MPEP § 2133 — MPEP § 2133
Current through: 2022-07-01

2133-Pre-AIA 35 U.S.C. 102(b) 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2100 

 Section 2133 
 

 
 
 
 
 
 2133 Pre-AIA 35 U.S.C. 102(b) [R-01.2024]

 [Editor Note: This MPEP section is not applicable to applications
 subject to examination under the first inventor to file (FITF) provisions of the AIA as
 set forth in 35 U.S.C. 100 (note) . See MPEP §
 2159 et seq. to determine whether an application is subject to
 examination under the FITF provisions, and MPEP §
 2150 et seq. for examination of applications subject to those
 provisions. See MPEP § 2152 et seq. for a detailed
 discussion of AIA 35 U.S.C. 102(a) and (b) .] 

 
 Pre-AIA 35 U.S.C. 102 
 Conditions for patentability; novelty and loss of right to patent. 

 A person shall be entitled to a patent unless -

 *****

 
 (b) the invention was patented or described in a printed publication
 in this or a foreign country or in public use or on sale in this country, more
 than one year prior to the date of application for patent in the United
 States.
 

 
 *****

 
 I. THE 1-YEAR GRACE PERIOD IS EXTENDED TO THE NEXT BUSINESS DAY IF IT WOULD
 OTHERWISE END ON A HOLIDAY OR WEEKEND Publications, patents, public uses and sales must occur “more than one
 year prior to the date of application for patent in the United States” in order to bar a
 patent under pre-AIA
 35 U.S.C. 102(b) . However, publications, patents, public uses and
 sales will not bar a patent if the 1-year grace period otherwise ends on a Saturday,
 Sunday, or federal holiday and the application’s U.S. filing date is the next succeeding
 business day. Ex parte Olah, 131 USPQ 41 (Bd. App. 1960) and
 35 U.S.C.
 21(b) . The provisions of 35 U.S.C. 21(b) still apply
 notwithstanding the provisions of 37 CFR 1.6(a)(2) and
 37 CFR
 1.10 , which accord a filing date as of the date of deposit as
 Priority Mail Express® with the U.S. Postal Service and 37 CFR 1.6(a)(4) ,
 which accords a filing date as of the date of submission using the USPTO patent
 electronic filing system.
 

 II. THE 1-YEAR TIME BAR IS MEASURED FROM THE U.S. FILING DATE If one discloses one's own work more than 1 year before the filing of
 the patent application, that person is barred from obtaining a patent. In re
 Katz, 687 F.2d 450, 454, 215 USPQ 14, 17 (CCPA 1982). The 1-year time bar
 is measured from the U.S. filing date. Thus, applicant will be barred from obtaining a
 patent if the public came into possession of the invention on a date before the 1-year
 grace period ending with the U.S. filing date. It does not matter how the public came
 into possession of the invention. Public possession could occur by a public use, public
 sale, a publication, a patent or any combination of these. In addition, the prior art
 need not be identical to the claimed invention but will bar patentability if it is an
 obvious variant thereof. In re Foster, 343 F.2d 980, 145 USPQ 166
 (CCPA 1966). See MPEP § 2139.01 regarding the effective
 U.S. filing date of a claimed invention in an application. 
 

 
 2133.01 Rejections of Continuation-In-Part (CIP) Applications [R-10.2019]

 [Editor Note: This MPEP section is not applicable to applications
 subject to examination under the first inventor to file (FITF) provisions of the AIA
 as set forth in 35 U.S.C. 100 (note) . See
 MPEP
 § 2159 et seq. to determine whether an application is
 subject to examination under the FITF provisions, and MPEP §
 2150 et seq. for examination of applications subject to
 those provisions. See MPEP § 2152 et seq. for a detailed
 discussion of AIA 35 U.S.C. 102(a) and
 (b) .] 

 The effective filing date of a claimed invention is determined on a
 claim-by-claim basis and not an application-by-application basis. See
 MPEP §
 2139.01 for guidance in determining the effective filing date
 of a claimed invention under pre-AIA 35 U.S.C. 102 .
 

 When applicant files a continuation-in-part application,
 none of whose claims are supported by the parent application under pre-AIA 35 U.S.C.
 112 , first paragraph, the effective filing date is the filing date
 of the child CIP. Any prior art disclosing the invention or an obvious variant thereof
 having a critical reference date more than 1 year prior to the filing date of the child
 will bar the issuance of a patent under pre-AIA 35 U.S.C. 102(b) . 
 Paperless Accounting v. Bay Area Rapid Transit System, 804 F.2d 659, 665,
 231 USPQ 649, 653 (Fed. Cir. 1986). 
 

 Any claim that only contains subject matter that is
 fully supported in compliance with the statutory requirements of pre-AIA 35 U.S.C.
 112 , first paragraph, by the parent application of a CIP will have
 the effective filing date of the parent application. On the other hand, any claim that
 contains a limitation that is only supported as required by pre-AIA 35 U.S.C.
 112 , first paragraph, by the disclosure of the CIP application
 will have the effective filing date of the CIP application. See, e.g., 
 Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 104 USPQ2d 1641
 (Fed. Cir. 2012)(patent issuing from parent application was relied upon as prior art
 against the claims in CIPs that did not find support in the parent application);
 Studiengesellschaft Kohle, m.b.H. v. Shell Oil Co., 112 F.3d 1561,
 1564, 42 USPQ2d 1674 (Fed. Cir. 1997)(“To qualify for an earlier filing date, section
 120 requires, inter alia, that the earlier-filed U.S. patent
 application contain a disclosure which complies with 35 U.S.C. § 112 , p 1 (1994) for each
 claim in the newly filed application. Thus, this benefit only applies to claims that
 recite subject matter adequately described in an earlier application, and does not
 extend to claims with subject matter outside the description in the earlier
 application.”). 
 

 

 
 2133.02 Rejections Based on Publications and Patents [R-11.2013]

 [Editor Note: This MPEP section is not applicable to applications
 subject to examination under the first inventor to file (FITF) provisions of the AIA
 as set forth in 35 U.S.C. 100 (note) . See
 MPEP
 § 2159 et seq. to determine whether an application is
 subject to examination under the FITF provisions, and MPEP §
 2150 et seq. for examination of applications subject to
 those provisions. See MPEP § 2152 et seq. for a detailed
 discussion of AIA 35 U.S.C. 102(a) and
 (b) .] 

 I. APPLICANT’S OWN WORK WHICH WAS AVAILABLE TO THE PUBLIC BEFORE THE GRACE PERIOD
 MAY BE USED IN A PRE-AIA 35 U.S.C. 102(b) REJECTION “Any invention described in a printed publication more than one year
 prior to the date of a patent application is prior art under Section 102(b) ,
 even if the printed publication was authored by the patent applicant.” De
 Graffenried v. United States, 16 USPQ2d 1321, 1330 n.7 (Cl. Ct. 1990). “Once an
 inventor has decided to lift the veil of secrecy from his [or her] work, he [or she]
 must choose between the protection of a federal patent, or the dedication of his [or
 her] idea to the public at large.” Bonito Boats, Inc. v. Thunder Craft
 Boats, Inc., 489 U.S. 141, 148, 9 USPQ2d 1847, 1851 (1989).
 

 II. A PRE-AIA 35 U.S.C. 102(b) REJECTION CREATES A STATUTORY BAR TO PATENTABILITY
 OF THE REJECTED CLAIMS A rejection under pre-AIA 35 U.S.C. 102(b) cannot
 be overcome by affidavits and declarations under 37 CFR
 1.131 (Rule 131 Declarations), foreign priority dates, or
 evidence that applicant himself invented the subject matter. Outside the 1-year grace
 period, applicant is barred from obtaining a patent containing any anticipated or
 obvious claims. In re Foster, 343 F.2d 980, 984, 145 USPQ 166, 170
 (CCPA 1965).
 

 
 2133.02(a) Overcoming a Pre-AIA 35 U.S.C. 102(b)
 Rejection Based on a Printed Publication or Patent [R-10.2019]
 

 In all applications, an applicant may overcome a
 pre-AIA 35
 U.S.C. 102 rejection by persuasively arguing that the claims
 are patentably distinguishable from the prior art, or by amending the claims to
 patentably distinguish over the prior art. Additional ways available to overcome a
 rejection based on pre-AIA 35 U.S.C. 102 prior art depend on the applicable
 paragraph of pre-AIA 35 U.S.C. 102 . See MPEP § 2132.01 for
 overcoming a rejection under pre-AIA 35 U.S.C. 102(a) and
 MPEP §
 2136.05 et seq. for overcoming a rejection under pre-AIA 35 U.S.C.
 102(e) . 
 

 A rejection based on pre-AIA 35 U.S.C. 102(b) can be
 overcome by:
 

 
 (A) Persuasively arguing that the claims are patentably
 distinguishable from the prior art;
 

 (B) Amending the claims to patentably distinguish over the prior
 art;
 

 (C) Submitting and perfecting a benefit claim under
 35
 U.S.C. 120 , within the time period set in
 37 CFR
 1.78 (or by filing a grantable petition to accept an
 unintentionally delayed claim under 37 CFR 1.78 as explained in
 MPEP § 211.04 ):
 
 (1) 
 
 (a) for applications filed on or after
 September 16, 2012, by filing a corrected application data sheet
 under 37 CFR 1.76 
 which contains a specific reference to a prior application in
 accordance with 37 CFR 1.78 , or
 
 

 (b) for applications filed prior to
 September 16, 2012, by amending the specification of the
 application to contain a specific reference to a prior application
 or by filing a corrected application data sheet under
 37 CFR 1.76 
 which contains a specific reference to a prior application in
 accordance with 37 CFR
 1.78 ,
 

 
 

 and

 

 (2) by establishing that the prior application
 satisfies the enablement and written description requirements of
 35 U.S.C. 112(a) (for applications filed on or
 after September 16, 2012), or 35 U.S.C. 112 , first
 paragraph (for applications filed prior to September 16, 2012). See
 MPEP § 211 et
 seq. ;
 

 
 or

 

 (D) Submitting and perfecting a benefit claim under
 35 U.S.C.
 119(e) by complying with the requirements of
 37 CFR
 1.78 or filing a grantable petition to accept an
 unintentionally delayed claim under 37 CFR 1.78 (see item (C)
 above). Because a provisional application could not have been filed more than
 one year prior to the filing of a nonprovisional application that claims
 benefit to the provisional application, once the benefit claim under
 35 U.S.C.
 119(e) is perfected, the rejection must be reconsidered
 to determine whether the prior art still qualifies as prior art under
 pre-AIA 35
 U.S.C. 102(b) or whether the prior art qualifies as prior
 art under pre-AIA 35 U.S.C. 102(a) . Note, however, effective
 December 18, 2013, title II of the Patent Law Treaties Implementation Act
 (PLTIA) provides for restoration of the right to claim benefit of a provisional
 application filed after the expiration of the twelve-month period in
 35 U.S.C.
 119(e) . See MPEP §
 211.01(a) , subsection II. If the prior art qualifies
 as prior art under pre-AIA 35 U.S.C. 102(a) ,
 see MPEP §
 2132.01 as to how to overcome the pre-AIA 35 U.S.C.
 102(a) rejection.
 

 
 

 

 
 2133.03 Rejections Based on “Public Use” or “On Sale” [R-01.2024]

 [Editor Note: This MPEP section is applicable regardless of whether an
 application is examined under the AIA or under pre-AIA law. For applications subject
 to the first inventor to file (FITF) provisions of the AIA, the relevant time is
 “before the effective filing date of the claimed invention". For applications subject
 to pre-AIA 35
 U.S.C. 102 , the relevant time is “at the time of the
 invention”. See MPEP § 2152.02(c) through (e) for a
 detailed discussion of the public use and on sale provisions of AIA 35 U.S.C.
 102 . Many of the court decisions discussed in this section
 involved applications or patents subject to pre-AIA 35 U.S.C. 102 . These
 court decisions may be applicable to applications and patents subject to
 AIA 35
 U.S.C. 102 but the relevant time is before the effective filing
 date of the claimed invention and not at the time of the invention.] 

 An applicant may make an admission, or submit evidence of
 sale of the invention or knowledge of the invention by others, or the examiner may have
 personal knowledge that the invention was sold by applicant or known by others. If the
 activity is by an entity other than the inventors, one or more joint inventors, or the
 assignee, such as sale by another, manufacture by another or disclosure of the invention
 by the inventor, one or more joint inventors, or the assignee to another then both
 pre-AIA 35 U.S.C.
 102(a) and (b) may be applicable. If the
 evidence only points to knowledge within the year prior to the effective filing date
 then pre-AIA 35 U.S.C.
 102(a) applies. However, no rejection under pre-AIA 35 U.S.C.
 102(a) should be made if there is evidence that inventor made the
 invention and only disclosed it to others within the year prior to the effective filing
 date. Pre-AIA 35
 U.S.C. 102(b) is applicable if the activity occurred more than 1
 year prior to the effective filing date of a claimed invention in the application.
 

 Pre-AIA 35 U.S.C.
 102(b) “contains several distinct bars to patentability, each of
 which relates to activity or disclosure more than one year prior to the date of the
 application. Two of these - the ‘public use’ and the ‘on sale’ objections - are
 sometimes considered together although it is quite clear that either may apply when the
 other does not.” Dart Indus. v. E.I. du Pont de Nemours & Co., 
 489 F.2d 1359, 1365, 179 USPQ 392, 396 (7th Cir. 1973). There may be a public use of an
 invention absent any sales activity. Likewise, there may be a nonpublic, e.g., “secret,”
 sale or offer to sell an invention which nevertheless constitutes a statutory bar.
 Hobbs v. United States, 451 F.2d 849, 859-60, 171 USPQ 713, 720 (5th Cir.
 1971). It is noted that AIA 35 U.S.C. 102(a)(1) uses the
 same “on sale” term as pre-AIA 35 U.S.C. 102(b) and is treated as having the same
 meaning. Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 
 139 S.Ct. 628, 129 USPQ2d 1189 (2019). See MPEP §
 2152.02(d) .
 

 In similar fashion, not all “public use” and “on sale” activities will
 necessarily occasion the identical result. Although both activities affect how an
 inventor may use an invention prior to the filing of a patent application,
 “non-commercial” pre-AIA 35 U.S.C. 102(b) activity may not be viewed the same as
 similar “commercial” activity. See MPEP § 2133.03(a) and
 § 2133.03(e)(1) . Likewise, “public use” activity by
 an applicant may not be considered in the same light as similar “public use” activity by
 one other than an applicant. See MPEP § 2133.03(a) and
 § 2133.03(e)(7) . Additionally, the concept of “experimental
 use” may have different significance in “commercial” and “non-commercial” environments.
 See MPEP
 § 2133.03(c) and § 2133.03(e) - § 2133.03(e)(6) . 
 

 It should be noted that pre-AIA 35 U.S.C. 102(b) may create
 a bar to patentability either alone, if the device in public use or placed on sale
 anticipates a later claimed invention, or in conjunction with 35 U.S.C. 103 , if
 the claimed invention would have been obvious from the device in conjunction with the
 prior art. LaBounty Mfg. v. United States Int’l Trade Comm’n, 958 F.2d 1066, 1071, 22 USPQ2d
 1025, 1028 (Fed. Cir. 1992).
 

 POLICY CONSIDERATIONS 
 (A) “One policy underlying the [on-sale] bar is to obtain
 widespread disclosure of new inventions to the public via patents as soon as
 possible.” RCA Corp . v. Data Gen. Corp., 
 887 F.2d 1056, 1062, 12 USPQ2d 1449, 1454 (Fed. Cir. 1989). 
 

 (B) Another policy underlying the public use and on-sale bars is
 to prevent the inventor from commercially exploiting the exclusivity of the
 invention substantially beyond the statutorily authorized period. RCA
 Corp. v. Data Gen. Corp., 887 F.2d 1056, 1062, 12 USPQ2d 1449, 1454
 (Fed. Cir. 1989). See MPEP § 2133.03(e)(1) . 
 

 (C) Another underlying policy for the public use and on-sale bars
 is to discourage “the removal of inventions from the public domain which the
 public justifiably comes to believe are freely available.” Manville
 Sales Corp. v. Paramount Sys., Inc., 917 F.2d 544, 549, 16 USPQ2d
 1587, 1591 (Fed. Cir. 1990).
 

 
 
 2133.03(a) “Public Use” [R-07.2022]

 [Editor Note: This MPEP section may be applicable to
 applications subject to examination under the first inventor to file (FITF)
 provisions of the AIA as set forth in 35 U.S.C. 100 (note) . See
 MPEP § 2159 et seq. to determine whether an application
 is subject to examination under the FITF provisions, and MPEP §
 2150 et seq. for examination of applications subject to
 those provisions. See MPEP § 2152.02(c) through (e) for
 a detailed discussion of the public use and on sale provisions of
 AIA
 35 U.S.C. 102 .] 

 I. TEST FOR “PUBLIC USE” The public use bar under pre-AIA 35 U.S.C. 102(b) 
 arises where the invention is in public use before the critical date and is ready
 for patenting. Invitrogen Corp. v. Biocrest Manufacturing L.P., 
 424 F.3d 1374, 76 USPQ2d 1741 (Fed. Cir. 2005). As explained by the court, 
 

 
 The proper test for the public use prong of the
 [pre-AIA]
 § 102(b) statutory bar is whether the purported use: (1)
 was accessible to the public; or (2) was commercially exploited. Commercial
 exploitation is a clear indication of public use, but it likely requires more
 than, for example, a secret offer for sale. Thus, the test for the public use
 prong includes the consideration of evidence relevant to experimentation, as
 well as, inter alia , the nature of the activity that
 occurred in public; public access to the use; confidentiality obligations
 imposed on members of the public who observed the use; and commercial
 exploitation…. That evidence is relevant to discern whether the use was a
 public use that could raise a bar to patentability, but it is distinct from
 evidence relevant to the ready for patenting component of
 Pfaff ’s two-part test, another necessary requirement of
 a public use bar.
 

 
 Id. at 1380, 76 USPQ2d at 1744 (citations omitted). See
 MPEP §
 2133.03(c) for a discussion of the “ready for patenting”
 prong of the public use and on sale statutory bars.
 

 “[T]o constitute the public use of an invention it is not
 necessary that more than one of the patent articles should be publicly used. The
 use of a great number may tend to strengthen the proof, but one well defined case
 of such use is just as effectual to annul the patent as many.” Likewise, it is not
 necessary that more than one person use the invention. Egbert
 v. Lippmann, 104 U.S. 333, 336 (1881).
 

 II. PUBLIC KNOWLEDGE IS NOT NECESSARILY PUBLIC USE UNDER PRE-AIA 35 U.S.C.
 102(b) Mere knowledge of the invention by the public does not warrant
 rejection under pre-AIA 35 U.S.C. 102(b) . Pre-AIA 35 U.S.C.
 102(b) bars public use or sale, not public knowledge.
 TP Labs., Inc. v. Professional Positioners, Inc., 724 F.2d 965,
 970, 220 USPQ 577, 581 (Fed. Cir. 1984).
 

 Note, however, that public knowledge may provide grounds for
 rejection under pre-AIA 35 U.S.C. 102(a) . See MPEP § 2132 . 
 

 A. Commercial Versus Noncommercial Use and the Impact of
 Secrecy There are limited circumstances in which a secret or
 confidential use of an invention may give rise to the public use bar.
 “[S]ecrecy of use alone is not sufficient to show that existing knowledge has
 not been withdrawn from public use; commercial exploitation is also forbidden.”
 Invitrogen, 424 F.3d at 1382, 76 USPQ2d at 1745-46 (The
 fact that patentee secretly used the claimed invention internally before the
 critical date to develop future products that were never sold was by itself
 insufficient to create a public use bar to patentability.).
 

 1. “Public Use” and “Non-secret Use” Are Not Necessarily
 Synonymous “Public” is not necessarily synonymous with “non- secret.”
 The fact “that non-secret uses of the device were made [by the inventor or
 someone connected with the inventor] prior to the critical date is not
 itself dispositive of the issue of whether activity barring a patent under
 pre-AIA
 35 U.S.C. 102(b) occurred. The fact that the device
 was not hidden from view may make the use not secret, but nonsecret use is
 not ipso facto ‘public use’ activity. Nor, it must be
 added, is all secret use ipso facto not ‘public use’
 within the meaning of the statute,” if the inventor is making commercial use
 of the invention under circumstances which preserve its secrecy. TP
 Labs., Inc. v. Professional Positioners, Inc., 724 F.2d 965, 972, 220
 USPQ 577, 583 (Fed. Cir. 1983) (citations omitted). 
 

 2. Even If the Invention Is Hidden, Inventor Who Puts Machine or Article
 Embodying the Invention in Public View Is Barred from Obtaining a Patent
 as the Invention Is in Public Use When the inventor or someone connected to the inventor puts
 the invention on display or sells it, there is a “public use” within the
 meaning of pre-AIA 35 U.S.C. 102(b) even though by its very
 nature an invention is completely hidden from view as part of a larger
 machine or article, if the invention is otherwise used in its natural and
 intended way and the larger machine or article is accessible to the public.
 In re Blaisdell, 242 F.2d 779, 783, 113 USPQ 289, 292
 (CCPA 1957); Hall v. Macneale, 107 U.S. 90, 96-97 (1882); Ex
 parte Kuklo, 25 USPQ2d 1387, 1390 (Bd. Pat. App. & Inter.
 1992) (Display of equipment including the structural features of the claimed
 invention to visitors of laboratory is public use even though public did not
 see inner workings of device. The person to whom the invention is publicly
 disclosed need not understand the significance and technical complexities of
 the invention.).
 

 3. There Is No Public Use If Inventor Restricted Use to Locations Where
 There Was a Reasonable Expectation of Privacy and the Use Was for His or
 Her Own Enjoyment An inventor’s private use of the invention, for his or her
 own enjoyment is not a public use. Moleculon Research
 Corp. v. CBS, Inc., 793 F.2d 1261, 1265, 229 USPQ 805, 809
 (Fed. Cir. 1986) (Inventor showed inventive puzzle to close friends while in
 his dorm room and later the president of the company at which he was working
 saw the puzzle on the inventor’s desk and they discussed it. Court held that
 the inventor retained control and thus these actions did not result in a
 “public use.”).
 

 4. The Presence or Absence of a Confidentiality Agreement is Not
 Dispositive of the Public Use Issue “The presence or absence of a confidentiality agreement is
 not dispositive of the public use issue, but ‘is one factor to be considered
 in assessing all the evidence.’” Bernhardt, L.L.C. v. Collezione
 Europa USA, Inc., 386 F.3d 1371, 1380-81, 72 USPQ2d 1901, 1909
 (Fed. Cir. 2004) (quoting Moleculon Research Corp. v. CBS
 Inc., 793 F.2d 1261, 1266, 229 USPQ 805, 808 (Fed. Cir. 1986)).
 The court stressed that it is necessary to analyze the evidence of public
 use in the context of policies that underlie the public use and on sale bar
 that include “‘discouraging removal of inventions from the public domain
 that the public justifiably believes are freely available, prohibiting an
 extension of the period for exploiting an invention, and favoring prompt and
 widespread disclosure of inventions.’” Bernhardt, 386
 F.3d at 1381, 72 USPQ2d at 1909. See also Invitrogen, 424
 F.3d at 1379, 76 USPQ2d at 1744; MPEP § 2133.03 , subsection
 I. Evidence that the court emphasized included the “‘nature of the activity
 that occurred in public; the public access to and knowledge of the public
 use; [and] whether there were any confidentiality obligations imposed on
 persons who observed the use.’” Bernhardt, 386 F.3d at
 1381, 72 USPQ2d at 1909. For example, the court in
 Bernhardt noted that an exhibition display at issue in
 the case “was not open to the public, that the identification of attendees
 was checked against a list of authorized names by building security and
 later at a reception desk near the showroom, that attendees were escorted
 through the showroom, and that the attendees were not permitted to make
 written notes or take photographs inside the showroom.”
 Id. The court remanded the issue of whether the
 exhibition display was a public use for further proceedings since the
 district court “focused on the absence of any confidentiality agreements and
 did not discuss or analyze how the totality of the circumstances
 surrounding” the exhibition “comports with the policies underlying the
 public use bar.” Id. 

 B. Use by Third Parties Deriving the Invention from
 Applicant 
 

 An Invention Is in Public Use If the Inventor Allows Another To Use
 the Invention Without Restriction or Obligation of Secrecy “Public use” of a claimed invention under pre-AIA 35 U.S.C.
 102(b) occurs when the inventor allows another person
 to use the invention without limitation, restriction or obligation of
 secrecy to the inventor.” In re Smith, 714 F.2d 1127,
 1134, 218 USPQ 976, 983 (Fed. Cir. 1983). The presence or absence of a
 confidentiality agreement is not itself determinative of the public use
 issue, but is one factor to be considered along with the time, place, and
 circumstances of the use which show the amount of control the inventor
 retained over the invention. Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1265, 229 USPQ 805, 809
 (Fed. Cir. 1986). See Ex parte C, 27 USPQ2d 1492, 1499
 (Bd. Pat. App. & Inter. 1992) (Inventor sold inventive soybean seeds to
 growers who contracted and were paid to plant the seeds to increase stock
 for later sale. The commercial nature of the use of the seed coupled with
 the “on-sale” aspects of the contract and apparent lack of confidentiality
 requirements rose to the level of a “public use” bar.); Egbert
 v. Lippmann, 104 U.S. 333, 336 (1881) (Public use found
 where inventor allowed another to use inventive corset insert, though hidden
 from view during use, because he did not impose an obligation of secrecy or
 restrictions on its use.). 
 

 C. Use by Independent Third Parties 
 

 Use by an Independent Third Party Is Public
 Use If It Sufficiently “Informs” the Public of the Invention or a
 Competitor Could Reasonably Ascertain the Invention Any “nonsecret” use of an invention by someone unconnected
 to the inventor, such as someone who has independently made the invention,
 in the ordinary course of a business for trade or profit may be a “public
 use,” Bird Provision Co. v. Owens Country Sausage, Inc., 568 F.2d 369, 374-76, 197 USPQ 134, 138-40 (5th
 Cir. 1978). Additionally, even a “secret” use by another inventor of a
 machine or process to make a product is “public” if the details of the
 machine or process are ascertainable by inspection or analysis of the
 product that is sold or publicly displayed. Gillman v.
 Stern, 114 F.2d 28, 46 USPQ 430 (2d Cir. 1940); Dunlop
 Holdings, Ltd. v. Ram Golf Corp., 524 F.2d 33, 36-7, 188 USPQ
 481, 483-484 (7th Cir. 1975). If the details of an inventive process are not
 ascertainable from the product sold or displayed and the third party has
 kept the invention as a trade secret then that use is not a public use and
 will not bar a patent issuing to someone unconnected to the user.
 W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d
 1540, 1550, 220 USPQ 303, 310 (Fed. Cir. 1983). However, a device qualifies
 as prior art if it places the claimed features in the
 public's possession before the critical date even if other
 unclaimed aspects of the device were not publicly
 available. Lockwood v. American Airlines, Inc., 107 F.3d
 1505, 1570-71, 41 USPQ2d 1961, 1964-65 (Fed. Cir. 1997) (Computer
 reservation system was prior art even though “essential algorithms of the
 SABRE software were proprietary and confidential and...those aspects of the
 system that were readily apparent to the public would not have been
 sufficient to enable one skilled in the art to duplicate the [unclaimed
 aspects of the] system.”). The extent that the public becomes “informed” of
 an invention involved in public use activity by one other than an inventor
 depends upon the factual circumstances surrounding the activity and how
 these comport with the policies underlying the on sale and public use bars.
 Manville Sales Corp. v. Paramount Sys., Inc ., 917 F.2d
 544, 549, 16 USPQ2d 1587, 1591 (Fed. Cir. 1990) (quoting King
 Instrument Corp. v. Otari Corp., 767 F.2d 833, 860, 226 USPQ 402, 406
 (Fed. Cir. 1985)). By way of example, in an allegedly “secret” use by a
 third party other than an inventor, if a large number of employees of such a
 party, who are not under a promise of secrecy, are permitted unimpeded
 access to an invention, with affirmative steps by the party to educate other
 employees as to the nature of the invention, the public is “informed.”
 Chemithon Corp. v. Proctor & Gamble Co., 287 F. Supp. 291, 308, 159 USPQ
 139, 154 (D.Md. 1968), aff’d., 427 F.2d 893, 165 USPQ 678
 (4th Cir. 1970).
 

 Even if public use activity by one other than an inventor
 is not sufficiently “informing,” there may be adequate grounds upon which to
 base a rejection under pre-AIA 35 U.S.C. 102(f) 
 and pre-AIA 35 U.S.C. 102(g) . See Dunlop
 Holdings Ltd. v. Ram Golf Corp., 524 F.2d 33, 188 USPQ 481 (7th
 Cir. 1975). See MPEP § 2137 and
 §
 2138 . 
 

 

 
 2133.03(b) “On Sale” [R-07.2022]

 [Editor Note: This MPEP section may be applicable to
 applications subject to examination under the first inventor to file (FITF)
 provisions of the AIA as set forth in 35 U.S.C. 100 (note) .
 AIA
 35 U.S.C. 102(a)(1) uses the same “on sale” term as
 pre-AIA 35
 U.S.C. 102(b) and is treated as having the same meaning.
 Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 139 S.Ct. 628 (2019).
 See MPEP § 2159 et seq. to determine whether an application
 is subject to examination under the FITF provisions, and MPEP §
 2150 et seq. for examination of applications subject to
 those provisions. See MPEP § 2152.02(c) through (e) for
 a detailed discussion of the public use and on sale provisions of
 AIA
 35 U.S.C. 102 .] 

 An impermissible sale has occurred if there was a definite sale, or
 offer to sell, more than 1 year before the effective filing date of the claimed
 invention and the subject matter of the sale, or offer to sell, fully anticipated the
 claimed invention or would have rendered the claimed invention obvious by its
 addition to the prior art. Ferag AG v. Quipp, Inc., 45 F.3d 1562,
 1565, 33 USPQ2d 1512, 1514 (Fed. Cir. 1995). The on-sale bar of pre-AIA 35 U.S.C.
 102(b) is triggered if the invention is both (1) the subject of
 a commercial offer for sale not primarily for experimental purposes and (2) ready for
 patenting. Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67, 48 USPQ2d
 1641, 1646-47 (1998). Traditional contract law principles are applied when
 determining whether a commercial offer for sale has occurred. See Linear
 Tech. Corp. v. Micrel, Inc., 275 F.3d 1040, 1048, 61 USPQ2d 1225, 1229
 (Fed. Cir. 2001), petition for cert. filed, 71 USLW 3093 (July 03,
 2002) (No. 02-39); Group One, Ltd. v. Hallmark Cards, Inc., 254
 F.3d 1041,1047, 59 USPQ2d 1121, 1126 (Fed. Cir. 2001) (“As a general proposition, we
 will look to the Uniform Commercial Code (‘UCC’) to define whether … a communication
 or series of communications rises to the level of a commercial offer for sale.”).
 

 I. THE MEANING OF “SALE” A sale is a contract between parties wherein the seller agrees
 “to give and to pass rights of property” in return for the buyer’s payment or
 promise “to pay the seller for the things bought or sold.” In re
 Caveney, 761 F.2d 671, 676, 226 USPQ 1, 4 (Fed. Cir. 1985). A
 contract for the sale of goods requires a concrete offer and acceptance of that
 offer. See, e.g., Linear Tech., 275 F.3d at 1052-54, 61 USPQ2d
 at 1233-34 (Court held there was no sale within the meaning of pre-AIA 35 U.S.C.
 102(b) where prospective purchaser submitted an order for
 goods at issue, but received an order acknowledgement reading “will advise-not
 booked.” Prospective purchaser would understand that order was not accepted.).
 

 “[T]o be ‘on sale’ under [pre-AIA] §
 102(b) , a product must be the subject of a commercial sale
 or offer for sale,” and to be a commercial sale it must be “one that bears the
 general hallmarks of a sale pursuant to Section 2-106 of the Uniform Commercial
 Code.” Medicines Co. v. Hospira, Inc., 827 F.3d 1363, 1364, 119
 USPQ2d 1329, 1330 (Fed. Cir. 2016) ( en banc ). The court in
 Medicines Co. went on to explain “[s]ection 2-106(1) of the
 Uniform Commercial Code describes a ‘sale’ as ‘the passing of title from the
 seller to the buyer for a price.’ U.C.C. § 2-106(1). The passage of title is a
 helpful indicator of whether a product is ‘on sale,’ as it suggests when the
 inventor gives up its interest and control over the product.”
 Id. at 1375, 119 USPQ2d at 1338. The Medicines
 Co. court held “a contract manufacturer’s sale to the inventor of
 manufacturing services where neither title to the embodiments nor the right to
 market the same passes to the supplier does not constitute an invalidating sale
 under §
 102(b) .” Id. at 1381, 119 USPQ2d at
 1342.
 

 A. Conditional Sale May Bar a Patent An invention may be deemed to be “on sale” even though the
 sale was conditional. The fact that the sale is conditioned on buyer
 satisfaction does not, without more, prove that the sale was for an
 experimental purpose. Strong v. General Elec. Co., 434 F.2d
 1042, 1046, 168 USPQ 8, 12 (5th Cir. 1970).
 

 B. Nonprofit Sale May Bar a Patent A “sale” need not be for profit to bar a patent. If the sale
 was for the commercial exploitation of the invention, it is “on sale” within
 the meaning of pre-AIA 35 U.S.C. 102(b) .
 In re Dybel, 524 F.2d 1393, 1401, 187 USPQ 593, 599 (CCPA
 1975) (“Although selling the devices for a profit would have demonstrated the
 purpose of commercial exploitation, the fact that appellant realized no profit
 from the sales does not demonstrate the contrary.”).
 

 C. A Single Sale or Offer To Sell May Bar a Patent Even a single sale or offer to sell the invention may bar
 patentability under pre-AIA 35 U.S.C. 102(b) .
 Consolidated Fruit-Jar Co. v. Wright, 94 U.S. 92, 94 (1876);
 Atlantic Thermoplastics Co. v. Faytex Corp., 970 F.2d
 834, 836-37, 23 USPQ2d 1481, 1483 (Fed. Cir. 1992).
 

 D. A Sale of Rights Is Not a Sale of the Invention and Will Not in
 Itself Bar a Patent “[A]n assignment or sale of the rights in the invention and
 potential patent rights is not a sale of ‘the invention’ within the meaning of
 [pre-AIA]
 section 102(b) .” Moleculon Research Corp. v.
 CBS, Inc., 793 F.2d 1261, 1267, 229 USPQ 805, 809 (Fed. Cir.
 1986); see also Elan Corp., PLC v. Andrx Pharms. Inc., 
 366 F.3d 1336, 1341, 70 USPQ2d 1722, 1728 (Fed. Cir. 2004); In re
 Kollar, 286 F.3d 1326, 1330 n.3, 1330-1331, 62 USPQ2d 1425, 1428
 n.3, 1428-1429 (Fed. Cir. 2002) (distinguishing licenses which trigger the
 on-sale bar (e.g., a standard computer software license wherein the product is
 just as immediately transferred to the licensee as if it were sold), from
 licenses that merely grant rights to an invention which do not per
 se trigger the on-sale bar (e.g., exclusive rights to market the
 invention or potential patent rights)); Group One, Ltd. v. Hallmark
 Cards, Inc., 254 F.3d 1041, 1049 n. 2, 59 USPQ2d 1121, 1129 n. 2
 (Fed. Cir. 2001).
 

 “[T]he mere sale of manufacturing services by a
 contract manufacturer to an inventor to create embodiments of a patented
 product for the inventor does not constitute a ‘commercial sale’ of the
 invention.” Medicines Co. v. Hospira, Inc., 827 F.3d 1363,
 1373, 119 USPQ2d 1329, 1336 (Fed. Cir. 2016) ( en banc ). The
 court in Medicines Co. further stated that “commercial
 benefit—even to both parties in a transaction—is not enough to trigger the
 on-sale bar of § 102(b) ; the transaction
 must be one in which the product is ‘on sale’ in the sense that it is
 ‘commercially marketed.’” Id. at 1373-74, 119 USPQ2d at
 1336-37.
 

 E. Buyer Must Be Uncontrolled by the Seller or Offerer A sale or offer for sale must take place between separate
 entities. In re Caveney, 761 F.2d 671, 676, 226 USPQ 1, 4
 (Fed. Cir. 1985). Where the parties to the alleged sale are related, whether
 there is a statutory bar under pre-AIA 35 U.S.C. 102(b) 
 depends on whether the seller so controls the purchaser that the invention
 remains out of the public’s hands. Ferag AG v. Quipp, Inc., 
 45 F.3d 1562, 1566, 33 USPQ2d 1512, 1515 (Fed. Cir. 1995) (Where the seller is
 a parent company of the buyer company, but the President of the buyer company
 had “essentially unfettered” management authority over the operations of the
 buyer company, the sale was a statutory bar.).
 

 II. OFFERS FOR SALE “Only an offer which rises to the level of a commercial offer for
 sale, one which the other party could make into a binding contract by simple
 acceptance (assuming consideration), constitutes an offer for sale under
 [pre-AIA]
 §102(b) .” Group One, Ltd. v. Hallmark Cards,
 Inc., 254 F.3d 1041, 1048, 59 USPQ2d 1121, 1126 (Fed. Cir. 2001). 
 

 A. Rejected or Unreceived Offer for Sale Is Enough To Bar a
 Patent Since the statute creates a bar when an invention is placed
 “on sale,” a mere offer to sell is sufficient commercial activity to bar a
 patent. In re Theis, 610 F.2d 786, 791, 204 USPQ 188, 192
 (CCPA 1979). Even a rejected offer may create an on sale bar. UMC
 Elecs. v. United States, 816 F.2d 647, 653, 2 USPQ2d 1465, 1469
 (Fed. Cir. 1987). In fact, the offer need not even be actually received by a
 prospective purchaser. Wende v. Horine, 225 F. 501 (7th Cir.
 1915). 
 

 B. Delivery of the Offered Item Is Not Required “It is not necessary that a sale be consummated for the bar to
 operate.” Buildex v. Kason Indus., Inc., 849 F.2d 1461, 1463-64, 7 USPQ2d 1325, 1327-28 (Fed.
 Cir. 1988) (citations omitted). See also Weatherchem Corp. v. J.L.
 Clark, Inc., 163 F.3d 1326, 1333, 49 USPQ2d 1001, 1006-07 (Fed.
 Cir. 1998) (A signed purchase agreement prior to the critical date constituted
 a commercial offer; it was immaterial that there was no delivery of later
 patented caps and no exchange of money until after critical date.).
 

 C. Seller Need Not Have the Goods “On Hand” When the Offer for Sale
 Is Made Goods need not be “on hand” and transferred at the time of the
 sale or offer. The date of the offer for sale is the effective date of the “on
 sale” activity. J. A. La Porte, Inc. v. Norfolk Dredging
 Co., 787 F.2d 1577, 1582, 229 USPQ 435, 438 (Fed. Cir. 1986).
 However, the invention must be complete and “ready for patenting” (see
 MPEP §
 2133.03(c) ) before the critical date. Pfaff
 v. Wells Elecs., Inc., 525 U.S. 55, 67, 48 USPQ2d 1641, 1647
 (1998). See also Micro Chemical, Inc. v. Great Plains Chemical
 Co., 103 F.3d 1538, 1545, 41 USPQ2d 1238, 1243 (Fed. Cir. 1997)
 (The on-sale bar was not triggered by an offer to sell because the inventor
 “was not close to completion of the invention at the time of the alleged offer
 and had not demonstrated a high likelihood that the invention would work for
 its intended purpose upon completion.”); Shatterproof Glass Corp. v.
 Libbey-Owens Ford Co., 758 F.2d 613, 225 USPQ 634 (Fed. Cir. 1985)
 (Where there was no evidence that the samples shown to the potential customers
 were made by the new process and apparatus, the offer to sell did not rise to
 the level of an on sale bar.). Compare Barmag Barmer Maschinenfabrik
 AG v. Murata Mach., Ltd., 731 F.2d 831, 221 USPQ 561 (Fed. Cir.
 1984) (Where a “make shift” model of the inventive product was shown to the
 potential purchasers in conjunction with the offer to sell, the offer was
 enough to bar a patent under pre-AIA 35 U.S.C. 102(b) .).
 
 

 D. Material Terms of an Offer for Sale Must be Present “[A] communication that fails to constitute a definite offer
 to sell the product and to include material terms is not an ‘offer’ in the
 contract sense.” Elan Corp., PLC v. Andrx Pharms. Inc., 366
 F.3d 1336, 1341, 70 USPQ2d 1722, 1728 (Fed. Cir. 2004). The court stated that
 an “offer to enter into a license under a patent for future sale of the
 invention covered by the patent when and if it has been developed... is not an
 offer to sell the patented invention that constitutes an on-sale bar.”
 Id., 70 USPQ2d at 1726. Accordingly, the court concluded
 that Elan’s letter was not an offer to sell a product. In addition, the court
 stated that the letter lacked material terms of a commercial offer such as
 pricing for the product, quantities, time and place of delivery, and product
 specifications and that the dollar amount in the letter was not a price term
 for the sale of the product but rather the amount requested was to form and
 continue a partnership, explicitly referred to as a “licensing fee.”
 Id. 

 III. SALE BY INVENTOR, ASSIGNEE OR OTHERS ASSOCIATED WITH THE INVENTOR IN THE
 COURSE OF BUSINESS A. Sale Activity Need Not Be Public Unlike questions of public use, there is no requirement that
 “on sale” activity be “public.” “Public” as used in pre-AIA 35 U.S.C.
 102(b) modifies “use” only. “Public” does not modify
 “sale.” Hobbs v. United States, 451 F.2d 849, 171 USPQ 713,
 720 (5th Cir. 1971). It is noted that AIA 35 U.S.C.
 102(a)(1) uses the same “on sale” term as
 pre-AIA
 35 U.S.C. 102(b) and is treated as having the same
 meaning. Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA,
 Inc., 139 S.Ct. 628, 129 USPQ2d 1189 (2019). See
 MPEP § 2152.02(d) . 
 

 B. Inventor’s Consent to the Sale Is Not a Prerequisite To Finding an
 On Sale Bar under pre-AIA 35 U.S.C. 102(b) If the invention was placed on sale by a third party who
 obtained the invention from the inventor, a patent is barred even if the
 inventor did not consent to the sale or have knowledge that the invention was
 embodied in the sold article. Electric Storage Battery Co. v.
 Shimadzu, 307 U.S. 5, 41 USPQ 155 (1938); In re
 Blaisdell, 242 F.2d 779, 783, 113 USPQ 289, 292 (CCPA 1957);
 CTS Corp. v. Electro Materials Corp. of America, 469 F.
 Supp. 801, 819, 202 USPQ 22, 38 (S.D.N.Y. 1979). 
 

 C. Objective Evidence of Sale or Offer To Sell Is Needed In determining if a sale or offer to sell the claimed
 invention has occurred, a key question to ask is whether the inventor sold or
 offered for sale a product that embodies the invention claimed in the
 application. Objective evidence such as a description of the inventive product
 in the contract of sale or in another communication with the purchaser controls
 over an uncommunicated intent by the seller to deliver the inventive product
 under the contract for sale. Ferag AG v. Quipp, Inc., 45
 F.3d 1562, 1567, 33 USPQ2d 1512, 1516 (Fed. Cir. 1995) (On sale bar found where
 initial negotiations and agreement containing contract for sale neither clearly
 specified nor precluded use of the inventive design, but an order confirmation
 prior to the critical date did specify use of inventive design.). The purchaser
 need not have actual knowledge of the invention for it to be on sale. The
 determination of whether “the offered product is in fact the claimed invention
 may be established by any relevant evidence, such as memoranda, drawings,
 correspondence, and testimony of witnesses.” RCA Corp. v. Data Gen.
 Corp., 887 F.2d 1056, 1060, 12 USPQ2d 1449, 1452 (Fed. Cir. 1989).
 However, “what the purchaser reasonably believes the inventor to be offering is
 relevant to whether, on balance, the offer objectively may be said to be of the
 patented invention.” Envirotech Corp. v. Westech Eng’g,
 Inc., 904 F.2d 1571, 1576, 15 USPQ2d 1230, 1234 (Fed. Cir. 1990)
 (Where a proposal to supply a general contractor with a product did not mention
 a new design but, rather, referenced a prior art design, the uncommunicated
 intent of the supplier to supply the new design if awarded the contract did not
 constitute an “on sale” bar to a patent on the new design, even though the
 supplier’s bid reflected the lower cost of the new design.). 
 

 IV. SALES BY INDEPENDENT THIRD PARTIES 
 

 A. Sales or Offers for Sale by Independent Third Parties May be Prior
 Art A sale or offer for sale of the invention by an independent
 third party more than 1 year before the effective filing date of applicant’s
 claimed invention may be applied as prior art and may prevent applicant from
 obtaining a patent. “An exception to this rule exists where a patented method
 is kept secret and remains secret after a sale of the unpatented product of the
 method. Such a sale prior to the critical date is a bar if engaged in by the
 patentee or patent applicant, but not if engaged in by another.” In re
 Caveney, 761 F.2d 671, 675-76, 226 USPQ 1, 3-4 (Fed. Cir.
 1985).
 

 B. Nonprior Art Publications Can Be Used as Evidence of Sale Before
 the Critical Date Abstracts identifying a product’s vendor containing
 information useful to potential buyers such as whom to contact, price terms,
 documentation, warranties, training and maintenance along with the date of
 product release or installation before the inventor’s critical date may provide
 sufficient evidence of prior sale by a third party to support a rejection based
 on pre-AIA 35
 U.S.C. 102(b) or 103 . In re
 Epstein, 32 F.3d 1559, 31 USPQ2d 1817 (Fed. Cir. 1994) (Examiner's
 rejection was based on nonprior art published abstracts which disclosed
 software products meeting the claims. The abstracts specified software release
 dates and dates of first installation which were more than 1 year before
 applicant’s filing date.).
 

 

 
 2133.03(c) The “Invention” [R-07.2022]

 [Editor Note: This MPEP section may be applicable to
 applications subject to examination under the first inventor to file (FITF)
 provisions of the AIA as set forth in 35 U.S.C. 100 (note) . See
 MPEP § 2159 et seq. to determine whether an application
 is subject to examination under the FITF provisions, and MPEP §
 2150 et seq. for examination of applications subject to
 those provisions. See MPEP § 2152.02(c) through (e) for
 a detailed discussion of the public use and on sale provisions of
 AIA
 35 U.S.C. 102 .] 

 
 Pre-AIA 35 U.S.C. 102 
 Conditions for patentability; novelty and loss of right to
 patent. 

 A person shall be entitled to a patent unless -

 *****

 
 (b) the invention was…in public use or on sale in this
 country, more than one year prior to the date of the application for patent
 in the United States
 

 
 *****

 (Emphasis added).

 
 I. THE INVENTION MUST BE “READY FOR PATENTING” In Pfaff v. Wells Elecs., Inc., 525 U.S. 55,
 66-68, 48 USPQ2d 1641, 1647 (1998), the Supreme Court enunciated a two-prong test
 for determining whether an invention was “on sale” within the meaning of
 pre-AIA 35
 U.S.C. 102(b) even if it had not yet been reduced to
 practice. “[T]he on-sale bar applies when two conditions are satisfied before the
 critical date [more than one year before the effective filing date of the claimed
 invention]. First, the product must be the subject of a commercial offer for
 sale…. Second, the invention must be ready for patenting.” Id. 
 at 67, 119 S.Ct. at 311-12, 48 USPQ2d at 1646-47. 
 

 The Federal Circuit explained that the Supreme Court’s “ready for
 patenting” prong applies in the context of both the on sale and public use bars.
 Invitrogen Corp. v. Biocrest Manufacturing L.P., 424 F.3d
 1374, 1379, 76 USPQ2d 1741, 1744 (Fed. Cir. 2005) (“A bar under [pre-AIA] section
 102(b) arises where, before the critical date, the invention
 is in public use and ready for patenting.”). “Ready for patenting,” the second
 prong of the Pfaff test, “may be satisfied in at least two
 ways: by proof of reduction to practice before the critical date; or by proof that
 prior to the critical date the inventor had prepared drawings or other
 descriptions of the invention that were sufficiently specific to enable a person
 skilled in the art to practice the invention.” Id. at 67, 199
 S.Ct. at 311-12, 48 USPQ2d at 1647 (The patent was held invalid because the
 invention for a computer chip socket was “ready for patenting” when it was offered
 for sale more than one year prior to the application filing date. Even though the
 invention had not yet been reduced to practice, the manufacturer was able to
 produce the claimed computer chip sockets using the inventor’s detailed drawings
 and specifications, and those sockets contained all elements of invention claimed
 in the patent.). See also Weatherchem Corp. v. J.L. Clark Inc., 
 163 F.3d 1326, 1333, 49 USPQ2d 1001, 1006-07 (Fed. Cir. 1998) (The invention was
 held “ready for patenting” since the detailed drawings of plastic dispensing caps
 offered for sale “contained each limitation of the claims and were sufficiently
 specific to enable person skilled in art to practice the invention”.). 
 

 If the invention had been actually reduced to practice before
 being sold or offered for sale more than 1 year before filing of the application,
 a patent will be barred. Vanmoor v. Wal-Mart Stores, Inc., 201
 F.3d 1363, 1366-67, 53 USPQ2d 1377, 1379 (Fed. Cir. 2000) (“Here the pre-critical
 date sales were of completed cartridges made to specifications that remained
 unchanged to the present day, showing that any invention embodied in the accused
 cartridges was reduced to practice before the critical date. The
 Pfaff ready for patenting condition is also satisfied
 because the specification drawings, available prior to the critical date, were
 actually used to produce the accused cartridges.”); In re
 Hamilton, 882 F.2d 1576, 1580, 11 USPQ2d 1890, 1893 (Fed. Cir. 1989).
 
 "If a product that is offered for sale
 inherently possesses each of the limitations of the claims, then the invention
 is on sale, whether or not the parties to the transaction recognize that the
 product possesses the claimed characteristics."
 
 
 Abbott Laboratories v. Geneva Pharmaceuticals, Inc., 182 F.3d
 1315, 1319, 51 USPQ2d 1307, 1310 (Fed. Cir. 1999) (Claim for a particular
 anhydrous crystalline form of a pharmaceutical compound was held invalid under the
 on-sale bar of pre-AIA 35 U.S.C. 102(b) , even though the parties to the
 U.S. sales of the foreign manufactured compound did not know the identity of the
 particular crystalline form.); STX LLC. v. Brine Inc., 211 F.3d
 588, 591, 54 USPQ2d 1347, 1350 (Fed. Cir. 2000) (Claim for a lacrosse stick was
 held invalid under the on-sale bar despite the argument that it was not known at
 the time of sale whether the sticks possessed the recited “improved playing and
 handling characteristics.” “Subjective qualities inherent in a product, such as
 ‘improved playing and handling’, cannot serve as an escape hatch to circumvent an
 on-sale bar.”). Actual reduction to practice in the context of an on-sale bar
 issue usually requires testing under actual working conditions in such a way as to
 demonstrate the practical utility of an invention for its intended purpose beyond
 the probability of failure, unless by virtue of the very simplicity of an
 invention its practical operativeness is clear. Field v.
 Knowles, 183 F.2d 593, 601, 86 USPQ 373, 379 (CCPA 1950);
 Steinberg v. Seitz, 517 F.2d 1359, 1363, 186 USPQ 209, 212
 (CCPA 1975). 
 

 The invention need not be ready for satisfactory commercial
 marketing for sale to bar a patent. Atlantic Thermoplastics Co. v. Faytex
 Corp., 970 F.2d 834, 836-37, 23 USPQ2d 1481, 1483 (Fed. Cir. 1992).
 
 

 II. INVENTOR HAS SUBMITTED A 37 CFR 1.131 AFFIDAVIT OR DECLARATION Affidavits or declarations submitted under 37 CFR
 1.131 to swear behind a reference may constitute, among
 other things, an admission that an invention was “complete” more than 1 year
 before the filing of an application. See In re Foster, 343 F.2d
 980, 987-88, 145 USPQ 166, 173 (CCPA 1965); Dart Indus. v. E.I. duPont de
 Nemours & Co., 489 F.2d 1359, 1365, 179 USPQ 392, 396 (7th Cir.
 1973). Also see MPEP
 § 715.10 . 
 

 III. SALE OF A PROCESS A claimed process, which is a series of acts or steps, is not
 sold in the same sense as is a claimed product, device, or apparatus, which is a
 tangible item. “‘Know-how’ describing what the process consists of and how the
 process should be carried out may be sold in the sense that the buyer acquires
 knowledge of the process and obtains the freedom to carry it out pursuant to the
 terms of the transaction. However, such a transaction is not a ‘sale’ of the
 invention within the meaning of [pre-AIA] §102(b) because the
 process has not been carried out or performed as a result of the transaction.”
 In re Kollar, 286 F.3d 1326, 1332, 62 USPQ2d 1425, 1429
 (Fed. Cir. 2002). However, sale of a product made by the claimed process by the
 patentee or a licensee would constitute a sale of the process within the meaning
 of pre-AIA 35
 U.S.C. 102(b) . See id. at 1333, 62 USPQ2d
 at 1429; D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144,
 1147-48, 219 USPQ 13, 15-16 (Fed. Cir. 1983) (Even though the sale of a product
 made by a claimed method before the critical date did not reveal anything about
 the method to the public, the sale resulted in a “forfeiture” of any right to a
 patent to that method); W.L. Gore & Assocs., Inc. v. Garlock,
 Inc., 721 F.2d 1540, 1550, 220 USPQ 303, 310 (Fed. Cir. 1983). The
 application of pre-AIA 35 U.S.C. 102(b) would also be triggered by
 actually performing the claimed process itself for consideration. See
 Scaltech, Inc. v. Retec/Tetra, L.L.C., 269 F.3d 1321, 1328,
 60 USPQ2d 1687, 1691(Fed. Cir. 2001) (Patent was held invalid under
 pre-AIA 35
 U.S.C. 102(b) based on patentee’s offer to perform the
 claimed process for treating oil refinery waste more than one year before filing
 the patent application). Moreover, the sale of a device embodying a claimed
 process may trigger the on-sale bar. Minton v. National Ass’n. of
 Securities Dealers, Inc., 336 F.3d 1373, 1378, 67 USPQ2d 1614, 1618
 (Fed. Cir. 2003) (finding a fully operational computer program implementing and
 thus embodying the claimed method to trigger the on-sale bar). However, the sale
 of a prior art device different from that disclosed in a patent that is asserted
 after the critical date to be capable of performing the claimed method is not an
 on-sale bar of the process. Poly-America LP v. GSE Lining Tech.
 Inc., 383 F.3d 1303, 1308-09, 72 USPQ2d 1685, 1688-89 (Fed. Cir.
 2004) (stating that the transaction involving the sale of the prior art device did
 not involve a transaction of the claimed method but instead only a device
 different from that described in the patent for carrying out the claimed method,
 where the device was not used to practice the claimed method until well after the
 critical date, and where there was evidence that it was not even known whether the
 device could perform the claimed process).
 

 

 
 2133.03(d) “In This Country” [R-10.2019]

 [Editor Note: This MPEP section is not applicable to
 applications subject to examination under the first inventor to file (FITF)
 provisions of the AIA as set forth in 35 U.S.C. 100 (note) . See
 MPEP § 2159 et seq. to determine whether an application
 is subject to examination under the FITF provisions, and MPEP §
 2150 et seq. for examination of applications subject to
 those provisions. See MPEP § 2152.02(c) through (e) for
 a detailed discussion of the public use and on sale provisions of
 AIA
 35 U.S.C. 102 .] 

 The language “in this country” in pre-AIA 35 U.S.C.
 102(b) does not include other WTO or NAFTA member countries,
 but includes any State of the United States, the District of Columbia, and any
 commonwealth, territory, or possession of the United States. See also
 35 U.S.C.
 105 . For purposes of judging the applicability of the
 pre-AIA
 35 U.S.C. 102(b) bars, public use or on sale activity must take
 place in the United States. The “on sale” bar does not generally apply where both
 manufacture and delivery occur in a foreign country. Gandy v. Main Belting
 Co., 143 U.S. 587, 593 (1892). However, “on sale” status can be found if
 substantial activity prefatory to a “sale” occurs in the United States.
 Robbins Co. v. Lawrence Mfg. Co., 482 F.2d 426, 433, 178 USPQ
 577, 583 (9th Cir. 1973). An offer for sale, made or originating in this country, may
 be sufficient prefatory activity to bring the offer within the terms of the statute,
 even though sale and delivery take place in a foreign country. The same rationale
 applies to an offer by a foreign manufacturer which is communicated to a prospective
 purchaser in the United States prior to the critical date. CTS Corp. v.
 Piher Int’l Corp., 593 F.2d 777, 201 USPQ 649 (7th Cir. 1979).
 

 

 
 2133.03(e) Permitted Activity; Experimental Use [R-07.2022]

 [Editor Note: This MPEP section may be applicable to
 applications subject to examination under the first inventor to file (FITF)
 provisions of the AIA as set forth in 35 U.S.C. 100 (note) . See
 MPEP § 2159 et seq. to determine whether an application
 is subject to examination under the FITF provisions, and MPEP §
 2150 et seq. for examination of applications subject to
 those provisions. See MPEP § 2152.02(c) through (e) for
 a detailed discussion of the public use and on sale provisions of
 AIA
 35 U.S.C. 102 .] 

 The question posed by the experimental use doctrine is “whether the
 primary purpose of the inventor at the time of the sale, as determined from an
 objective evaluation of the facts surrounding the transaction, was to conduct
 experimentation.” Allen Eng’g Corp. v. Bartell Indus., Inc., 299
 F.3d 1336, 1354, 63 USPQ2d 1769, 1780 (Fed. Cir. 2002) (quoting EZ Dock v.
 Schafer Sys., Inc., 276 F.3d 1347, 1356-57, 61 USPQ2d 1289, 1295-96
 (Fed. Cir. 2002)) (Linn, J., concurring). Experimentation must be the primary purpose
 and any commercial exploitation must be incidental in order for the sale to be a
 permitted activity that does not create a bar under pre-AIA 35 U.S.C.
 102(b) . 
 

 If the use or sale was experimental, there is no bar under
 pre-AIA 35
 U.S.C. 102(b) . “A use or sale is experimental for purposes of
 [pre-AIA]
 section 102(b) if it represents a bona fide 
 effort to perfect the invention or to ascertain whether it will answer its intended
 purpose.… If any commercial exploitation does occur, it must be merely incidental to
 the primary purpose of the experimentation to perfect the invention.”
 LaBounty Mfg. v. United States Int’l Trade Comm’n, 958 F.2d
 1066, 1071, 22 USPQ2d 1025, 1028 (Fed. Cir. 1992) (quoting Pennwalt Corp. v.
 Akzona Inc., 740 F.2d 1573, 1581, 222 USPQ 833, 838 (Fed. Cir. 1984)).
 “The experimental use exception…does not include market testing where the inventor is
 attempting to gauge consumer demand for his claimed invention. The purpose of such
 activities is commercial exploitation and not experimentation.” In re
 Smith, 714 F.2d 1127, 1134, 218 USPQ 976, 983 (Fed. Cir. 1983).
 

 
 2133.03(e)(1) Commercial Exploitation [R-07.2022]

 [Editor Note: This MPEP section may be applicable to
 applications subject to examination under the first inventor to file (FITF)
 provisions of the AIA as set forth in 35 U.S.C. 100
 (note) . See MPEP §
 2159 et seq. to determine whether an application is
 subject to examination under the FITF provisions, and MPEP §
 2150 et seq. for examination of applications subject
 to those provisions. See MPEP § 2152.02(c) through (e) 
 for a detailed discussion of the public use and on sale provisions of
 AIA 35 U.S.C. 102 .] 

 One policy of the on sale and public use provisions of
 35
 U.S.C. 102 is the prevention of inventors from exploiting
 their inventions commercially more than 1 year prior to the filing of a patent
 application. Therefore, if applicant’s precritical date activity is a sale or
 offer for sale that is an attempt at market penetration, the activity may be cited
 as prior art. Thus, even if there is bona fide experimental
 activity, an inventor may not commercially exploit an invention more than 1 year
 prior to the effective filing date of a claimed invention. See In re
 Theis, 610 F.2d 786, 793, 204 USPQ 188, 194 (CCPA 1979).
 

 I. THE COMMERCIAL ACTIVITY MUST LEGITIMATELY ADVANCE DEVELOPMENT OF THE
 INVENTION TOWARDS COMPLETION As the degree of commercial exploitation in public use or sale
 activity increases, the burden on an applicant to establish clear and
 convincing evidence of experimental activity with respect to a public use
 becomes more difficult. Where the examiner has found a prima
 facie case of a sale or an offer to sell, this burden will rarely
 be met unless clear and convincing necessity for the experimentation is
 established by the applicant. See Sunoco Partners Mktg. &
 Terminals LP v. U.S. Venture, Inc., 32 F.4th 1161, 1171-72, 2022
 USPQ2d 417 (Fed. Cir. 2022) (performing testing at a third party’s location
 instead of at the buyer’s facility, along with the fact that the testing could
 have been performed before the offer to sell, showed that “[t]he need to
 perform this testing … cannot have been the primary purpose for the … sale”).
 This does not mean, of course, that there are no circumstances which would
 permit alleged experimental activity in an atmosphere of commercial
 exploitation. In certain circumstances, even a sale may be necessary to
 legitimately advance the experimental development of an invention if the
 primary purpose of the sale is experimental. In re Theis, 
 610 F.2d 786, 793, 204 USPQ 188, 194 (CCPA 1979); Robbins Co. v.
 Lawrence Mfg. Co., 482 F.2d 426, 433, 178 USPQ 577, 582 (9th Cir.
 1973). However, careful scrutiny by the examiner of the objective factual
 circumstances surrounding such a sale is essential. See Ushakoff v.
 United States, 327 F.2d 669, 140 USPQ 341 (Ct.Cl. 1964);
 Cloud v. Standard Packaging Corp., 376 F.2d 384, 153 USPQ
 317 (7th Cir. 1967). 
 

 II. SIGNIFICANT FACTORS INDICATIVE OF “COMMERCIAL EXPLOITATION” As discussed in MPEP § 2133.03 , a policy
 consideration in questions of sales activity is premature “commercial
 exploitation” of a “completed” or “ready for patenting” invention (see
 MPEP
 § 2133.03(c) ). The extent of commercial activity
 which constitutes “on sale” status depends upon the circumstances of the
 activity, the basic indicator being the subjective intent of the inventor as
 manifested through objective evidence. The following activities should be used
 by the examiner as indicia of this subjective intent:
 

 
 (A) Preparation of various contemporaneous “commercial”
 documents, e.g., orders, invoices, receipts, delivery schedules, etc.;
 
 

 (B) Preparation of price lists (Akron
 Brass Co. v. Elkhart Brass Mfg. Co., 353 F.2d 704, 709, 147 USPQ
 301, 305 (7th Cir. 1965)) and distribution of price quotations
 (Amphenol Corp. v. Gen'l Time Corp., 397 F.2d 431, 436, 158 USPQ 113,
 117 (7th Cir. 1968)); 
 

 (C) Display of samples to prospective customers
 (Cataphote Corp. v. DeSoto Chemical Coatings, Inc., 356 F.2d 24, 27, 148 USPQ 527, 529 (9th Cir.
 1966) mod. on other grounds, 358 F.2d 732, 149 USPQ
 159 (9th Cir.), cert. denied, 385 U.S. 832 (1966);
 Chicopee Mfg. Corp. v. Columbus Fiber Mills Co., 
 165 F.Supp. 307, 323-325, 118 USPQ 53, 65-67 (M.D.Ga. 1958));
 

 (D) Demonstration of models or prototypes (General
 Elec. Co. v. United States, 206 USPQ 260, 266-67 (Ct. Cl.
 1979); Red Cross Mfg. v. Toro Sales Co., 525 F.2d
 1135, 1140, 188 USPQ 241, 244-45 (7th Cir. 1975); Philco
 Corp. v. Admiral Corp., 199 F. Supp. 797, 815-16, 131 USPQ
 413, 429-30 (D. Del. 1961)), especially at trade conventions
 (Interroyal Corp. v. Simmons Co., 204 USPQ 562, 563-65 (S.D. N.Y.
 1979)), and even though no orders are actually obtained
 (Monogram Mfg. v. F. & H. Mfg., 144 F.2d 412,
 62 USPQ 409, 412 (9th Cir. 1944)); 
 

 (E) Use of an invention where an admission fee is charged
 (In re Josserand, 188 F.2d 486, 491, 89 USPQ 371,
 376 (CCPA 1951); Greenewalt v. Stanley, 54 F.2d 195,
 12 USPQ 122 (3d Cir. 1931)); and 
 

 (F) Advertising in publicity releases, brochures, and
 various periodicals (In re Theis, 610 F.2d 786, 792
 n.6, 204 USPQ 188, 193 n. 6 (CCPA 1979); Interroyal Corp. v.
 Simmons Co., 204 USPQ 562, 564-66 (S.D.N.Y. 1979);
 Akron Brass, Co. v. Elkhart Brass Mfg., Inc., 353 F.2d 704, 709, 147 USPQ 301, 305 (7th Cir.
 1965); Tucker Aluminum Prods. v. Grossman, 312 F.2d
 393, 394, 136 USPQ 244, 245 (9th Cir. 1963)). 
 

 
 See MPEP § 2133.03(e)(4) for
 factors indicative of an experimental purpose.
 

 

 
 2133.03(e)(2) Intent [R-07.2022]

 [Editor Note: This MPEP section may be applicable to
 applications subject to examination under the first inventor to file (FITF)
 provisions of the AIA as set forth in 35 U.S.C. 100
 (note) . See MPEP §
 2159 et seq. to determine whether an application is
 subject to examination under the FITF provisions, and MPEP §
 2150 et seq. for examination of applications subject
 to those provisions. See MPEP § 2152.02(c) through (e) 
 for a detailed discussion of the public use and on sale provisions of
 AIA 35 U.S.C. 102 .] 

 “When sales are made in an ordinary commercial environment and
 the goods are placed outside the inventor’s control, an inventor’s secretly held
 subjective intent to ‘experiment,’ even if true, is unavailing without objective
 evidence to support the contention. Under such circumstances, the customer at a
 minimum must be made aware of the experimentation.” LaBounty Mfg., Inc.
 v. United States Int’l Trade Comm’n, 958 F.2d 1066, 1072, 22 USPQ2d
 1025, 1029 (Fed. Cir. 1992) (quoting Harrington Mfg. Co. v. Powell Mfg.
 Co., 815 F.2d 1478, 1480 n.3, 2 USPQ2d 1364, 1366 n.3 (Fed. Cir.
 1986); Sunoco Partners Mktg. & Terminals LP v. U.S. Venture,
 Inc., 32 F.4th 1161, 1171-72, 2022 USPQ2d 417 (Fed. Cir. 2022) (The
 Federal Circuit relied on the objective evidence of the contract over the
 inventors’ testimony that their intent for the agreement was experimental);
 Paragon Podiatry Laboratory, Inc. v. KLM Labs., Inc., 984
 F.2d 1182, 25 USPQ2d 1561 (Fed. Cir. 1993) (Paragon sold the inventive units to
 the trade as completed devices without any disclosure to either doctors or
 patients of their involvement in alleged testing. Evidence of the inventor’s
 secretly held belief that the units were not durable and may not be satisfactory
 for consumers was not sufficient, alone, to avoid a statutory bar.). 
 

 

 
 2133.03(e)(3) “Completeness” of the Invention [R-07.2022]

 [Editor Note: This MPEP section may be applicable to
 applications subject to examination under the first inventor to file (FITF)
 provisions of the AIA as set forth in 35 U.S.C. 100
 (note) . See MPEP §
 2159 et seq. to determine whether an application is
 subject to examination under the FITF provisions, and MPEP §
 2150 et seq. for examination of applications subject
 to those provisions. See MPEP § 2152.02(c) through (e) 
 for a detailed discussion of the public use and on sale provisions of
 AIA 35 U.S.C. 102 .] 

 I. EXPERIMENTAL USE ENDS WHEN THE INVENTION IS ACTUALLY REDUCED TO
 PRACTICE Experimental use “means perfecting or completing an invention
 to the point of determining that it will work for its intended purpose.”
 Therefore, experimental use “ends with an actual reduction to practice.”
 RCA Corp. v. Data Gen. Corp., 887 F.2d 1056, 1061, 12 USPQ2d 1449, 1453
 (Fed. Cir. 1989). If the examiner concludes from the evidence of record that
 the inventor was satisfied that an invention was in fact “complete,” awaiting
 approval by the inventor from an organization such as Underwriters’
 Laboratories will not normally overcome this conclusion. Interroyal
 Corp. v. Simmons Co., 204 USPQ 562, 566 (S.D.N.Y. 1979);
 Skil Corp. v. Rockwell Manufacturing Co., 358 F. Supp.
 1257, 1261, 178 USPQ 562, 565 (N.D.Ill. 1973), aff’d. in part, rev’d
 in part sub nom. Skil Corp. v. Lucerne Products Inc., 503 F.2d 745, 183 USPQ
 396, 399 (7th Cir. 1974), cert. denied, 420 U.S. 974, 185
 USPQ 65 (1975). See MPEP § 2133.03(c) for more
 information of what constitutes a “complete” invention.
 

 The fact that alleged experimental activity does not lead to
 specific modifications or refinements of an invention is evidence, although not
 conclusive evidence, that such activity is not within the realm permitted by
 the statute. This is especially the case where the evidence of record clearly
 demonstrates to the examiner that an invention was considered “complete” by an
 inventor at the time of the activity. Nevertheless, any modifications or
 refinements which did result from such experimental activity must at least be a
 feature of the claimed invention to be of any probative value. In re
 Theis, 610 F.2d 786, 793, 204 USPQ 188, 194 (CCPA 1979).
 

 II. DISPOSAL OF PROTOTYPES Where a prototype of an invention has been disposed of by an
 inventor before the critical date, inquiry by the examiner should focus upon
 the intent of the inventor and the reasonableness of the disposal under all
 circumstances. The fact that an otherwise reasonable disposal of a prototype
 involves incidental income is not necessarily fatal. In re
 Dybel, 524 F.2d 1393, 1399, n.5, 187 USPQ 593, 597 n.5 (CCPA
 1975). However, if a prototype is considered “complete” by an inventor and all
 experimentation on the underlying invention has ceased, unrestricted disposal
 of the prototype constitutes a bar under pre-AIA 35 U.S.C. 102(b) .
 In re Blaisdell, 242 F.2d 779, 113 USPQ 289 (CCPA 1957);
 contra, Watson v. Allen, 254 F.2d 342, 117 USPQ 68 (D.C. Cir. 1958).
 

 

 
 2133.03(e)(4) Factors Indicative of an Experimental Purpose [R-07.2022]

 [Editor Note: This MPEP section may be applicable to
 applications subject to examination under the first inventor to file (FITF)
 provisions of the AIA as set forth in 35 U.S.C. 100
 (note) . See MPEP §
 2159 et seq. to determine whether an application is
 subject to examination under the FITF provisions, and MPEP §
 2150 et seq. for examination of applications subject
 to those provisions. See MPEP § 2152.02(c) through (e) 
 for a detailed discussion of the public use and on sale provisions of
 AIA 35 U.S.C. 102 .] 

 The courts have considered a number of factors in determining
 whether a claimed invention was the subject of a commercial offer for sale
 primarily for purposes of experimentation. “These factors include: (1) the
 necessity for public testing, (2) the amount of control over the experiment
 retained by the inventor, (3) the nature of the invention, (4) the length of the
 test period, (5) whether payment was made, (6) whether there was a secrecy
 obligation, (7) whether records of the experiment were kept, (8) who conducted the
 experiment, ... (9) the degree of commercial exploitation during testing[,] ...
 (10) whether the invention reasonably requires evaluation under actual conditions
 of use, (11) whether testing was systematically performed, (12) whether the
 inventor continually monitored the invention during testing, and (13) the nature
 of contacts made with potential customers.” Allen Eng’g Corp. v. Bartell
 Indus., Inc., 299 F.3d 1336, 1353, 63 USPQ2d 1769, 1780 (Fed. Cir.
 2002) (quoting EZ Dock v. Schafer Sys., Inc., 276 F.3d 1347,
 1357, 61 USPQ2d 1289, 1296 (Fed. Cir. 2002)) (Linn, J., concurring). Another
 critical attribute of experimentation is the “customer’s awareness of the
 purported testing in the context of a sale.” Electromotive Div. of Gen.
 Motors Corp. v. Transportation Sys. Div. of Gen. Elec. Co., 417 F.3d
 1203, 1241, 75 USPQ2d 1650, 1658 (Fed. Cir. 2005).
 

 Once alleged experimental activity is advanced by an applicant to
 explain a prima facie case of unpatentability, the examiner
 must determine whether the scope and length of the activity were reasonable in
 terms of the experimental purpose intended by the applicant and the nature of the
 subject matter involved. No one of, or particular combination of, factors is
 necessarily determinative of this purpose.
 

 See MPEP § 2133.03(e)(1) for factors
 indicative of commercial exploitation.
 

 

 
 2133.03(e)(5) Experimentation and Degree of Supervision and Control [R-07.2022]

 [Editor Note: This MPEP section may be applicable to
 applications subject to examination under the first inventor to file (FITF)
 provisions of the AIA as set forth in 35 U.S.C. 100
 (note) . See MPEP §
 2159 et seq. to determine whether an application is
 subject to examination under the FITF provisions, and MPEP §
 2150 et seq. for examination of applications subject
 to those provisions. See MPEP § 2152.02(c) through (e) 
 for a detailed discussion of the public use and on sale provisions of
 AIA 35 U.S.C. 102 .] 

 THE INVENTOR MUST MAINTAIN SUFFICIENT CONTROL OVER THE INVENTION DURING
 TESTING BY THIRD PARTIES The significant determinative factors in questions of
 experimental purpose are the extent of supervision and control maintained by an
 inventor over an invention during an alleged period of experimentation , and
 the customer’s awareness of the experimentation. Electromotive Div. of
 Gen. Motors Corp. v. Transportation Sys. Div. of Gen. Elec. Co., 
 417 F.3d 1203, 1214, 75 USPQ2d 1650, 1658 (Fed. Cir. 2005)(“control and
 customer awareness ordinarily must be proven if experimentation is to be
 found”). Once a period of experimental activity has ended and supervision and
 control has been relinquished by an inventor without any restraints on
 subsequent use of an invention, an unrestricted subsequent use of the invention
 is a pre-AIA
 35 U.S.C. 102(b) bar. In re Blaisdell, 
 242 F.2d 779, 784, 113 USPQ 289, 293 (CCPA 1957). 
 

 

 
 2133.03(e)(6) Permitted Experimental Activity and Testing [R-07.2022]

 [Editor Note: This MPEP section may be applicable to
 applications subject to examination under the first inventor to file (FITF)
 provisions of the AIA as set forth in 35 U.S.C. 100
 (note) . See MPEP §
 2159 et seq. to determine whether an application is
 subject to examination under the FITF provisions, and MPEP §
 2150 et seq. for examination of applications subject
 to those provisions. See MPEP § 2152.02(c) through (e) 
 for a detailed discussion of the public use and on sale provisions of
 AIA 35 U.S.C. 102 .] 

 I. DEVELOPMENTAL TESTING IS PERMITTED Testing of an invention in the normal context of its
 technological development is generally within the realm of permitted
 experimental activity. Likewise, experimentation to determine utility, as that
 term is applied in 35 U.S.C. 101 , may also
 constitute permissible activity. See General Motors Corp. v. Bendix
 Aviation Corp., 123 F. Supp. 506, 521, 102 USPQ 58, 69 (N.D.Ind.
 1954). For example, where an invention relates to a chemical composition with
 no known utility, i.e., a patent application for the composition could not be
 filed ( 35
 U.S.C. 101 ; 35 U.S.C. 112(a) or
 pre-AIA 35
 U.S.C. 112 , first paragraph), continued testing to find
 utility would likely be permissible, absent a sale of the composition or other
 evidence of commercial exploitation. 
 

 II. MARKET TESTING IS NOT PERMITTED Experimentation to determine product acceptance, i.e., market
 testing, is typical of a trader’s and not an inventor’s experiment and is thus
 not within the area of permitted experimental activity. Smith &
 Davis Mfg. Co. v. Mellon, 58 F. 705, 707 (8th Cir. 1893).
 Likewise, testing of an invention for the benefit of appeasing a customer, or
 to conduct “minor ‘tune up’ procedures not requiring an inventor’s skills, but
 rather the skills of a competent technician,” are also not within the scope of
 experimentation. In re Theis, 610 F.2d 786, 793, 204 USPQ
 188, 193-94 (CCPA 1979).
 

 III. EXPERIMENTAL ACTIVITY IN THE CONTEXT OF DESIGN APPLICATIONS The public use of an ornamental design which is directed
 toward generating consumer interest in the aesthetics of the design is not an
 experimental use. In re Mann, 861 F.2d 1581, 8 USPQ2d 2030
 (Fed. Cir. 1988) (display of a wrought iron table at a trade show held to be
 public use). However, “experimentation directed to functional features of a
 product also containing an ornamental design may negate what otherwise would be
 considered a public use.” Tone Brothers, Inc. v. Sysco Corp., 28 F.3d 1192, 1196, 31 USPQ2d 1321, 1326 (Fed.
 Cir. 1994) (A study wherein students evaluated the effect of the functional
 features of a spice container design may be considered an experimental
 use.).
 

 

 
 2133.03(e)(7) Activity of an Independent Third Party Inventor [R-07.2022]

 [Editor Note: This MPEP section may be applicable to
 applications subject to examination under the first inventor to file (FITF)
 provisions of the AIA as set forth in 35 U.S.C. 100
 (note) . See MPEP §
 2159 et seq. to determine whether an application is
 subject to examination under the FITF provisions, and MPEP §
 2150 et seq. for examination of applications subject
 to those provisions. See MPEP § 2152.02(c) through (e) 
 for a detailed discussion of the public use and on sale provisions of
 AIA 35 U.S.C. 102 .] 

 EXPERIMENTAL USE IS PERSONAL TO AN INVENTOR Public use and sales activity may be prior art even if by a
 party other than an inventor. Where an inventor presents evidence of
 experimental activity by such other party, the evidence will not overcome the
 prima facie case of unpatentability based upon the
 activity of such party unless the activity was under the supervision and
 control of the inventor. In re Hamilton, 882 F.2d 1576,
 1581, 111 USPQ2d 1890, 1894 (Fed. Cir. 1989) (“The experimental use doctrine
 operates in the inventor's favor to allow the inventor to
 refine his invention or to assess its value relative to the time and expense of
 prosecuting a patent application. If it is not the inventor or someone under
 his control or ‘surveillance’ who does these things, there appears to us no
 reason why he should be entitled to rely upon them to avoid the statute.”)
 (citing Magnetics, Inc. v. Arnold Engineering Co., 438 F.2d
 72, 74, 168 USPQ 392, 394 (7th Cir. 1971)). In other words, the experimental
 use activity exception is personal to the inventor.
 

 

 

 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 2101-2102-[Reserved] 

 2103-Patent Examination Process 

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

 
 

 2105-Patent Eligible Subject Matter — Living Subject Matter 

 2106-Patent Subject Matter Eligibility 
 2106.01-[Reserved] 

 2106.02-[Reserved] 

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

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

 2106.04(a)(2)-Abstract Idea Groupings 

 2106.04(a)(3)-Tentative Abstract Ideas 

 
 

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

 2106.04(c)-The Markedly Different Characteristics Analysis 

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

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

 
 

 
 

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

 2106.05(b)-Particular Machine 

 2106.05(c)-Particular Transformation 

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

 2106.05(e)-Other Meaningful Limitations 

 2106.05(f)-Mere Instructions To Apply An Exception 

 2106.05(g)-Insignificant Extra-Solution Activity 

 2106.05(h)-Field of Use and Technological Environment 

 
 

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

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

 
 

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

 
 

 2106.07(b)-Evaluating Applicant’s Response 

 2106.07(c)-Clarifying the Record 

 
 

 
 

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

 2107.02-Procedural Considerations Related to Rejections for Lack of Utility 

 2107.03-Special Considerations for Asserted Therapeutic or Pharmacological Utilities 

 
 

 2108-[Reserved] 

 2109-Inventorship 

 2109.01-Joint Inventorship 

 2110-[Reserved] 

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

 2111.02-Effect of Preamble 

 2111.03-Transitional Phrases 

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

 2111.05-Functional and Nonfunctional Descriptive Material 

 
 

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

 2112.02-Process Claims 

 
 

 2113-Product-by-Process Claims 

 2114-Apparatus and Article Claims — Functional Language 

 2115-Material or Article Worked Upon by Apparatus 

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

 
 

 2117-Markush Claims 

 2118-2119-[Reserved] 

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

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

 
 

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

 2121.02-Compounds and Compositions — What Constitutes Enabling Prior Art 

 2121.03-Plant Genetics — What Constitutes Enabling Prior Art 

 2121.04-Apparatus and Articles — What Constitutes Enabling Prior Art 

 
 

 2122-Discussion of Utility in the Prior Art 

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

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

 
 

 2125-Drawings as Prior Art 

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

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

 
 

 2127-Domestic and Foreign Patent Applications as Prior Art 

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

 2128.02-Date Publication Is Available as a Reference 

 
 

 2129-Admissions as Prior Art 

 2130-[Reserved] 

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

 2131.02-Genus-Species Situations 

 2131.03-Anticipation of Ranges 

 2131.04-Secondary Considerations 

 2131.05-Nonanalogous or Disparaging Prior Art 

 
 

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

 
 

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

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

 
 

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

 2133.03(b)-“On Sale” 

 2133.03(c)-The “Invention” 

 2133.03(d)-“In This Country” 

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

 2133.03(e)(2)-Intent 

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

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

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

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

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

 
 

 
 

 
 

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

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

 
 

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

 2136.02-Content of the Prior Art Available Against the Claims 

 2136.03-Critical Reference Date 

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

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

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

 
 

 
 

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

 2137.02-[Reserved] 

 
 

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

 2138.02-“The Invention Was Made in This Country” 

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

 2138.04-“Conception” 

 2138.05-“Reduction to Practice” 

 2138.06-“Reasonable Diligence” 

 
 

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

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

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

 
 

 2140-[Reserved] 

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

 
 

 2141.02-Differences Between Prior Art and Claimed Invention 

 2141.03-Level of Ordinary Skill in the Art 

 
 

 2142-Legal Concept of Prima Facie Obviousness 

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

 2143.02-Reasonable Expectation of Success Is Required 

 2143.03-All Claim Limitations Must Be Considered 

 
 

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

 2144.02-Reliance on Scientific Theory 

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

 2144.04-Legal Precedent as Source of Supporting Rationale 

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

 2144.06-Art Recognized Equivalence for the Same Purpose 

 2144.07-Art Recognized Suitability for an Intended Purpose 

 2144.08-Obviousness of Species When Prior Art Teaches Genus 

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

 
 

 2145-Consideration of Applicant’s Rebuttal Arguments and Evidence 

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

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

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

 
 

 
 

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

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

 2149-[Reserved] 

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

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

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

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

 2152.02(b)-Described in a Printed Publication 

 2152.02(c)-In Public Use 

 2152.02(d)-On Sale 

 2152.02(e)-Otherwise Available to the Public 

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

 
 

 2152.03-Admissions 

 2152.04-The Meaning of “Disclosure” 

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

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

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

 
 

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

 2153.01(b)-[Reserved] 

 
 

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

 
 

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

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

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

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

 
 

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

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

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

 
 

 
 

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

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

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

 2155.04-Enablement 

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

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

 
 

 2156-Joint Research Agreements 

 2157-Improper Naming of Inventors 

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

 
 

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

 2159.02-Applications Filed on or After March 16, 2013 

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

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

 
 

 2160-[Reserved] 

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

 
 

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

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

 2163.02-Standard for Determining Compliance With the Written Description Requirement 

 2163.03-Typical Circumstances Where Adequate Written Description Issue Arises 

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

 2163.05-Changes to the Scope of Claims 

 2163.06-Relationship of Written Description Requirement to New Matter 

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

 2163.07(b)-Incorporation by Reference 

 
 

 
 

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

 2164.01(b)-How to Make the Claimed Invention 

 2164.01(c)-How to Use the Claimed Invention 

 
 

 2164.02-Working and Prophetic Examples 

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

 2164.04-Burden on the Examiner Under the Enablement Requirement 

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

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

 
 

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

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

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

 
 

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

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

 2164.08(b)-Inoperative Subject Matter 

 2164.08(c)-Critical Feature Not Claimed 

 
 

 
 

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

 2165.02-Best Mode Requirement Compared to Enablement Requirement 

 2165.03-Requirements for Rejection for Lack of Best Mode 

 2165.04-Examples of Evidence of Concealment 

 
 

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

 2167-2170-[Reserved] 

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

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

 
 

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

 2173.02-Determining Whether Claim Language is Definite 

 2173.03-Correspondence Between Specification and Claims 

 2173.04-Breadth Is Not Indefiniteness 

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

 2173.05(b)-Relative Terminology 

 2173.05(c)-Numerical Ranges and Amounts Limitations 

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

 2173.05(e)-Lack of Antecedent Basis 

 2173.05(f)-Reference to Limitations in Another Claim 

 2173.05(g)-Functional Limitations 

 2173.05(h)-Alternative Limitations 

 2173.05(i)-Negative Limitations 

 2173.05(j)-Old Combination 

 2173.05(k)-Aggregation 

 2173.05(l)-[Reserved] 

 2173.05(m)-Prolix 

 2173.05(n)-Multiplicity 

 2173.05(o)-Double Inclusion 

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

 2173.05(q)-“Use” Claims 

 2173.05(r)-Omnibus Claim 

 2173.05(s)-Reference to Figures or Tables 

 2173.05(t)-Chemical Formula 

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

 2173.05(v)-Mere Function of Machine 

 
 

 2173.06-Practice Compact Prosecution 

 
 

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

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

 2176-2180-[Reserved] 

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

 2182-Search and Identification of the Prior Art 

 2183-Making a Prima Facie Case of Equivalence 

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

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

 2186-Relationship to the Doctrine of Equivalents 

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

 2188-2189-[Reserved] 

 2190-Prosecution Laches and Res Judicata 

 

 

 
 

 
 
 

 
 

 

 
 
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