MPEP § 2139 — MPEP § 2139
Current through: 2022-07-01

2139-Rejections Under Pre-AIA 35 U.S.C. 102 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2100 

 Section 2139 
 

 
 
 
 
 
 2139 Rejections Under Pre-AIA 35 U.S.C. 102 [R-10.2019]

 Any application filed before March 16, 2013, is governed by
 pre-AIA 35 U.S.C.
 102 and 103 (i.e., the application is a pre-AIA
 first to invent application). Note that neither the filing of a request for continued
 examination, nor entry into the national stage under 35 U.S.C. 371 , constitutes the filing
 of a new application. Accordingly, such an application remains subject to pre-AIA 35 U.S.C. 102 
 and 103 even if a request for continued examination under
 37 CFR
 1.114 is filed on or after March 16, 2013, in an application that was
 filed before March 16, 2013. Similarly, a PCT application filed under 35 U.S.C. 363 
 before March 16, 2013, is subject to pre-AIA 35 U.S.C. 102 and
 103 , regardless of whether the application enters the national stage
 under 35 U.S.C.
 371 before or after March 16, 2013. 
 

 Certain applications filed on or after March 16, 2013 that
 claim the benefit of a filing date earlier than March 16, 2013 under 35 U.S.C. 120 ,
 121 , or 365 are also governed by
 pre-AIA 35 U.S.C.
 102 ; see MPEP § 2159 et seq. for guidance in determining whether such an application is
 subject to examination under the first to invent prior art regime.
 

 
 2139.01 Effective Filing Date of a Claimed Invention
 Under Pre-AIA 35 U.S.C. 102 [R-10.2019]
 

 In examining applications subject to pre-AIA 35 U.S.C.
 102 , the effective filing date of the claimed invention is the
 actual filing date of the U.S. application, unless situation (A), (B), or (C) as set
 forth below applies. Note that the actual U.S. filing date of an application that
 entered the national stage under 35 U.S.C. 371 is the international
 filing date. See 35
 U.S.C. 363 and MPEP § 1893.03(b) .
 

 
 (A) If the application is a continuation or divisional of one or
 more earlier U.S. applications or international applications and if the
 requirements of 35 U.S.C. 120 or
 365(c) have been satisfied, the effective filing date of
 the claimed invention is the same as the earliest filing date in the line of
 continuation or divisional applications.
 

 (B) If the application is a continuation-in-part of an earlier
 U.S. application or international application, any claims in the new application
 not supported by the specification and claims of the parent application have an
 effective filing date equal to the actual filing date of the new application. Any
 claims which are fully supported under 35 U.S.C. 112 by the earlier
 parent application have the effective filing date of that earlier parent
 application.
 

 (C) If the application properly claims benefit under
 35 U.S.C.
 119(e) to a provisional application, the effective filing
 date of the claimed invention is the filing date of the provisional application
 for any claims which are fully supported under the first paragraph of
 35 U.S.C.
 112 by the provisional application.
 

 
 The effective filing date for claims subject to
 pre-AIA 35 U.S.C.
 102 is not the filing date of the foreign priority document,
 although the filing date of the foreign priority document may be used to overcome
 certain references. See MPEP § 2136.05 et seq. 

 See MPEP
 § 1893.03(c) , subsection III for benefit claims under
 35 U.S.C.
 119(e) , 120 , or 365(c) in an
 application that entered the national stage under 35 U.S.C. 371 . See
 MPEP §§
 211.01(c) and 1895 for additional information on
 determining the effective filing dates of claimed inventions in a continuation,
 divisional, or continuation-in-part of a PCT application designating the U.S. See also
 MPEP §§
 1895.01 and 1896 which discuss differences between
 applications filed under 35 U.S.C. 111(a) and international
 applications that enter national stage under 35 U.S.C. 371 .
 

 

 
 2139.02 Determining Whether To Apply Pre-AIA 35 U.S.C.
 102(a), (b), or (e) [R-01.2024]
 

 [Editor Note: This MPEP section is not applicable to applications
 subject to examination under the first inventor to file 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 first inventor to file (FITF) provisions, and
 MPEP
 § 2150 et seq. for examination of applications subject to
 those provisions. See MPEP § 2152.05 for the examination
 of applications subject to the first inventor to file provisions of the
 AIA.] 

 I. PRE-AIA 35 U.S.C. 102(b) First, the examiner should consider whether the
 reference qualifies as prior art under pre-AIA 35 U.S.C. 102(b) because
 this section results in a statutory bar to obtaining a patent. If the publication or
 issue date of the reference is more than 1 year prior to the effective filing date of
 the claimed invention ( MPEP § 2139.01 ), the reference
 qualifies as prior art under pre-AIA 35 U.S.C. 102(b) .
 

 Publications, patents, public uses and sales, however,
 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.
 

 If there is evidence of public use or sale activity
 more than one year prior to the effective filing date of the claimed invention, a
 rejection should be made under pre-AIA 35 U.S.C. 102(b) , which
 results in a statutory bar to obtaining a patent, rather than under pre-AIA 35 U.S.C.
 102(a) . Note that mere knowledge of the invention by the public
 does not warrant rejection under pre-AIA 35 U.S.C. 102(b) ,
 although public knowledge may provide grounds for rejection under pre-AIA 35 U.S.C.
 102(a) . See MPEP §§ 2132 and
 2133.03(a) . 
 

 II. PRE-AIA 35 U.S.C. 102(e) If the publication or issue date of the reference is
 too recent for pre-AIA 35 U.S.C. 102(b) to apply, then the examiner should
 consider pre-AIA 35
 U.S.C. 102(e) .
 

 Pre-AIA 35 U.S.C. 102(e) allows
 the use of certain international application publications and U.S. patent application
 publications, and certain U.S. patents as prior art under pre-AIA 35 U.S.C.
 102(e) as of their respective U.S. filing dates, including
 certain international filing dates. The prior art date of a reference under
 pre-AIA 35
 U.S.C. 102(e) may be the international filing date if the
 international filing date was on or after November 29, 2000, the international
 application designated the United States, and the international application was
 published by the World Intellectual Property Organization (WIPO) under the Patent
 Cooperation Treaty (PCT) Article 21(2) in the English language. See
 MPEP §
 2136 for examination guidelines on the application of
 pre-AIA 35
 U.S.C. 102(e) . References based on international applications
 that were filed prior to November 29, 2000 are subject to the "pre-AIPA" version of
 35 U.S.C. 102(e) in force on November 28, 2000. See subsection
 III , below and MPEP § 2136.03 for additional
 information.
 

 In order to apply a reference under pre-AIA 35 U.S.C.
 102(e) , the inventive entity of the application must be
 different from that of the reference. Note that, where there are joint inventors,
 only one joint inventor needs to be different for the inventive entities to be
 different and a rejection under pre-AIA 35 U.S.C. 102(e) is
 applicable even if there are some joint inventors in common between the application
 and the reference.
 

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

 *****

 
 (e) the invention was described in — (1) an
 application for patent, published under section 122(b) , by
 another filed in the United States before the invention by the applicant for
 patent or (2) a patent granted on an application for patent by another filed
 in the United States before the invention by the applicant for patent,
 except that an international application filed under the treaty defined in
 section
 351(a) shall have the effects for the purposes of this
 subsection of an application filed in the United States only if the
 international application designated the United States and was published
 under Article 21(2) of such treaty in the English language;
 or 
 

 
 *****

 

 Pre-AIA 35 U.S.C.
 102(e) has two separate clauses, namely, pre-AIA 35 U.S.C.
 102(e)(1) for publications of patent applications and
 pre-AIA 35
 U.S.C. 102(e)(2) for U.S. patents. Pre-AIA 35 U.S.C.
 102(e)(1) , in combination with pre-AIA 35 U.S.C.
 374 , created a new category of prior art by providing prior art
 effect for certain publications of patent applications, including certain
 international applications, as of their effectively filed dates in the United States
 (which include certain international filing dates). Under pre-AIA 35 U.S.C.
 102(e) , an international filing date which is on or after
 November 29, 2000 is the United States filing date if the international application
 designated the United States and was published by the World Intellectual Property
 Organization (WIPO) under the Patent Cooperation Treaty (PCT) Article
 21(2) in the English language. Therefore, the prior art date of
 a reference under pre-AIA 35 U.S.C. 102(e) may be the international filing date
 (if all three conditions noted above are met) or an earlier U.S. filing date for
 which priority or benefit is properly claimed.
 

 Publication under PCT Article 21(2) may result from
 a request for early publication by an applicant of an international application or
 after the expiration of 18-months after the earliest claimed priority date in an
 international application. International applications, which: (1) were filed prior to
 November 29, 2000, or (2) did not designate the U.S., or (3) were not published in
 English under PCT
 Article 21(2) by WIPO, may not be used to reach back (bridge)
 to an earlier filing date through a priority or benefit claim for prior art purposes
 under pre-AIA 35
 U.S.C. 102(e) . An international filing date which is on or
 after November 29, 2000 is a United States filing date for purposes of determining
 the earliest effective prior art date of a patent if the international application
 designated the United States and was published in the English language under
 PCT Article
 21(2) by WIPO. No international filing dates prior to November
 29, 2000 may be relied upon as a prior art date under pre-AIA 35 U.S.C.
 102(e) . 
 

 III. “PRE-AIPA” 35 U.S.C. 102(e) AS IN FORCE ON NOVEMBER 28, 2000 
 “Pre-AIPA” 35 U.S.C. 102 
 Conditions for patentability; novelty and
 loss of right to patent (as in force on November 28, 2000). 

 A person shall be entitled to a patent unless - 

 *****

 
 (e) the invention was described in a patent
 granted on an application for patent by another filed in the United States
 before the invention thereof by the applicant for patent, or on an
 international application by another who has fulfilled the requirements of
 paragraphs (1), (2), and (4) of section 371(c) of this title before the
 invention thereof by the applicant for patent. 
 

 
 *****

 

 Patents issued directly, or indirectly, from
 international applications filed before November 29, 2000 may only be used as prior
 art based on the provisions of pre-AIPA 35 U.S.C. 102(e) as in force on November 28,
 2000. Thus, the pre-AIPA 35 U.S.C. 102(e) date of such a prior art patent is the
 earliest of the date of compliance with 35 U.S.C. 371(c)(1), (2) and (4), or the
 filing date of the later-filed U.S. continuing application that claimed the benefit
 of the international application. Publications of international applications filed
 before November 29, 2000 (which would include WIPO publications and U.S. publications
 of the national stage (35 U.S.C. 371)) do not have a pre-AIPA 35 U.S.C. 102(e) date
 at all (however, such publications are available as prior art under pre-AIA 35 U.S.C. 102(a)
 or (b) as of their publication date).
 

 IV. PRE-AIA 35 U.S.C. 102(a) Even if the reference is prior art under
 pre-AIA 35
 U.S.C. 102(e) , the examiner should still consider
 pre-AIA 35 U.S.C. 102(a) for two reasons. First, if the
 reference is a U.S. patent or patent application publication of, or claims benefit
 of, an international application, the publication of the international application
 under PCT Article
 21(2) may be the earliest prior art date under
 pre-AIA 35 U.S.C. 102(a) for the disclosure. Second,
 references that are only prior art under pre-AIA 35 U.S.C. 102(e), (f), or
 (g) and applied in a rejection under pre-AIA 35 U.S.C.
 103(a) are subject to being disqualified under
 pre-AIA 35
 U.S.C. 103(c) if the reference and the application were
 commonly owned, or subject to an obligation of common assignment, at the time the
 invention was made. For pre-AIA 35 U.S.C. 102(a) to
 apply, the reference must have a publication date earlier in time than the effective
 filing date of the claimed invention in the application under examination, and must
 not be the inventor or at least one joint inventor's own work. 
 

 If the claimed invention is the subject of activity by
 an entity other than the inventor, such as sale by another, manufacture by another or
 disclosure of the invention by at least one joint inventor to another entity 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
 applicant made the invention and only disclosed it to others within the year prior to
 the effective filing date.
 

 

 
 2139.03 Form Paragraphs for Use in Rejections Under
 Pre-AIA 35 U.S.C. 102 [R-07.2022]
 

 The following form paragraphs should be used in making
 the appropriate rejections. Note that the particular part of the reference relied upon
 to support the rejection should be identified. 
 

 ¶ 7.06 Notice re prior art available under both pre-AIA and
 AIA
 

 In the event the determination of the status of the application as subject
 to AIA 35 U.S.C.
 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 
 and 103 )
 is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA) for
 the rejection will not be considered a new ground of rejection if the prior art relied upon,
 and the rationale supporting the rejection, would be the same under either status.
 

 Examiner Note:
 
 1. This form paragraph must be used in all Office
 Actions when a prior art rejection is made in an application with an actual filing
 date on or after March 16, 2013, that claims priority to, or the benefit of, an
 application filed before March 16, 2013.
 

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

 ¶ 7.07.fti Statement of Statutory Basis, pre-AIA 35 U.S.C.
 102
 

 The following is a quotation of the appropriate paragraphs of
 pre-AIA 35 U.S.C.
 102 that form the basis for the rejections under this section made in
 this Office action:
 

 A person shall be entitled to a patent
 unless—
 

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

 2. Form paragraphs 7.07.fti to
 7.14.fti 
 are to be used ONLY ONCE in a given Office action.
 

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

 ¶ 7.08.fti Pre-AIA 102(a), Activity by Another Before Invention by
 Applicant
 

 (a) the invention was known or used by others in this
 country, or patented or described in a printed publication in this or a foreign country,
 before the invention thereof by the applicant for a patent.
 

 Examiner Note:

 This form paragraph must be preceded by form paragraph
 7.07.fti 
 .
 

 

 ¶ 7.09.fti Pre-AIA 102(b), Activity More Than One Year Prior to
 Filing
 

 (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.
 

 Examiner Note:

 This form paragraph must be preceded by form paragraph
 7.07.fti ,
 and may be preceded by form paragraph 7.08.fti .
 

 

 ¶ 7.10.fti Pre-AIA 102(c), Invention Abandoned

 (c) he has abandoned the invention.

 Examiner Note:

 This form paragraph must be preceded by form paragraph
 7.07.fti ,
 and may be preceded by one or more of form paragraphs 7.08.fti and 7.09.fti .
 

 

 ¶ 7.11.fti Pre-AIA 102(d), Foreign Patenting

 (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.
 

 Examiner Note:

 This form paragraph must be preceded by form paragraph
 7.07.fti ,
 and may be preceded by one or more of form paragraphs 7.08.fti to 7.10.fti .
 

 

 ¶ 7.12.fti Pre-AIA 35 U.S.C 102(e), Patent Application Publication or
 Patent to Another with Earlier Filing Date, in view of the American Inventors Protection Act
 of 1999 (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of
 2002
 

 (e) the invention was described in (1) an application for
 patent, published under section 122(b) , by another filed in the United
 States before the invention by the applicant for patent or (2) a patent granted on an
 application for patent by another filed in the United States before the invention by the
 applicant for patent, except that an international application filed under the treaty defined
 in section 351(a) shall have the effects for purposes of this subsection of an
 application filed in the United States only if the international application designated the
 United States and was published under Article 21(2) of such treaty in the
 English language.
 

 Examiner Note:
 
 1. This form paragraph should only be used if the
 reference is one of the following: 
 a U.S. patent or a publication of a U.S.
 application for patent filed under 35 U.S.C. 111(a) ;
 
 

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

 a U.S. patent issued from, or a WIPO
 publication of, an international design application that designates the United
 States.
 
 
 

 2. In determining the pre-AIA 35 U.S.C. 102(e) date,
 consider benefit claims to earlier-filed U.S. provisional applications under
 35 U.S.C.
 119(e) , and to earlier-filed U.S. nonprovisional applications and
 international applications under 35 U.S.C. 120 , 121 ,
 365(c) , or 386(c) if the subject matter used to
 make the rejection is appropriately supported in the relied upon earlier-filed
 application’s disclosure (and any intermediate application(s)). Do NOT consider foreign
 priority claims under 35 U.S.C. 119(a) - (d) ,
 365(a) or
 (b) , or 386(a) or (b) . 
 
 In addition, a reference (i.e., a U.S. patent, published U.S.
 patent application, or WIPO publication) is entitled to the benefit of the filing date
 of a provisional application only if at least one of the claims in the reference is
 supported by the written description of the provisional application in compliance with
 pre-AIA 35 U.S.C.
 112 , first paragraph or 35 U.S.C.
 112(a) . See Dynamic Drinkware, LLC, v. National Graphics,
 Inc., 800 F.3d 1375, 116 USPQ2d 1045 (Fed. Cir. 2015) and Amgen v.
 Sanofi , 872 F.3d 1367, 1380 (Fed. Cir. 2017).
 

 

 3. In order to rely on an international filing date for
 prior art purposes under pre-AIA 35 U.S.C. 102(e) , the
 international application (PCT) must have been filed on or after November 29, 2000, it
 must have designated the U.S., and the international publication under PCT Article
 21(2) by WIPO must have been in English. If any one of the
 conditions is not met, the international filing date is not a U.S. filing date for prior
 art purposes under pre-AIA 35 U.S.C. 102(e) .
 
 

 4. If an international application (PCT) was published
 by WIPO in a language other than English, or did not designate the U.S., the
 international application’s publication by WIPO, the U.S. publication of the national
 stage application ( 35 U.S.C. 371 ) of the international
 application and a U.S. patent issued from the national stage of the international
 application may not be applied as a reference under pre-AIA 35 U.S.C.
 102(e) . The reference may be applied under pre-AIA 35 U.S.C.
 102(a) or (b) as of its publication date. See
 form paragraphs 7.08.fti
 and 7.09.fti . 
 

 5. If an international application (PCT) was published by WIPO in a
 language other than English, the U.S. publication of, or a U.S. patent issued from, a
 continuing application claiming benefit under 35 U.S.C. 120 , 121 ,
 365(c) , or 386(c) to such an international application, has a
 pre-AIA 35 U.S.C.
 102(e) date as of the earliest U.S. filing date after the
 international filing date. 
 

 6. If the reference is a U.S. patent issued directly, or
 indirectly, from an international application (PCT) that has an international filing
 date prior to November 29, 2000, use form paragraph 7.12.01.fti . In that situation,
 pre-AIPA 35 U.S.C. 102(e) is applicable in
 the determination of the prior art date of the patent issued from such an international
 application. 
 

 7. If the reference is a publication of an
 international application (PCT), including the U.S. publication of a national stage
 ( 35 U.S.C.
 371 ), that has an international filing date prior to November 29,
 2000, do not use this form paragraph. Such a reference may not be applied as a prior art
 reference under pre-AIA 35 U.S.C. 102(e) . The reference may be applied under
 pre-AIA 35
 U.S.C. 102(a) or (b) as of its publication date. See
 form paragraphs 7.08.fti and 7.09.fti . 
 

 8. This form paragraph must be preceded by form
 paragraph 7.07.fti , and may be preceded by one or more of form
 paragraphs 7.08.fti
 to 7.11.fti . 
 
 
 

 ¶ 7.12.01.fti Pre-AIPA 35 U.S.C. 102(e), Patent to Another with Earlier
 Filing Date, Reference is a U.S. Patent Issued Directly or Indirectly From a National Stage
 of, or a Continuing Application Claiming Benefit to, an International Application Having an
 International Filing Date Prior to November 29, 2000
 

 (e) the invention was described in a patent granted on an
 application for patent by another filed in the United States before the invention thereof by
 the applicant for patent, or on an international application by another who has fulfilled the
 requirements of paragraphs (1), (2), and (4) of section 371(c) of this title
 before the invention thereof by the applicant for patent. 
 

 The changes made to 35 U.S.C. 102(e) by the American
 Inventors Protection Act of 1999 (AIPA) and the Intellectual Property and High Technology
 Technical Amendments Act of 2002 do not apply when the reference is a U.S. patent resulting
 directly or indirectly from an international application filed before November 29, 2000.
 Therefore, the prior art date of the reference is determined under 35 U.S.C. 102(e) prior to
 the amendment by the AIPA ( pre-AIPA 35 U.S.C. 102(e)).
 

 Examiner Note:
 
 1. This form paragraph should only be used if the
 reference is a U.S. patent issued directly or indirectly from either a national stage of
 an international application (application under 35 U.S.C. 371 )
 which has an international filing date prior to November 29, 2000, or a continuing
 application claiming benefit to an international application having an international
 filing date prior to November 29, 2000. 
 

 2. If the reference is a U.S. patent issued directly from a
 national stage of such an international application, the reference’s 
 pre-AIPA 35 U.S.C. 102(e) date is the date that the requirements of
 35 U.S.C.
 371(c)(1), (2) and (4) were fulfilled. The language of WIPO
 publication (PCT) is not relevant in this situation. Caution: the international
 publication of the international application (PCT) by WIPO may have an earlier prior art
 date under pre-AIA 35 U.S.C. 102(a) or pre-AIA 102(b) .
 

 3. If the reference is a U.S. patent issued directly from a
 continuing application claiming benefit under 35 U.S.C. 120 , 121 or
 365(c) to such an international application (which had not
 entered the national stage prior to the continuing application’s filing date, otherwise
 see note 4), the prior art reference’s pre-AIPA 35 U.S.C. 102(e) date is
 the actual U.S. filing date of the continuing application. Caution: the international
 publication of the international application (PCT) by WIPO may have an earlier prior art
 date under pre-AIA 35
 U.S.C. 102(a) or pre-AIA 102(b) .
 

 4. In determining the pre-AIPA 35 U.S.C. 102(e) date,
 consider benefit claims to earlier-filed U.S. provisional applications under
 35 U.S.C.
 119(e) , and to earlier-filed U.S. nonprovisional applications and
 international applications under 35 U.S.C. 120 , 121 ,
 365(c) , or 386(c) only if the subject matter
 used to make the rejection is appropriately supported in the relied upon earlier-filed
 application’s disclosure (and any intermediate application(s)). A benefit claim to a
 U.S. patent of an earlier-filed international application may only result in an
 effective U.S. filing date as of the date the requirements of 35 U.S.C. 371(c)(1), (2) and
 (4) were fulfilled. Do NOT consider any benefit claims to U.S.
 applications which are filed before an international application. Do NOT consider
 foreign priority claims under 35 U.S.C. 119(a) - (d) ,
 365(a) or
 (b) , or 386(a) or (b) . 
 In addition, a reference (i.e., a U.S. patent, published U.S.
 patent application, or WIPO publication) is entitled to the benefit of the filing date
 of a provisional application only if at least one of the claims in the reference is
 supported by the written description of the provisional application in compliance with
 pre-AIA 35 U.S.C.
 112 , first paragraph or 35 U.S.C.
 112(a) . See Dynamic Drinkware, LLC, v. National Graphics,
 Inc., 800 F.3d 1375, 116 USPQ2d 1045 (Fed. Cir. 2015) and Amgen v.
 Sanofi , 872 F.3d 1367, 1380 (Fed. Cir. 2017).
 

 

 5. This form paragraph must be preceded by form
 paragraph 7.07.fti , and may be preceded by one or more of form
 paragraphs 7.08.fti to 7.11.fti .
 
 
 

 ¶ 7.13.fti Pre-AIA 102(f), Applicant Not the Inventor

 (f) he did not himself invent the subject matter sought to
 be patented.
 

 Examiner Note:
 
 This form paragraph must be preceded by form
 paragraph 7.07.fti , and may be preceded by one or more of form
 paragraphs 7.08.fti to 7.12.fti .
 
 
 

 ¶ 7.14.fti Pre-AIA 102(g), Priority of Invention

 (g)(1) during the course of an interference conducted under
 section 135 or section 291 , another inventor involved therein
 establishes, to the extent permitted in section 104 , that before
 such person’s invention thereof the invention was made by such other inventor and not
 abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the
 invention was made in this country by another inventor who had not abandoned, suppressed, or
 concealed it. In determining priority of invention under this subsection, there shall be
 considered not only the respective dates of conception and reduction to practice of the
 invention, but also the reasonable diligence of one who was first to conceive and last to
 reduce to practice, from a time prior to conception by the other.
 

 Examiner Note:
 
 This form paragraph must be preceded by form
 paragraph 7.07.fti , and may be preceded by one or more of form
 paragraphs 7.08.fti to 7.13.fti .
 
 
 

 ¶ 7.15.fti Rejection, Pre-AIA 35 U.S.C. 102(a), (b) Patent or Publication,
 and (g)
 

 Claim(s) [1] is/are rejected under pre-AIA 35 U.S.C. 102 [2] as being [3] by [4] .
 

 Examiner Note:
 
 1. In bracket 2, insert the appropriate paragraph letter or letters
 of pre-AIA 35 U.S.C.
 102 in parentheses. If paragraph (e) of pre-AIA 35 U.S.C.
 102 is applicable, use form paragraph 7.15.01.fti ,
 7.15.02.fti or 7.15.03.fti .
 

 2. In bracket 3, insert either --clearly anticipated-- or
 --anticipated-- with an explanation at the end of the paragraph. 
 

 3. In bracket 4, insert the prior art relied upon.

 4. This rejection must be preceded either by form paragraph
 7.07.fti 
 and form paragraphs 7.08.fti , 7.09.fti , and
 7.14.fti 
 as appropriate, or by form paragraph 7.103 .
 

 5. If pre-AIA 35 U.S.C. 102(e) is also
 being applied, this form paragraph must be followed by either form paragraph
 7.15.01.fti , 7.15.02.fti or
 7.15.03.fti .
 

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

 ¶ 7.15.01.fti Provisional Rejection, Pre-AIA 35 U.S.C. 102(e) - Common
 Assignee, Common Applicant, or At Least One Common (Joint) Inventor
 

 Claim(s) [1] is/are provisionally rejected under
 pre-AIA 35 U.S.C.
 102(e) as being anticipated by copending Application No. [2]
 which has a common [3] with the instant application.
 

 The copending application would constitute prior art under
 pre-AIA 35 U.S.C.
 102(e) if published under 35 U.S.C. 122(b) or patented. This
 provisional rejection under pre-AIA 35 U.S.C. 102(e) is based upon a presumption of future
 publication or patenting of the copending application. [4] .
 

 This provisional rejection under pre-AIA 35 U.S.C. 102(e) might be overcome
 either by a showing under 37
 CFR 1.132 that any invention disclosed but not claimed in the copending
 application was derived from the inventor of this application and is thus not the invention
 “by another,” or by an appropriate showing under 37 CFR 1.131(a) . 
 

 This rejection may not be overcome by the filing of a terminal
 disclaimer. See In re Bartfeld , 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir.
 1991).
 

 Examiner Note:
 
 1. This form paragraph is used to provisionally reject over a
 copending application that discloses the claimed invention and would constitute prior
 art under pre-AIA 35
 U.S.C. 102(e) if published under 35 U.S.C. 122 or
 patented. The copending application must have either a common assignee, a common
 applicant ( 35
 U.S.C. 118 ), or at least one common (joint) inventor.
 

 2. Use pre-AIA 35 U.S.C. 102(e) as amended
 by the American Inventors Protection Act (AIPA) and the Intellectual Property and High
 Technology Technical Amendments Act of 2002 (form paragraph 7.12.fti ) to determine the copending
 application’s prior art date, unless the copending application is based directly, or
 indirectly, from an international application which has an international filing date
 prior to November 29, 2000. If the copending application is either a national stage of
 an international application (application under 35 U.S.C. 371 ) which has an
 international filing date prior to November 29, 2000, or a continuing application
 claiming benefit under 35 U.S.C. 120 , 121 ,
 365(c) , or 386(c) to an international
 application having an international filing date prior to November 29, 2000, use
 pre-AIPA
 35 U.S.C. 102(e) (form paragraph 7.12.01.fti ). See the Examiner
 Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the
 determination of the reference’s 35 U.S.C. 102(e) date. 
 

 3. If the claims would have been obvious over the invention
 disclosed in the other copending application, use form paragraph
 7.21.01.fti .
 

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

 5. In bracket 4, an appropriate explanation may be provided in
 support of the examiner’s position on anticipation, if necessary.
 

 6. Under 35 U.S.C. 101 , two patents are not
 permitted to issue on identical subject matter. Any claims in the instant application
 directed to the same invention claimed in the reference should be provisionally rejected
 using form paragraphs 8.30
 and 8.32 . Additionally, the applicant should be required to
 amend or cancel claims such that the applied reference and the instant application no
 longer contain claims directed to the same invention using form paragraph
 8.27.fti .
 

 7. Any claims in the instant application that are directed to
 subject matter that is not patentably distinct from an invention claimed in the
 reference should be rejected (or provisionally rejected if the reference has not yet
 issued as a patent) on the grounds of nonstatutory double patenting using form paragraph
 8.33 and at
 least one of form paragraphs 8.34 - 8.39 .
 

 8. If evidence is additionally of record to show that either
 invention is prior art to the other under pre-AIA 35 U.S.C. 102(f) or
 (g) , a rejection using form paragraphs
 7.13.fti
 and/or 7.14.fti should also be made.
 

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

 ¶ 7.15.02.fti Rejection, Pre-AIA 35 U.S.C. 102(e), Common Assignee,
 Applicant, or Joint Inventor
 

 Claim(s) [1] is/are rejected under pre-AIA 35 U.S.C. 102(e) 
 as being anticipated by [2] .
 

 The applied reference has a common [3] with the instant
 application. Based upon the pre-AIA 35 U.S.C. 102(e) date of the reference, it constitutes prior
 art. This rejection under pre-AIA 35 U.S.C. 102(e) might be overcome either by a showing under
 37 CFR
 1.132 that any invention disclosed but not claimed in the reference was
 derived from the inventor or joint inventors (i.e., the inventive entity) of this application
 and is thus not the invention “by another,” or if the same invention is not being claimed, by
 an appropriate showing under 37 CFR 1.131(a) .
 

 Examiner Note:
 
 1. This form paragraph is used to reject over a patent or patent
 application publication that is prior art under pre-AIA 35 U.S.C. 102(e) to the
 claimed invention. The patent or patent application publication must have either a
 common assignee, a common applicant ( 35 U.S.C. 118 ), or a common (joint)
 inventor.
 

 2. Pre-AIA 35 U.S.C.
 102(e) as amended by the American Inventors Protection Act of 1999
 (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of
 2002 (form paragraph 7.12.fti ) must be applied if the reference is by
 another and is one of the following: 
 a U.S. patent or a publication of a U.S. application for
 patent filed under 35 U.S.C. 111(a) ;
 

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

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

 

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

 4. In determining the pre-AIA 35 U.S.C. 102(e) date,
 consider benefit claims to earlier-filed U.S. provisional applications under
 35 U.S.C.
 119(e) , and to earlier-filed U.S. nonprovisional applications and
 international applications under 35 U.S.C. 120 , 121 ,
 365(c) , or 386(c) if the subject matter used to
 make the rejection is appropriately supported in the relied upon earlier-filed
 application’s disclosure (and any intermediate application(s)). A benefit claim to a
 U.S. patent of an earlier-filed international application, which has an international
 filing date prior to November 29, 2000, may only result in a prior art date under
 pre-AIPA 35 U.S.C. 102(e) as of the date the requirements of 35 U.S.C.
 371(c)(1) , (2) and (4) were
 fulfilled. Do NOT consider any benefit claims to U.S. applications which are filed
 before an international application that has an international filing date prior to
 November 29, 2000. Do NOT consider foreign priority claims under 35 U.S.C.
 119(a) - (d) , 365(a) or (b) , or
 386(a) or
 (b) . 
 In addition, a reference (i.e., a U.S. patent, published U.S.
 patent application, or WIPO publication) is entitled to the benefit of the filing date
 of a provisional application only if at least one of the claims in the reference is
 supported by the written description of the provisional application in compliance with
 pre-AIA 35 U.S.C.
 112 , first paragraph or 35 U.S.C.
 112(a) . See Dynamic Drinkware, LLC, v. National Graphics,
 Inc., 800 F.3d 1375, 116 USPQ2d 1045 (Fed. Cir. 2015) and Amgen v.
 Sanofi , 872 F.3d 1367, 1380 (Fed. Cir. 2017).
 

 

 5. If the reference is a publication of an international application
 (PCT), including voluntary U.S. publication under 35 U.S.C. 122 of the national stage
 or a WIPO PCT publication, that has an international filing date prior to November 29,
 2000, did not designate the United States or was not published in English by WIPO, do
 not use this form paragraph. Such a reference is not a prior art reference under
 pre-AIA 35 U.S.C.
 102(e) . The reference may be applied under pre-AIA 35 U.S.C.
 102(a) or (b) as of its publication date. See
 form paragraphs 7.08.fti
 and 7.09.fti .
 

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

 7. This form paragraph must be preceded by either of form
 paragraphs 7.12.fti
 or 7.12.01.fti .
 

 8. Patent application publications may only be used if this form
 paragraph was preceded by form paragraph 7.12.fti .
 

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

 10. Under 35 U.S.C. 101 , two patents are not
 permitted to issue on identical subject matter. Any claims in the instant application
 directed to the same invention claimed in the reference should be rejected (or
 provisionally rejected if the reference has not yet issued as a patent) using form
 paragraphs 8.30 
 - 8.32 .
 Additionally, the applicant should be required to resolve any issue of priority under
 pre-AIA 35 U.S.C.
 102(g) and possibly pre-AIA 35 U.S.C. 102(f) using form
 paragraph 8.27.fti . See MPEP § 804 , subsection II.A.
 

 11. Any claims in the instant application that are directed to
 subject matter that is not patentably distinct from an invention claimed in the
 reference should be rejected (or provisionally rejected if the reference has not yet
 issued as a patent) on the grounds of nonstatutory double patenting using form paragraph
 8.33 and at
 least one of form paragraphs 8.34 - 8.39 .
 
 
 

 ¶ 7.15.03.fti Rejection, pre-AIA 35 U.S.C. 102(e), No Common Assignee or
 Inventor(s)
 

 Claim(s) [1] is/are rejected under pre-AIA 35 U.S.C. 102(e) 
 as being [2] by [3] .
 

 Examiner Note:
 
 1. This form paragraph is used to reject over a patent or patent
 application publication with an earlier filing date. The patent or patent application
 publication is not required to have a common assignee or a common inventor.
 

 2. Pre-AIA 35 U.S.C.
 102(e) as amended by the American Inventors Protection Act of 1999
 (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of
 2002 (form paragraph 7.12.fti ) must be applied if the reference is one of
 the following: 
 a U.S. patent or a publication of a U.S. application for
 patent filed under 35 U.S.C. 111(a) ;
 

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

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

 

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

 4. In determining the pre-AIA 35 U.S.C. 102(e) date,
 consider benefit claims to earlier-filed U.S. provisional applications under
 35 U.S.C.
 119(e) , and to earlier-filed U.S. nonprovisional applications and
 international applications under 35 U.S.C. 120 , 121 ,
 365(c) , or 386(c) if the subject matter used to
 make the rejection is appropriately supported in the relied upon earlier-filed
 application’s disclosure (and any intermediate application(s)). A benefit claim to a
 U.S. patent of an earlier-filed international application, which has an international
 filing date prior to November 29, 2000, may only result in a prior art date under
 pre-AIPA 35 U.S.C. 102(e) as of the date the requirements of 35 U.S.C.
 371(c)(1) , (2) and (4) were
 fulfilled. Do NOT consider any benefit claims to U.S. applications which are filed
 before an international application that has an international filing date prior to
 November 29, 2000. Do NOT consider foreign priority claims under 35 U.S.C.
 119(a) - (d) , 365(a) or (b) , or
 35 U.S.C.
 386(a) or (b) . 
 In addition, a reference (i.e., a U.S. patent, published U.S.
 patent application, or WIPO publication) is entitled to the benefit of the filing date
 of a provisional application only if at least one of the claims in the reference is
 supported by the written description of the provisional application in compliance with
 pre-AIA 35 U.S.C.
 112 , first paragraph or 35 U.S.C.
 112(a) . See Dynamic Drinkware, LLC, v. National Graphics,
 Inc., 800 F.3d 1375, 116 USPQ2d 1045 (Fed. Cir. 2015) and Amgen v.
 Sanofi , 872 F.3d 1367, 1380 (Fed. Cir. 2017).
 

 

 5. If the reference is a publication of an international
 application (PCT), including voluntary U.S. publication under 35 U.S.C. 122 of
 the national stage or a WIPO (PCT) publication, that has an international filing date
 prior to November 29, 2000, did not designate the United States or was not published in
 English by WIPO, do not use this form paragraph. Such a reference is not a prior art
 reference under pre-AIA 35 U.S.C. 102(e) . The reference may be applied under
 pre-AIA 35 U.S.C.
 102(a) or (b) as of its publication date. See
 form paragraphs 7.08.fti and 7.09.fti .
 

 6. In bracket 2, insert either --clearly anticipated-- or
 --anticipated-- with an explanation at the end of the paragraph. 
 

 7. In bracket 3, insert the prior art relied upon.

 8. This form paragraph must be preceded by either of form paragraphs
 7.12.fti
 or 7.12.01.fti .
 

 9. Patent application publications may only be used if this form
 paragraph was preceded by form paragraph 7.12.fti .
 
 
 

 ¶ 7.16.fti Rejection, pre-AIA 35 U.S.C. 102(b), Public Use or on
 Sale
 

 Claim [1] rejected under pre-AIA 35 U.S.C.
 102(b) based upon a public use or sale of the invention.
 [2] 

 Examiner Note:
 
 1. This form paragraph must be preceded either by form
 paragraphs 7.07.fti and 7.09.fti or by form paragraph
 7.103 .
 

 2. A full explanation of the evidence establishing a
 public use or sale must be provided in bracket 2.
 
 
 

 ¶ 7.17.fti Rejection, pre-AIA 35 U.S.C. 102(c), Abandonment of
 Invention
 

 Claim [1] rejected under pre-AIA 35 U.S.C. 102(c) 
 because the invention has been abandoned. [2] 

 Examiner Note:
 
 1. This form paragraph must be preceded either by form paragraph
 7.07.fti 
 and 7.10.fti
 or by form paragraph 7.103 .
 

 2. In bracket 2, insert a full explanation of the evidence
 establishing abandonment of the invention. See MPEP § 2134 .
 
 
 

 ¶ 7.18.fti Rejection, pre-AIA 35 U.S.C. 102(d), Foreign
 Patenting
 

 Claim [1] rejected under pre-AIA 35 U.S.C.
 102(d) as being barred by applicants [2] . [3] 

 Examiner Note:
 
 1. This form paragraph must be preceded either by form paragraphs
 7.07.fti 
 and 7.11.fti 
 or by form paragraph 7.103 .
 

 2. In bracket 3, insert an explanation of this rejection which must
 include appropriate dates and how they make the foreign patent available under
 pre-AIA
 35 U.S.C. 102(d) .
 

 3. Refer to MPEP § 2135 for applicable
 pre-AIA
 35 U.S.C. 102(d) prior art.
 
 
 

 ¶ 7.19.fti Rejection, pre-AIA 35 U.S.C. 102(f), Applicant Not the
 Inventor
 

 Claim [1] is/are rejected under pre-AIA 35 U.S.C. 102(f) 
 because the applicant did not invent the claimed subject matter. [2] 

 Examiner Note:
 
 1. This paragraph must be preceded either by paragraphs
 7.07.fti 
 and 7.13.fti 
 or by paragraph 7.103 .
 

 2. In bracket 2, insert an explanation of the supporting evidence establishing that
 applicant was not the inventor. See MPEP § 2137 .
 
 
 

 

 [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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