the specification in such a way as to reasonably convey to
 one skilled in the relevant art that the inventor or a joint inventor, or for applications
 subject to pre-AIA 35 U.S.C.
 112 , the inventor(s), at the time the application was filed, had
 possession of the claimed invention. [2] 

 Examiner Note:
 
 1. This rejection must be preceded
 by form paragraph 7.30.01 or 7.103 .
 

 2. In bracket 1, pluralize "Claim" if necessary, insert claim
 number(s), and insert --is-- or --are-- as appropriate.
 

 3. In bracket 2, identify (by suitable reference to page and line
 numbers and/or drawing figures) the subject matter not properly described in the
 application as filed, and provide an explanation of your position. The explanation
 should include any questions the examiner asked which were not satisfactorily resolved
 and consequently raise doubt as to possession of the claimed invention at the time of
 filing.
 
 
 

 Form paragraph 7.31.02 should be used when it is the
 examiner’s position that nothing within the scope of the claims is enabled. In such a
 rejection, the examiner should explain all the reasons why nothing within the scope of the
 claim is enabled. To make sure all relevant issues are raised, this should include any
 issues regarding the breadth of the claims relative to the guidance in the disclosure. 
 

 ¶ 7.31.02 Rejection, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 1st
 Paragraph, Enablement 
 

 Claim [1] rejected under 35 U.S.C.
 112(a) or pre-AIA 35 U.S.C. 112 , first paragraph, as
 failing to comply with the enablement requirement. The claim(s) contains subject matter which
 was not described in the specification in such a way as to enable one skilled in the art to
 which it pertains, or with which it is most nearly connected, to make and/or use the
 invention. [2] 

 Examiner Note:
 
 1. This rejection must be preceded
 by form paragraph 7.30.01 or 7.103 .
 

 2. If the problem is one of scope,
 form paragraph 7.31.03 should be used.
 

 3. In bracket 2, identify the claimed subject matter for which the
 specification is not enabling. Also explain why the specification is not enabling,
 applying the factors set forth in In re Wands , 858 F.2d 731, 737, 8
 USPQ2d 1400, 1404 (Fed. Cir. 1998) as appropriate. See also MPEP §§ 2164.01(a) 
 and 2164.04 . The explanation should include any questions the
 examiner may have asked which were not satisfactorily resolved and consequently raise
 doubt as to enablement.
 

 4. Where an essential component or
 step of the invention is not recited in the claims, use form paragraph
 7.33.01 .
 
 
 

 Form paragraph 7.31.03 should be used when it is the
 examiner’s position that something within the scope of the claims is enabled but the claims
 are not limited to that scope.
 

 ¶ 7.31.03 Rejection, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 1st
 Paragraph: Scope of Enablement
 

 Claim [1] rejected under 35 U.S.C.
 112(a) or pre-AIA 35 U.S.C. 112 , first paragraph,
 because the specification, while being enabling for [2] , does not reasonably
 provide enablement for [3] . The specification does not enable any person skilled
 in the art to which it pertains, or with which it is most nearly connected, to
 [4] the invention commensurate in scope with these claims. [5] 

 Examiner Note:
 
 1. This rejection must be preceded
 by form paragraph 7.30.01 or 7.103 .
 

 2. In bracket 1, pluralize "Claim" if necessary, insert claim
 number(s), and insert --is-- or --are-- as appropriate.
 

 3. This form paragraph is to be used when the scope of the claims is
 not commensurate with the scope of the enabling disclosure.
 

 4. In bracket 2, identify the claimed subject matter for which the
 specification is enabling. This may be by reference to specific portions of the
 specification.
 

 5. In bracket 3, identify aspect(s) of the claim(s) for which the
 specification is not enabling.
 

 6. In bracket 4, fill in only the appropriate portion of the statute,
 i.e., one of the following: --make--, --use--, or --make and use--.
 

 7. In bracket 5, identify the claimed subject matter for which the
 specification is not enabling. Also explain why the specification is not enabling,
 applying the factors set forth in In re Wands , 858 F.2d 731, 737, 8
 USPQ2d 1400, 1404 (Fed. Cir. 1998) as appropriate. See also MPEP §§ 2164.01(a) 
 and 2164.04 . The explanation should include any questions posed
 by the examiner which were not satisfactorily resolved and consequently raise doubt as
 to enablement.
 
 
 

 ¶ 7.31.04 Rejection, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 1st
 Paragraph: Best Mode Requirement
 

 Claim [1] rejected under 35 U.S.C.
 112(a) or pre-AIA 35 U.S.C. 112 , first paragraph,
 because the best mode contemplated by the inventor or a joint inventor, or for applications
 subject to pre-AIA 35 U.S.C.
 112 , the inventor(s), has not been disclosed. Evidence of concealment of
 the best mode is based upon [2] . 
 

 Examiner Note:
 
 1. This rejection must be preceded
 by form paragraph 7.30.01 or 7.103 .
 

 2. In bracket 2, insert the basis
 for holding that the best mode has been concealed, e.g., the quality of applicant’s
 disclosure is so poor as to effectively result in concealment.
 

 3. Use of this form paragraph
 should be rare. See MPEP
 §§ 2165 - 2165.04 .
 
 
 

 ¶ 7.31.05 Rejection, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, First
 Paragraph: Scope of Enablement of a "Single Means" Claim
 

 Claim [1] rejected under 35 U.S.C.
 112(a) or pre-AIA 35 U.S.C. 112 , first paragraph,
 because the claim purports to invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 ,
 sixth paragraph, but fails to recite a combination of elements as required by that statutory
 provision and thus cannot rely on the specification to provide the structure, material or acts
 to support the claimed function. As such, the claim recites a function that has no limits and
 covers every conceivable means for achieving the stated function, while the specification
 discloses at most only those means known to the inventor. Accordingly, the disclosure is not
 commensurate with the scope of the claim.
 

 Examiner Note:
 
 1. This rejection must be preceded by form paragraph
 7.30.01 or
 7.103 .
 

 2. In bracket 1, pluralize “Claim” if necessary, insert claim
 number(s), and insert --is-- or --are-- as appropriate.
 

 3. This form paragraph is to be used only when the claim recites a
 single element and that element is in means-plus-function format. This situation should
 be rare.
 
 
 

 Form paragraph 7.33.01 should be used when it is the
 examiner’s position that a feature considered critical or essential by applicant to the
 practice of the claimed invention is missing from the claim.
 

 ¶ 7.33.01 Rejection, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 1st
 Paragraph, Essential Subject Matter Missing From Claims (Enablement)
 

 Claim [1] rejected under
 35 U.S.C.
 112(a) or pre-AIA 35 U.S.C. 112 , first paragraph, as
 based on a disclosure which is not enabling. The disclosure does not enable one of ordinary
 skill in the art to practice the invention without [2] , which is/are critical or
 essential to the practice of the invention but not included in the claim(s). See In
 re Mayhew , 527 F.2d 1229, 188 USPQ 356 (CCPA 1976). [3] 

 Examiner Note:
 
 1. This rejection must be preceded
 by form paragraph 7.30.01 or 7.103 .
 

 2. In bracket 2, recite the subject
 matter omitted from the claims.
 

 3. In bracket 3, give the rationale
 for considering the omitted subject matter critical or essential.
 

 4. The examiner shall cite the
 statement, argument, date, drawing, or other evidence which demonstrates that a
 particular feature was considered essential by the applicant, is not reflected in the
 claims which are rejected.
 
 
 

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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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 03/09/2026 20:49:33