MPEP § 2135 — MPEP § 2135
Current through: 2022-07-01

2135-Pre-AIA 35 U.S.C. 102(d) 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2100 

 Section 2135 
 

 
 
 
 
 
 2135 Pre-AIA 35 U.S.C. 102(d) [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.] 

 
 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 -

 *****

 
 (d) the invention was first patented or caused to be patented, or was
 the subject of an inventor’s certificate, by the applicant or his legal
 representatives or assigns in a foreign country prior to the date of the
 application for patent in this country on an application for patent or inventor’s
 certificate filed more than twelve months before the filing of the application in
 the United States.
 

 
 *****

 
 I. GENERAL REQUIREMENTS OF PRE-AIA 35 U.S.C. 102(d) Pre-AIA 35 U.S.C.
 102(d) establishes four conditions which, if all are present,
 establish a statutory bar against the granting of a patent in this country:
 

 
 (A) The foreign application must be filed more than 12 months before
 the effective filing date of the claimed invention in the United States (see
 MPEP § 2139.01 regarding determination of the effective
 U.S. filing date when an application is subject to pre-AIA 35 U.S.C.
 102 );
 

 (B) The foreign and United States applications must have been filed
 by the same applicant or by the same applicant's legal representatives or
 assigns.
 

 (C) The foreign application must have actually issued as a patent or
 inventor’s certificate (e.g., granted by sealing of the papers in Great Britain)
 before the filing in the United States. It need not be published but the patent
 rights granted must be enforceable.
 

 (D) The same invention must be involved.

 
 If such a foreign patent or inventor’s certificate is discovered by the
 examiner, the rejection is made under pre-AIA 35 U.S.C. 102(d) on the
 ground of statutory bar. See MPEP § 2135.01 for further
 clarification of each of the four requirements of pre-AIA 35 U.S.C. 102(d) .
 

 II. SEARCHING FOR PRE-AIA 35 U.S.C. 102(d) PRIOR ART The examiner should undertake a search for an issued foreign patent for
 use as pre-AIA 35
 U.S.C. 102(d) prior art only if there is a reasonable possibility
 that a foreign patent covering the same subject matter as the U.S. application has been
 granted to the same inventive entity before the U.S. effective filing date, i.e., the
 time period between foreign and U.S. filings is greater than the usual time it takes for
 a patent to issue in the foreign country. The document must be a patent or inventor’s
 certificate and not merely a published or laid open application. Normally, the
 probability of the inventor’s foreign patent issuing before the U.S. filing date is so
 slight as to make such a search unproductive. However, it should be kept in mind that
 the average pendency varies greatly between foreign countries. 
 

 The search for a granted patent can be accomplished on an electronic
 database either by the examiner or by the staff of the Scientific and Technical
 Information Center. See MPEP § 901.06(a) , subsection IV.B., for more information on
 online searching. Alternatively, if the examiner has a reasonable basis for concluding
 that pre-AIA 35 U.S.C.
 102(d) prior art might exist, the examiner may make a requirement
 for information under 37 CFR 1.105 . See
 MPEP §
 704.10 et seq. 

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

 I. FOREIGN APPLICATION MUST BE FILED MORE THAN 12 MONTHS BEFORE THE EFFECTIVE
 U.S. FILING DATE 
 

 A. An Anniversary Date Ending on a Weekend or Holiday Results in an
 Extension to the Next Business Day The U.S. application is filed in time to prevent a
 pre-AIA
 35 U.S.C. 102(d) bar from arising if it is filed on the 1
 year anniversary date of the filing date of the foreign application. If this day
 is a Saturday, Sunday or federal holiday, the year would be extended to the
 following business day. See Ex parte Olah, 131 USPQ 41 (Bd.
 App. 1960). Despite changes to 37 CFR 1.6(a)(2) and
 37 CFR
 1.10 , which require the USPTO to accord a filing date to an
 application as of the date of deposit as Priority Mail Express® with the U.S.
 Postal Service in accordance with 37 CFR 1.10 (e.g., a Saturday
 filing date), the rule changes do not affect applicant’s concurrent right to defer
 the filing of an application until the next business day when the last day for
 “taking any action” falls on a Saturday, Sunday, or a federal holiday (e.g., the
 last day of the 1-year grace period falls on a Saturday).
 

 B. A Continuation-in-Part Breaks the Chain of Priority as to Foreign as
 Well as U.S. Parents In the case where applicant files a foreign application, later
 files a U.S. application claiming priority based on the foreign application, and
 then files a continuation-in-part (CIP) application whose claims are not entitled
 to the filing date of the U.S. parent, the effective filing date is the filing
 date of the CIP and applicant cannot obtain the benefit of either the U.S. parent
 or foreign application filing dates. In re Van Langenhoven, 458
 F.2d 132, 137, 173 USPQ 426, 429 (CCPA 1972). If the foreign application issues
 into a patent before the filing date of the CIP, it may be used in a
 pre-AIA 35
 U.S.C. 102(d) / 103 rejection if the subject
 matter added to the CIP does not render the claims nonobvious over the foreign
 patent. Ex parte Appeal No. 242-47, 196 USPQ 828 (Bd. App.
 1976) (Foreign patent can be combined with other prior art to bar a U.S. patent in
 an obviousness rejection based on pre-AIA 35 U.S.C.
 102(d) / 103 ).
 

 II. FOREIGN APPLICATION MUST HAVE BEEN FILED BY SAME APPLICANT, HIS OR HER LEGAL
 REPRESENTATIVE OR ASSIGNS Note that where the U.S. application was made by two or more
 inventors, it is permissible for these inventors to claim priority from separate
 applications, each to one of the inventors or a subcombination of inventors. For
 instance, a U.S. application naming inventors A and B may be entitled to priority
 from one application to A and one to B filed in a foreign country.
 

 III. THE FOREIGN PATENT OR INVENTOR’S CERTIFICATE WAS ACTUALLY GRANTED BEFORE THE
 U.S. FILING DATE 
 

 A. To Be “Patented” an Exclusionary Right Must Be Awarded to the
 Applicant “Patented” means “a formal bestowal of patent rights from the
 sovereign to the applicant.” In re Monks, 588 F.2d 308, 310,
 200 USPQ 129, 131 (CCPA 1978); American Infra-Red Radiant Co. v. Lambert
 Indus., 360 F.2d 977, 149 USPQ 722 (8th Cir.), cert.
 denied, 385 U.S. 920 (1966) (German Gebrauchsmuster petty patent was
 held to be a patent usable in a pre-AIA 35 U.S.C. 102(d) 
 rejection. A Gebrauchsmuster petty patent is not examined and, at the time of the
 decision, had only a 6-year patent term. However, except as to duration, the
 exclusionary patent right granted is as extensive as in the U.S.).
 

 B. A Published Application Is Not a “Patent” An application must issue into a patent before it can be applied
 in a pre-AIA 35
 U.S.C. 102(d) rejection. Ex parte
 Fujishiro, 199 USPQ 36 (Bd. App. 1977) (“Patenting,” within the
 meaning of pre-AIA 35 U.S.C. 102(d) , does not occur upon laying open
 of a Japanese utility model application (kokai or kohyo)); Ex parte
 Links, 184 USPQ 429 (Bd. App. 1974) (German applications, which have
 not yet been published for opposition, are published in the form of printed
 documents called Offenlegungsschriften 18 months after filing. These applications
 are unexamined or in the process of being examined at the time of publication. The
 Board held that an Offenlegungsschrift is not a patent under pre-AIA 35 U.S.C.
 102(d) even though some provisional rights are granted. The
 Board explained that the provisional rights are minimal and do not come into force
 if the application is withdrawn or refused.).
 

 C. An Allowed Application Can Be a “Patent” for Purposes of Pre-AIA 35
 U.S.C. 102(d) as of the Date Published for Opposition Even Though It Has Not
 Yet Been Granted as a Patent An examined application which has been allowed by the examiner
 and published to allow the public to oppose the grant of a patent has been held to
 be a “patent” for purposes of rejection under pre-AIA 35 U.S.C. 102(d) as of
 the date of publication for opposition if substantial provisional enforcement
 rights arise. Ex parte Beik, 161 USPQ 795 (Bd. App. 1968) (This
 case dealt with examined German applications. After a determination that an
 application is allowable, the application is published in the form of a printed
 document called an Auslegeschrift. The publication begins a period of opposition
 were the public can present evidence showing unpatentability. Provisional patent
 rights are granted which are substantially the same as those available once the
 opposition period is over and the patent is granted. The Board found that an
 Auslegeschrift provides the legal effect of a patent for purposes of rejection
 under pre-AIA 35
 U.S.C. 102(d) .).
 

 D. Grant Occurs When Patent Becomes Enforceable The critical date of a foreign patent as a reference under
 pre-AIA 35
 U.S.C. 102(d) is the date the patent becomes enforceable
 (issued, sealed or granted). In re Monks, 588 F.2d 308, 310,
 200 USPQ 129, 131 (CCPA 1978) (British reference became available as prior art on
 date the patent was “sealed” because as of this date applicant had the right to
 exclude others from making, using or selling the claimed invention.). 
 

 E. Pre-AIA 35 U.S.C. 102(d) Applies as of Grant Date Even If There Is a
 Period of Secrecy After Patent Grant A period of secrecy after granting the patent, as in Belgium and
 Spain, has been held to have no effect in connection with pre-AIA 35 U.S.C.
 102(d) . These patents are usable in rejections under
 pre-AIA 35
 U.S.C. 102(d) as of the date patent rights are granted.
 In re Kathawala, 9 F.3d 942, 28 USPQ2d 1789 (Fed. Cir. 1993)
 (An invention is “patented” for purposes of pre-AIA 35 U.S.C. 102(d) when
 the patentee’s rights under the patent become fixed. The fact that applicant’s
 Spanish application was not published until after the U.S. filing date is
 immaterial since the Spanish patent was granted before U.S. filing.);
 Gramme Elec. Co. v. Arnoux and Hochhausen Elec. Co., 17 F.
 838, 1883 C.D. 418 (S.D.N.Y. 1883) (Rejection made under a predecessor of
 pre-AIA 35
 U.S.C. 102(d) based on an Austrian patent granted an
 exclusionary right for 1 year but was kept secret, at the option of the patentee,
 for that period. The court held that the Austrian patent grant date was the
 relevant date under the statute for purposes of pre-AIA 35 U.S.C.
 102(d) but that the patent could not have been used to in a
 rejection under pre-AIA 35 U.S.C. 102(a) or (b) ); In re
 Talbott, 443 F.2d 1397, 170 USPQ 281 (CCPA 1971) (Applicant cannot
 avoid a pre-AIA
 35 U.S.C. 102(d) rejection by exercising an option to keep
 the subject matter of a German Gebrauchsmuster (petty patent) in secrecy until
 time of U.S. filing.). 
 

 IV. THE SAME INVENTION MUST BE INVOLVED 
 

 “Same Invention” Means That the Application Claims Could Have Been
 Presented in the Foreign Patent Under pre-AIA 35 U.S.C. 102(d) , the
 “invention... patented” in the foreign country must be the same as the invention
 sought to be patented in the U.S. When the foreign patent contains the same claims
 as the U.S. application, there is no question that “the invention was first
 patented... in a foreign country.” In re Kathawala, 9 F.3d 942,
 945, 28 USPQ2d 1785, 1787 (Fed. Cir. 1993). However, the claims need not be
 identical or even within the same statutory class. If applicant is granted a
 foreign patent which fully discloses the invention and which gives applicant a
 number of different claiming options in the U.S., the reference in
 pre-AIA
 35 U.S.C. 102(d) to “‘invention... patented’ necessarily
 includes all the disclosed aspects of the invention. Thus, the [pre-AIA] section
 102(d) bar applies regardless whether the foreign patent
 contains claims to less than all aspects of the invention.” 9 F.3d at 946,
 28 USPQ2d at 1788. In essence, a pre-AIA 35 U.S.C. 102(d) 
 rejection applies if applicant’s foreign application supports the subject matter
 of the U.S. claims. Id. at 944, 947, 28 USPQ2d at 1786, 1789
 (Applicant was granted a Spanish patent claiming a method of making a composition.
 The patent disclosed compounds, methods of use and processes of making the
 compounds. After the Spanish patent was granted, the applicant filed a U.S.
 application with claims directed to the compound but not the process of making it.
 The Federal Circuit held that it did not matter that the claims in the U.S.
 application were directed to the composition instead of the process because the
 foreign specification would have supported claims to the composition. It was
 immaterial that the formulations were unpatentable pharmaceutical compositions in
 Spain.).
 

 

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 2101-2102-[Reserved] 

 2103-Patent Examination Process 

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

 
 

 2105-Patent Eligible Subject Matter — Living Subject Matter 

 2106-Patent Subject Matter Eligibility 
 2106.01-[Reserved] 

 2106.02-[Reserved] 

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

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

 2106.04(a)(2)-Abstract Idea Groupings 

 2106.04(a)(3)-Tentative Abstract Ideas 

 
 

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

 2106.04(c)-The Markedly Different Characteristics Analysis 

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

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

 
 

 
 

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

 2106.05(b)-Particular Machine 

 2106.05(c)-Particular Transformation 

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

 2106.05(e)-Other Meaningful Limitations 

 2106.05(f)-Mere Instructions To Apply An Exception 

 2106.05(g)-Insignificant Extra-Solution Activity 

 2106.05(h)-Field of Use and Technological Environment 

 
 

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

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

 
 

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

 
 

 2106.07(b)-Evaluating Applicant’s Response 

 2106.07(c)-Clarifying the Record 

 
 

 
 

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

 2107.02-Procedural Considerations Related to Rejections for Lack of Utility 

 2107.03-Special Considerations for Asserted Therapeutic or Pharmacological Utilities 

 
 

 2108-[Reserved] 

 2109-Inventorship 

 2109.01-Joint Inventorship 

 2110-[Reserved] 

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

 2111.02-Effect of Preamble 

 2111.03-Transitional Phrases 

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

 2111.05-Functional and Nonfunctional Descriptive Material 

 
 

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

 2112.02-Process Claims 

 
 

 2113-Product-by-Process Claims 

 2114-Apparatus and Article Claims — Functional Language 

 2115-Material or Article Worked Upon by Apparatus 

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

 
 

 2117-Markush Claims 

 2118-2119-[Reserved] 

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

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

 
 

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

 2121.02-Compounds and Compositions — What Constitutes Enabling Prior Art 

 2121.03-Plant Genetics — What Constitutes Enabling Prior Art 

 2121.04-Apparatus and Articles — What Constitutes Enabling Prior Art 

 
 

 2122-Discussion of Utility in the Prior Art 

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

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

 
 

 2125-Drawings as Prior Art 

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

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

 
 

 2127-Domestic and Foreign Patent Applications as Prior Art 

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

 2128.02-Date Publication Is Available as a Reference 

 
 

 2129-Admissions as Prior Art 

 2130-[Reserved] 

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

 2131.02-Genus-Species Situations 

 2131.03-Anticipation of Ranges 

 2131.04-Secondary Considerations 

 2131.05-Nonanalogous or Disparaging Prior Art 

 
 

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

 
 

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

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

 
 

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

 2133.03(b)-“On Sale” 

 2133.03(c)-The “Invention” 

 2133.03(d)-“In This Country” 

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

 2133.03(e)(2)-Intent 

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

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

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

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

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

 
 

 
 

 
 

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

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

 
 

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

 2136.02-Content of the Prior Art Available Against the Claims 

 2136.03-Critical Reference Date 

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

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

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

 
 

 
 

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

 2137.02-[Reserved] 

 
 

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

 2138.02-“The Invention Was Made in This Country” 

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

 2138.04-“Conception” 

 2138.05-“Reduction to Practice” 

 2138.06-“Reasonable Diligence” 

 
 

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

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

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

 
 

 2140-[Reserved] 

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

 
 

 2141.02-Differences Between Prior Art and Claimed Invention 

 2141.03-Level of Ordinary Skill in the Art 

 
 

 2142-Legal Concept of Prima Facie Obviousness 

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

 2143.02-Reasonable Expectation of Success Is Required 

 2143.03-All Claim Limitations Must Be Considered 

 
 

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

 2144.02-Reliance on Scientific Theory 

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

 2144.04-Legal Precedent as Source of Supporting Rationale 

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

 2144.06-Art Recognized Equivalence for the Same Purpose 

 2144.07-Art Recognized Suitability for an Intended Purpose 

 2144.08-Obviousness of Species When Prior Art Teaches Genus 

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

 
 

 2145-Consideration of Applicant’s Rebuttal Arguments and Evidence 

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

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

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

 
 

 
 

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

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

 2149-[Reserved] 

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

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

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

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

 2152.02(b)-Described in a Printed Publication 

 2152.02(c)-In Public Use 

 2152.02(d)-On Sale 

 2152.02(e)-Otherwise Available to the Public 

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

 
 

 2152.03-Admissions 

 2152.04-The Meaning of “Disclosure” 

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

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

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

 
 

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

 2153.01(b)-[Reserved] 

 
 

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

 
 

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

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

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

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

 
 

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

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

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

 
 

 
 

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

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

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

 2155.04-Enablement 

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

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

 
 

 2156-Joint Research Agreements 

 2157-Improper Naming of Inventors 

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

 
 

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

 2159.02-Applications Filed on or After March 16, 2013 

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

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

 
 

 2160-[Reserved] 

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

 
 

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

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

 2163.02-Standard for Determining Compliance With the Written Description Requirement 

 2163.03-Typical Circumstances Where Adequate Written Description Issue Arises 

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

 2163.05-Changes to the Scope of Claims 

 2163.06-Relationship of Written Description Requirement to New Matter 

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

 2163.07(b)-Incorporation by Reference 

 
 

 
 

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

 2164.01(b)-How to Make the Claimed Invention 

 2164.01(c)-How to Use the Claimed Invention 

 
 

 2164.02-Working and Prophetic Examples 

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

 2164.04-Burden on the Examiner Under the Enablement Requirement 

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

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

 
 

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

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

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

 
 

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

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

 2164.08(b)-Inoperative Subject Matter 

 2164.08(c)-Critical Feature Not Claimed 

 
 

 
 

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

 2165.02-Best Mode Requirement Compared to Enablement Requirement 

 2165.03-Requirements for Rejection for Lack of Best Mode 

 2165.04-Examples of Evidence of Concealment 

 
 

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

 2167-2170-[Reserved] 

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

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

 
 

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

 2173.02-Determining Whether Claim Language is Definite 

 2173.03-Correspondence Between Specification and Claims 

 2173.04-Breadth Is Not Indefiniteness 

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

 2173.05(b)-Relative Terminology 

 2173.05(c)-Numerical Ranges and Amounts Limitations 

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

 2173.05(e)-Lack of Antecedent Basis 

 2173.05(f)-Reference to Limitations in Another Claim 

 2173.05(g)-Functional Limitations 

 2173.05(h)-Alternative Limitations 

 2173.05(i)-Negative Limitations 

 2173.05(j)-Old Combination 

 2173.05(k)-Aggregation 

 2173.05(l)-[Reserved] 

 2173.05(m)-Prolix 

 2173.05(n)-Multiplicity 

 2173.05(o)-Double Inclusion 

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

 2173.05(q)-“Use” Claims 

 2173.05(r)-Omnibus Claim 

 2173.05(s)-Reference to Figures or Tables 

 2173.05(t)-Chemical Formula 

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

 2173.05(v)-Mere Function of Machine 

 
 

 2173.06-Practice Compact Prosecution 

 
 

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

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

 2176-2180-[Reserved] 

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

 2182-Search and Identification of the Prior Art 

 2183-Making a Prima Facie Case of Equivalence 

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

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

 2186-Relationship to the Doctrine of Equivalents 

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

 2188-2189-[Reserved] 

 2190-Prosecution Laches and Res Judicata 

 

 

 
 

 
 
 

 
 

 

 
 
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