MPEP § 716 — MPEP § 716
Current through: 2022-07-01

716-Affidavits or Declarations Under 37 CFR 1.132 and Other Evidence Traversing Rejections 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 0700 

 Section 716 
 

 
 
 
 
 
 716 Affidavits or Declarations Under 37 CFR 1.132 and Other Evidence
 Traversing Rejections [R-07.2022]
 

 
 37 CFR 1.132 Affidavits or declarations traversing rejections or objections. 

 When any claim of an application or a patent under reexamination is
 rejected or objected to, any evidence submitted to traverse the rejection or objection
 on a basis not otherwise provided for must be by way of an oath or declaration under
 this section.
 

 

 It is the responsibility of the primary examiner to personally review and
 decide whether affidavits or declarations under 37 CFR 1.132 and other evidence
 submitted for the purpose of traversing grounds of rejection are responsive to the
 rejection and present sufficient facts to overcome the rejection. Publications may be
 evidence of the facts at issue and should be considered to the extent that they are
 probative and properly submitted. See MPEP § 716.01 et seq .
 

 This rule sets forth the general policy of the Office consistently followed
 for a long period of time of receiving affidavit evidence traversing rejections or
 objections. All affidavits or declarations presented which do not fall within or under
 other specific rules are to be treated or considered as falling under this rule.
 

 An affidavit is a statement in writing made under oath
 before a notary public, magistrate, or officer authorized to administer oaths. See
 MPEP §
 602 et seq. for additional information regarding formal requirements of
 affidavits. 
 

 37 CFR 1.68 permits a declaration to be
 used instead of an affidavit. The declaration must include an acknowledgment by the
 declarant that willful false statements and the like are punishable by fine or
 imprisonment, or both ( 18
 U.S.C. 1001 ) and may jeopardize the validity of the application or
 any patent issuing thereon. The declarant must set forth in the body of the declaration
 that all statements made of the declarant’s own knowledge are true and that all statements
 made on information and belief are believed to be true. 
 

 Form paragraph 7.65 or 7.66 and any of form paragraphs
 7.66.01 through 7.66.05 , as appropriate,
 should be used to comment on a 37 CFR 1.132 affidavit or
 declaration.
 

 ¶ 7.65 Affidavit or Declaration Under 37 CFR 1.132: Effective To Withdraw
 Rejection
 

 The [1] under
 37 CFR
 1.132 filed [2] is sufficient to overcome the rejection of
 claim [3] based upon [4] .
 

 Examiner Note:
 
 1. In bracket 1, insert either
 --affidavit-- or --declaration--.
 

 2. In bracket 2, insert the filing
 date of the affidavit or declaration.
 

 3. In bracket 3, insert the
 affected claim or claims.
 

 4. In bracket 4, indicate the
 rejection that has been overcome, including the statutory grounds, e.g.: insufficiency
 of disclosure under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C.
 112 , first paragraph; lack of utility under 35 U.S.C. 101 ;
 inoperativeness under 35 U.S.C. 101 ; a specific reference applied under
 35 U.S.C.
 103 ; etc. See MPEP § 716 .
 
 
 

 ¶ 7.66 Affidavit or Declaration Under 37 CFR 1.132:
 Insufficient
 

 The [1] under
 37 CFR
 1.132 filed [2] is insufficient to overcome the rejection
 of claim [3] based upon [4] as set forth in the last Office action
 because: 
 

 Examiner Note:
 
 1. In bracket 1, insert either
 --affidavit-- or --declaration--.
 

 2. In bracket 2, insert the filing
 date of the affidavit or declaration.
 

 3. In bracket 3, insert the claim
 or claims affected.
 

 4. In bracket 4, indicate the
 rejection that has not been overcome, including the statutory grounds, i.e.:
 insufficiency of disclosure under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C.
 112 , first paragraph; lack of utility and/or inoperativeness under
 35 U.S.C.
 101 ; a specific reference applied under 35 U.S.C. 103 ;
 etc. See MPEP §
 716 .
 

 5. Following this form paragraph,
 set forth the reasons for the insufficiency; e.g., categories include: --untimely--;
 --fails to set forth facts--; --facts presented are not germane to the rejection at
 issue--;--showing is not commensurate in scope with the claims--; etc. See
 MPEP §
 716 . Also include a detailed explanation of the reasons why
 the affidavit or declaration is insufficient. Any of form paragraphs
 7.66.01 -
 7.66.05 
 may be used, as appropriate. 
 
 
 

 ¶ 7.66.01 Reason Why Affidavit or Declaration Under 37 CFR 1.132 Is Insufficient: Affiant Has Never Seen Invention Before

 It includes statements which amount to an affirmation that the affiant has never seen the claimed subject matter before. This
 is not relevant to the issue of nonobviousness of the claimed subject matter and provides no objective evidence thereof. 
 See MPEP § 716 .
 

 Examiner Note:
 
 1. This form paragraph must be preceded by form paragraph 7.66 .
 

 2. A full explanation must be provided, if appropriate.
 
 

 ¶ 7.66.02 Reason Why Affidavit or Declaration Under 37 CFR 1.132 Is Insufficient: Invention Works as Intended

 It includes statements which amount to an affirmation that the claimed subject matter functions as it was intended to function.
 This is not relevant to the issue of nonobviousness of the claimed subject matter and provides no objective evidence thereof.
 See MPEP § 716 .
 

 Examiner Note:
 
 1. This form paragraph must be preceded by form paragraph 7.66 .
 

 2. A full explanation must be provided, if appropriate.
 
 

 ¶ 7.66.03 Reason Why Affidavit or Declaration Under 37 CFR 1.132 Is Insufficient: Refers Only to Invention, Not to Claims

 It refers only to the system described in the above referenced application and not to the individual claims of the application.
 As such the declaration does not show that the objective evidence of nonobviousness is commensurate in scope with the claims.
 See MPEP § 716 .
 

 Examiner Note:
 
 1. This form paragraph must be preceded by form paragraph 7.66 .
 

 2. A full explanation must be provided, if appropriate.
 
 

 ¶ 7.66.04 Reason Why Affidavit or Declaration Under 37 CFR 1.132 Is Insufficient: No Evidence of Long-Felt Need

 It states that the claimed subject matter solved a problem that was long
 standing in the art. However, there is no showing that others of ordinary skill in the art
 were working on the problem and if so, for how long. In addition, there is no evidence that if
 persons skilled in the art who were presumably working on the problem knew of the teachings of
 the above cited references, they would still be unable to solve the problem. See
 MPEP §
 716.04 .
 

 Examiner Note:
 
 1. This form paragraph must be preceded by form paragraph 7.66 .
 

 2. A full explanation must be provided, if appropriate.
 
 

 ¶ 7.66.05 Reason Why Affidavit or Declaration Under 37 CFR 1.132 Is Insufficient: Conclusion

 In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness
 fails to outweigh the evidence of obviousness.
 

 Examiner Note:

 This form paragraph should be presented as a conclusion to your explanation of why the affidavit or declaration under 37 CFR 1.132 is insufficient, and it must be preceded by form paragraph 7.66 .
 

 

 
 716.01 Generally Applicable Criteria [R-08.2012]

 The following criteria are applicable to all evidence traversing
 rejections submitted by applicants, including affidavits or declarations submitted under
 37 CFR
 1.132 :
 

 
 (A) Timeliness .
 
 Evidence traversing rejections must be timely or seasonably
 filed to be entered and entitled to consideration. In re
 Rothermel, 276 F.2d 393, 125 USPQ 328 (CCPA 1960). 
 

 Affidavits and declarations submitted under
 37 CFR
 1.132 and other evidence traversing rejections are
 considered timely if submitted:
 
 (1) prior to a final rejection, 

 (2) before appeal in an application not having a final
 rejection, 
 

 (3) after final rejection , but before or on the same date
 of filing an appeal, upon a showing of good and sufficient reasons why
 the affidavit or other evidence is necessary and was not earlier
 presented in compliance with 37 CFR 1.116(e) ;
 or 
 

 (4) after the prosecution is closed (e.g., after a final
 rejection, after appeal, or after allowance) if applicant files the
 affidavit or other evidence with a request for continued examination
 (RCE) under 37 CFR 1.114 in a
 utility or plant application filed on or after June 8, 1995; or a
 continued prosecution application (CPA) under 37 CFR
 1.53(d) in a design application.
 

 
 For affidavits or declarations under 37 CFR
 1.132 filed after appeal, see 37 CFR
 41.33(d) and MPEP § 1206 and
 §
 1211.03 .
 

 

 
 

 (B) Consideration of evidence. 
 Evidence traversing rejections, when timely presented, must
 be considered by the examiner whenever present. All entered affidavits,
 declarations, and other evidence traversing rejections are acknowledged and
 commented upon by the examiner in the next succeeding action. The extent of
 the commentary depends on the action taken by the examiner. Where an
 examiner holds that the evidence is sufficient to overcome the
 prima facie case, the comments should be consistent
 with the guidelines for statements of reasons for allowance. See
 MPEP
 § 1302.14 . Where the evidence is insufficient to
 overcome the rejection, the examiner must specifically explain why the
 evidence is insufficient. General statements such as “the declaration lacks
 technical validity” or “the evidence is not commensurate with the scope of
 the claims” without an explanation supporting such findings are
 insufficient.
 

 
 

 
 
 716.01(a) Objective Evidence of Nonobviousness [R-08.2017]
OBJECTIVE EVIDENCE MUST BE CONSIDERED WHEN TIMELY PRESENT 
 Affidavits or declarations, when timely presented, containing
 evidence of criticality or unexpected results, commercial success, long-felt but
 unsolved needs, failure of others, skepticism of experts, etc., must be considered
 by the examiner in determining the issue of obviousness of claims for
 patentability under 35 U.S.C. 103 . The Court of
 Appeals for the Federal Circuit stated in Stratoflex, Inc. v. Aeroquip
 Corp., 713 F.2d 1530, 1538, 218 USPQ 871, 879 (Fed. Cir. 1983) that
 “evidence rising out of the so-called ‘secondary considerations’ must always when
 present be considered en route to a determination of obviousness.” Such evidence
 might give light to circumstances surrounding the origin of the subject matter
 sought to be patented. As indicia of obviousness or unobviousness, such evidence
 may have relevancy. Graham v. John Deere Co., 383 U.S. 1, 148
 USPQ 459 (1966); In re Palmer, 451 F.2d 1100, 172 USPQ 126
 (CCPA 1971); In re Fielder, 471 F.2d 640, 176 USPQ 300 (CCPA
 1973). The Graham v. John Deere pronouncements on the relevance
 of commercial success, etc. to a determination of obviousness were not negated in
 Sakraida v. Ag Pro, 425 U.S. 273, 189 USPQ 449 (1976) or
 Anderson’s-Black Rock Inc. v. Pavement Salvage Co., 396 U.S.
 57, 163 USPQ 673 (1969), where reliance was placed upon A&P Tea Co.
 v. Supermarket Corp., 340 U.S. 147, 87 USPQ 303 (1950). See
 Dann v. Johnston, 425 U.S. 219, 226 n.4, 189 USPQ 257, 261
 n. 4 (1976).
 

 Examiners must consider comparative data in the specification
 which is intended to illustrate the claimed invention in reaching a conclusion
 with regard to the obviousness of the claims. In re Margolis, 
 785 F.2d 1029, 228 USPQ 940 (Fed. Cir. 1986). The lack of objective evidence of
 nonobviousness does not weigh in favor of obviousness. Miles Labs. Inc.
 v. Shandon Inc., 997 F.2d 870, 878, 27 USPQ2d 1123, 1129 (Fed. Cir.
 1993), cert. denied, 127 L. Ed. 232 (1994). However, where a
 prima facie case of obviousness is established, the failure
 to provide rebuttal evidence is dispositive.
 

 

 
 716.01(b) Nexus Requirement and Evidence of Nonobviousness [R-01.2024]
 TO BE OF PROBATIVE VALUE, ANY SECONDARY EVIDENCE MUST BE RELATED TO THE
 CLAIMED INVENTION (NEXUS REQUIRED) The weight attached to evidence of secondary considerations by the
 examiner will depend upon its relevance to the issue of obviousness and the amount
 and nature of the evidence. Note the great reliance apparently placed on this type
 of evidence by the Supreme Court in upholding the patent in United States
 v. Adams, 383 U.S. 39, 148 USPQ 479 (1966).
 

 If the evidence is to be given substantial weight in the
 determination of obviousness or nonobviousness, evidence of secondary
 considerations must be relevant to the subject matter as claimed, and therefore
 the examiner must determine whether there is a nexus between the merits of the
 claimed invention and the evidence of secondary considerations. Ashland
 Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 305
 n.42, 227 USPQ 657, 673-674 n. 42 (Fed. Cir. 1985), cert.
 denied, 475 U.S. 1017 (1986). The term “nexus” designates a factually
 and legally sufficient connection between the objective evidence of nonobviousness
 and the claimed invention so that the evidence is of probative value in the
 determination of nonobviousness. Demaco Corp. v. F. Von Langsdorff
 Licensing Ltd., 851 F.2d 1387, 7 USPQ2d 1222 (Fed. Cir.),
 cert. denied, 488 U.S. 956 (1988). See also Yita
 LLC v. MacNeil IP LLC, 69 F.4th 1356, 1363, 2023 USPQ2d 667 (Fed.
 Cir. 2023).
 

 Applicant or patent owner bears the burden of
 establishing a nexus between the objective evidence of nonobviousness and the
 claimed invention. See In re Huang , 100 F.3d 135, 140, 40 USPQ
 1685, 1689 (Fed. Cir. 1996). Nexus is presumed when the applicant or patent owner
 shows that the asserted objective evidence of record is tied to a certain product
 and that product includes the claimed features, and is coextensive with them. See
 Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373, 2019
 USPQ2d 483355 (Fed. Cir. 2019), cert. denied, 141 S.Ct. 373 (2020). “[T]he purpose
 of the coextensiveness requirement is to ensure that nexus is only presumed when
 the product tied to the evidence of secondary considerations 'is the invention
 disclosed and claimed.’” Id. at 1374 (quoting Demaco
 Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392, 7
 USPQ2d 1222, 1226 (Fed. Cir. 1988)). “[T]he degree of correspondence between a
 product and the patent claim falls along a spectrum. At one end of the spectrum
 lies perfect or near perfect correspondence. At the other end lies no or very
 little correspondence.“ Id. “A patent claim is not coextensive
 with a product that includes a 'critical' unclaimed feature that is claimed by a
 different patent and that materially impacts the product's functionality.”
 Id. at 1375. 
 

 Even if there is no presumption of nexus, the
 consideration of the rebuttal evidence does not end. “To the contrary, the patent
 owner is still afforded an opportunity to prove nexus by showing that the evidence
 of secondary considerations is the 'direct result of the unique characteristics of
 the claimed invention.’” Id. at 1373-74 (quoting In re
 Huang, 100 F.3d 135, 140, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996)). See
 also Volvo Penta of the Americas, LLC v. Brunswick Corp., 81
 F.4th 1202, 1211, 2023 USPQ2d 1000 (Fed. Cir. 2023) (A nexus, independent of the
 presumption, was demonstrated between the claims and objective indicia of
 nonobviousness through evidence of commercial success and copying due to the
 unique features of the claimed invention). “Where the offered secondary
 consideration actually results from something other than what is both claimed and
 novel in the claim, there is no nexus to the merits of the claimed invention,“
 meaning that "there must be a nexus to some aspect of the claim not already in the
 prior art.” In re Kao, 639 F.3d 1057, 1068-69, 98 USPQ2d 1799,
 1808 (Fed. Cir. 2011) (emphasis in original). On the other hand, there is no
 requirement that “objective evidence must be tied exclusively to claim elements
 that are not disclosed in a particular prior art reference in order for that
 evidence to carry substantial weight.” WBIP, LLC v. Kohler Co., 
 829 F.3d 1317, 1331, 119 USPQ2d 1301, 1308 (Fed. Cir. 2016). A patent owner may
 show, for example, “that it is the claimed combination as a whole that serves as a
 nexus for the objective evidence; proof of nexus is not limited to only when
 objective evidence is tied to the supposedly 'new’ feature(s).” 639 F.3d at 1330.
 Ultimately, the fact finder must weigh the secondary considerations evidence
 presented in the context of whether the claimed invention as a whole would have
 been obvious to a skilled artisan. 639 F.3d at 1331-32. Fox Factory, Inc.
 v. SRAM, LLC, 813 Fed. Appx. 539, 542-43, 2020 USPQ2d 10546 (Fed.
 Cir. 2020) (the record has substantial evidence to support nexus and
 nonobviousness based on secondary considerations regarding industry skepticism and
 subsequent praise and long-felt need because it was shown that the underlying
 product’s success was attributed to the allegedly obvious claim feature).
 Campbell Soup Co. v. Gamon Plus, Inc., 10 F.4th 1268, 1279,
 2021 USPQ2d 875 (Fed. Cir. 2021) (internal quotation marks omitted) (“[T]he
 obviousness analysis involves determining whether 'the claimed invention as a
 whole would have been obvious[]’ (quoting 35 U.S.C.
 103 )[], and yet we still require a link to the claimed
 invention's unique characteristics in that context. We therefore hold that, as in
 the utility patent context, objective indicia must be linked to a design patent
 claim's unique characteristics.”). See also Teva Pharms. Int’l GmbH v.
 Eli Lilly & Co., 8 F.4th 1349, 2021 USPQ2d 866 (Fed. Cir. 2021). 
 

 “Where the offered secondary consideration actually
 results from something other than what is both claimed and novel in the claim,
 there is no nexus to the merits of the claimed invention.“ In re
 Kao , 639 F.3d 1057, 1068 (Fed. Cir. 2011); see also Tokai
 Corp. v. Easton Enters., Inc. , 632 F.3d 1358, 1369 (Fed. Cir. 2011)
 (“If commercial success is due to an element in the prior art, no nexus exists.”);
 Ormco Corp. v. Align Tech., Inc. , 463 F.3d 1299, 1312 (2006)
 (“[I]f the feature that creates the commercial success was known in the prior art,
 the success is not pertinent.”). In evaluating whether the requisite nexus exists,
 the identified objective indicia must be directed to what was not known in the
 prior art, including patents and publications, which may well be the novel
 combination or arrangement of known individual elements. See KSR Int’l
 Co. v. Teleflex Inc. , 550 U.S. 398, 418–19 (2007); Veritas
 Techs. LLC v. Veeam Software Corp. , 835 F.3d 1406, 1414-15 (Fed. Cir.
 2016). 
 

 

 
 716.01(c) Probative Value of Objective Evidence [R-01.2024]
 I. TO BE OF PROBATIVE VALUE, ANY OBJECTIVE EVIDENCE SHOULD BE SUPPORTED BY
 ACTUAL PROOF Objective evidence which must be factually supported by an
 appropriate affidavit or declaration to be of probative value includes evidence of
 unexpected results, commercial success, solution of a long-felt need,
 inoperability of the prior art, invention before the date of the reference, and
 allegations that the author(s) of the prior art derived the disclosed subject
 matter from the inventor or at least one joint inventor. See, for example,
 In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed.
 Cir. 1984) (“It is well settled that unexpected results must be established by
 factual evidence.” “[A]ppellants have not presented any experimental data showing
 that prior heat-shrinkable articles split. Due to the absence of tests comparing
 appellant’s heat shrinkable articles with those of the closest prior art, we
 conclude that appellant’s assertions of unexpected results constitute mere
 argument.”). See also In re Lindner, 457 F.2d 506, 508,
 173 USPQ 356, 358 (CCPA 1972); Ex parte George, 21 USPQ2d 1058
 (Bd. Pat. App. & Inter. 1991).
 

 II. ARGUMENTS BY APPLICANT CANNOT TAKE THE PLACE OF EVIDENCE Arguments presented by the applicant cannot take the place of
 evidence in the record. In re Schulze, 346 F.2d 600, 602,
 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d
 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). Examples of statements which are not
 evidence and which must be supported by an appropriate affidavit or declaration
 include statements regarding unexpected results, commercial success, solution of a
 long-felt need, inoperability of the prior art, invention before the date of the
 reference, and allegations that the author(s) of the prior art derived the
 disclosed subject matter from the inventor or at least one joint inventor. 
 

 See MPEP § 2145 generally for case law pertinent to the
 consideration of applicant’s rebuttal arguments. 
 

 III. OPINION EVIDENCE Although factual evidence is preferable to opinion testimony, such
 testimony is entitled to consideration and some weight so long as the opinion is
 not on the ultimate legal conclusion at issue. While an opinion as to a legal
 conclusion is not entitled to any weight, the underlying basis for the opinion may
 be persuasive. In re Chilowsky, 306 F.2d 908, 134 USPQ 515
 (CCPA 1962) (expert opinion that an application meets the requirements of
 35 U.S.C.
 112 is not entitled to any weight; however, facts supporting
 a basis for deciding that the specification complies with 35 U.S.C.
 112 are entitled to some weight); In re
 Lindell, 385 F.2d 453, 155 USPQ 521 (CCPA 1967) (Although an
 affiant’s or declarant’s opinion on the ultimate legal issue is not evidence in
 the case, “some weight ought to be given to a persuasively supported statement of
 one skilled in the art on what was not obvious to him.” 385 F.2d at 456, 155 USPQ
 at 524 (emphasis in original)). 
 

 In assessing the probative value of an expert opinion, the
 examiner must consider the nature of the matter sought to be established, the
 strength of any opposing evidence, the interest of the expert in the outcome of
 the case, and the presence or absence of factual support for the expert’s opinion.
 Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 
 776 F.2d 281, 227 USPQ 657 (Fed. Cir. 1985), cert. denied, 475
 U.S. 1017 (1986). See also In re Oelrich, 579 F.2d 86, 198 USPQ
 210 (CCPA 1978) (factually based expert opinions on the level of ordinary skill in
 the art were sufficient to rebut the prima facie case of
 obviousness); Ex parte Gray, 10 USPQ2d 1922 (Bd. Pat. App.
 & Inter. 1989) (statement in publication dismissing the “preliminary
 identification of a human b-NGF-like molecule” in the prior art, even if
 considered to be an expert opinion, was inadequate to overcome the rejection based
 on that prior art because there was no factual evidence supporting the statement);
 In re Carroll, 601 F.2d 1184, 202 USPQ 571 (CCPA 1979)
 (expert opinion on what the prior art taught, supported by documentary evidence
 and formulated prior to the making of the claimed invention, received considerable
 deference); In re Beattie, 974 F.2d 1309, 24 USPQ2d 1040 (Fed.
 Cir. 1992) (declarations of seven persons skilled in the art offering opinion
 evidence praising the merits of the claimed invention were found to have little
 value because of a lack of factual support); Ex parte George ,
 21 USPQ2d 1058 (Bd. Pat. App. & Inter. 1991) (conclusory statements that
 results were “unexpected,” unsupported by objective factual evidence, were
 considered but were not found to be of substantial evidentiary value).
 

 Although an affidavit or declaration which states only conclusions
 may have some probative value, such an affidavit or declaration may have little
 weight when considered in light of all the evidence of record in the application.
 In re Brandstadter, 484 F.2d 1395, 179 USPQ 286 (CCPA
 1973).
 

 An affidavit of an applicant as to the advantages of their claimed
 invention, while less persuasive than that of a disinterested person, cannot be
 disregarded for this reason alone. Ex parte Keyes, 214 USPQ 579
 (Bd. App. 1982); In re McKenna, 203 F.2d 717, 97 USPQ 348 (CCPA
 1953). 
 

 IV. PROBATIVE VALUE OF COMMERCIAL
 SUCCESS OR LONG FELT NEED EVIDENCE Objective evidence of commercial success or long
 felt need and failure of others may be given less weight if the record shows that
 the applicant or patent owner has a strong market power or blocking patent
 depending on the facts of record. “A patent has been called a 'blocking patent’
 where practice of a later invention would infringe the earlier patent. The
 existence of such a blocking patent may deter non-owners and non-licensees from
 investing the resources needed to make, develop, and market such a later,
 'blocked' invention, because of the risk of infringement liability and associated
 monetary or injunctive remedies. If the later invention is eventually patented by
 an owner or licensee of the blocking patent, that potential deterrent effect is
 relevant to understanding why others had not made, developed, or marketed that
 'blocked' invention and, hence, to evaluating objective indicia of the obviousness
 of the later patent.” Acorda Therapeutics, Inc. v. Roxane Lab.,
 Inc., 903 F.3d 1310, 1337, 128 USPQ2d 1001, 1021(Fed. Cir. 2018).
 “Such a blocking patent therefore can be evidence that can discount the
 significance of evidence that nobody but the blocking patent’s owners or licensees
 arrived at, developed, and marketed the invention covered by the later patent at
 issue in litigation. But the magnitude of the diminution in incentive in any
 context—in particular, whether it was great enough to have actually deterred
 activity that otherwise would have occurred—is 'a fact-specific inquiry.'”
 Id. at 1339, 128 USPQ2d at 1022. While having record
 evidence of such a blocking patent may not be common, examiners should be aware of
 its potential impact in evaluating secondary evidence of nonobviousness. In any
 Office action, examiners should articulate why there is any discounting of the
 weight of the secondary consideration evidence when addressing the evidence.
 

 

 
 716.01(d) Weighing Objective Evidence [R-01.2024]
 IN MAKING A FINAL DETERMINATION OF PATENTABILITY, EVIDENCE SUPPORTING
 PATENTABILITY MUST BE WEIGHED AGAINST EVIDENCE SUPPORTING PRIMA
 FACIE CASE When an applicant timely submits evidence traversing a rejection,
 the examiner must reconsider the patentability of the claimed invention. The
 ultimate determination of patentability must be based on consideration of the
 entire record, by a preponderance of evidence, with due consideration to the
 persuasiveness of any arguments and any secondary evidence. In re
 Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). The
 submission of objective evidence of patentability does not mandate a conclusion of
 patentability in and of itself. In re Chupp , 816 F.2d 643,
 2 USPQ2d 1437 (Fed. Cir. 1987). Facts established by rebuttal evidence must be
 evaluated along with the facts on which the conclusion of a prima
 facie case was reached, not against the conclusion itself.
 In re Eli Lilly, 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir.
 1990). In other words, each piece of rebuttal evidence should not be evaluated for
 its ability to knockdown the prima facie case. All of the
 competent rebuttal evidence taken as a whole should be weighed against the
 evidence supporting the prima facie case. In re
 Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
 Although the record may establish evidence of secondary considerations which are
 indicia of nonobviousness, the record may also establish such a strong case of
 obviousness that the objective evidence of nonobviousness is not sufficient to
 outweigh the evidence of obviousness. Newell Cos. v. Kenney Mfg.
 Co., 864 F.2d 757, 769, 9 USPQ2d 1417, 1427 (Fed. Cir. 1988),
 cert. denied, 493 U.S. 814 (1989);
 Richardson-Vicks, Inc., v. The Upjohn Co., 122 F.3d 1476,
 1484, 44 USPQ2d 1181, 1187 (Fed. Cir. 1997) (showing of unexpected results and
 commercial success of claimed ibuprofen and pseudoephedrine combination in single
 tablet form, while supported by substantial evidence, held not to overcome strong
 prima facie case of obviousness). See In re
 Piasecki, 745 F.2d 1468, 223 USPQ 785 (Fed. Cir. 1984) for a detailed
 discussion of the proper roles of the examiner’s prima facie 
 case and applicant’s rebuttal evidence in the final determination of
 obviousness.
 

 If, after evaluating the evidence, the examiner is still not
 convinced that the claimed invention is patentable, the next Office action should
 include a statement to that effect and identify the reason(s) (e.g., evidence of
 commercial success not convincing, the commercial success not related to the
 technology, etc.). See Demaco Corp. v. F. Von Langsdorff Licensing
 Ltd., 851 F.2d 1387, 7 USPQ2d 1222 (Fed. Cir.), cert.
 denied, 488 U.S. 956 (1988). See also MPEP § 716.01 .
 Any conclusion of whether the evidence of obviousness outweighs the objective
 evidence, along with any individual weights assigned to different objective
 indicia, should be explained. Volvo Penta of the Americas, LLC v.
 Brunswick Corp., 81 F.4th 1202, 1215, 2023 USPQ2d 1000 (Fed. Cir.
 2023) (The court found the assignment of weight to different considerations was
 overly vague and ambiguous because, despite evidence of copying, commercial
 success, and industry praise, the Board assigned all of these factors only “some
 weight,” “did not explain why it gave these three factors the same weight, or even
 whether or not that constituted precisely the same weight,” and regarding the
 weight of all six factors “[did] not discuss the summation of the factors at all
 other than to say, without explanation, that they collectively ‘weigh[] somewhat
 in favor of nonobviousness’”). See MPEP § 2145 for guidance in
 determining whether rebuttal evidence is sufficient to overcome a prima
 facie case of obviousness.
 

 

 

 
 716.02 Allegations of Unexpected Results [R-01.2024]

 Any differences between the claimed invention and the prior art may be
 expected to result in some differences in properties. The issue is whether the
 properties differ to such an extent that the difference is really unexpected.
 In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir.
 1986) (differences in sedative and anticholinergic effects between prior art and claimed
 antidepressants were not unexpected). In In re Waymouth, 499 F.2d
 1273, 1276, 182 USPQ 290, 293 (CCPA 1974), the court held that unexpected results for a
 claimed range as compared with the range disclosed in the prior art had been shown by a
 demonstration of “a marked improvement, over the results achieved under other ratios, as
 to be classified as a difference in kind, rather than one of degree.” Compare
 In re Wagner, 371 F.2d 877, 884, 152 USPQ 552, 560 (CCPA 1967)
 (differences in properties cannot be disregarded on the ground they are differences in
 degree rather than in kind); Ex parte Gelles, 22 USPQ2d 1318, 1319
 (Bd. Pat. App. & Inter. 1992) (“we generally consider a discussion of results in
 terms of ‘differences in degree’ as compared to ‘differences in kind’ . . . to have very
 little meaning in a relevant legal sense”). See also UCB, Inc. v. Actavis Labs,
 UT, Inc., 65 F.4th 679, 693, 2023 USPQ2d 448 (Fed. Cir. 2023) (“A
 difference of degree is not as persuasive as a difference in kind – i.e., if the range
 produces ‘“a new property dissimilar to the known property,’” rather than producing a
 predictable result but to an unexpected extent.”).
 

 
 716.02(a) Evidence Must Show Unexpected Results [R-07.2022]
 I. GREATER THAN EXPECTED RESULTS ARE EVIDENCE OF NONOBVIOUSNESS “A greater than expected result is an evidentiary factor pertinent
 to the legal conclusion of obviousness ... of the claims at issue.” In re
 Corkill, 771 F.2d 1496, 226 USPQ 1005 (Fed. Cir. 1985). In
 Corkhill , the claimed combination showed an additive result
 when a diminished result would have been expected. This result was persuasive of
 nonobviousness even though the result was equal to that of one component alone.
 Evidence of a greater than expected result may also be shown by demonstrating an
 effect which is greater than the sum of each of the effects taken separately
 (i.e., demonstrating “synergism”). Merck & Co. Inc. v. Biocraft
 Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.),
 cert. denied, 493 U.S. 975 (1989). However, a greater than
 additive effect is not necessarily sufficient to overcome a prima
 facie case of obviousness because such an effect can either be
 expected or unexpected. Applicants must further show that the results were greater
 than those which would have been expected from the prior art to an unobvious
 extent, and that the results are of a significant, practical advantage.
 Ex parte The NutraSweet Co., 19 USPQ2d 1586 (Bd. Pat. App.
 & Inter. 1991) (Evidence showing greater than additive sweetness resulting
 from the claimed mixture of saccharin and L-aspartyl-L-phenylalanine was not
 sufficient to outweigh the evidence of obviousness because the teachings of the
 prior art lead to a general expectation of greater than additive sweetening
 effects when using mixtures of synthetic sweeteners.). 
 

 II. SUPERIORITY OF A PROPERTY SHARED WITH THE PRIOR ART IS EVIDENCE OF
 NONOBVIOUSNESS Evidence of unobvious or unexpected advantageous properties, such
 as superiority in a property the claimed compound shares with the prior art, can
 rebut prima facie obviousness. “Evidence that a compound is
 unexpectedly superior in one of a spectrum of common properties . . . can be
 enough to rebut a prima facie case of obviousness.” No set
 number of examples of superiority is required. In re Chupp , 816
 F.2d 643, 646, 2 USPQ2d 1437, 1439 (Fed. Cir. 1987) (Evidence showing that the
 claimed herbicidal compound was more effective than the closest prior art compound
 in controlling quackgrass and yellow nutsedge weeds in corn and soybean crops was
 sufficient to overcome the rejection under 35 U.S.C. 103 , even though the
 specification indicated the claimed compound was an average performer on crops
 other than corn and soybean.). See also Ex parte A, 17 USPQ2d
 1716 (Bd. Pat. App. & Inter. 1990) (unexpected superior therapeutic activity
 of claimed compound against anaerobic bacteria was sufficient to rebut
 prima facie obviousness even though there was no evidence
 that the compound was effective against all bacteria).
 

 III. PRESENCE OF AN UNEXPECTED PROPERTY IS EVIDENCE OF NONOBVIOUSNESS Presence of a property not possessed by the prior art is evidence
 of nonobviousness. In re Papesch, 315 F.2d 381, 137 USPQ 43
 (CCPA 1963) (rejection of claims to compound structurally similar to the prior art
 compound was reversed because claimed compound unexpectedly possessed
 anti-inflammatory properties not possessed by the prior art compound); Ex
 parte Thumm, 132 USPQ 66 (Bd. App. 1961) (Appellant showed that the
 claimed range of ethylene diamine was effective for the purpose of producing
 “‘regenerated cellulose consisting substantially entirely of skin’” whereas the
 prior art warned “this compound has ‘practically no effect.’ ”). The submission of
 evidence that a new product possesses unexpected properties does not necessarily
 require a conclusion that the claimed invention is nonobvious. In re
 Payne, 606 F.2d 303, 203 USPQ 245 (CCPA 1979). See the discussion of
 latent properties and additional advantages in MPEP §
 2145 .
 

 IV. ABSENCE OF AN EXPECTED PROPERTY IS EVIDENCE OF NONOBVIOUSNESS Absence of property which a claimed invention would have been
 expected to possess based on the teachings of the prior art is evidence of
 unobviousness. Ex parte Mead Johnson & Co., 227 USPQ 78
 (Bd. Pat. App. & Inter. 1985) (Based on prior art disclosures, claimed
 compounds would have been expected to possess beta-andrenergic blocking activity;
 the fact that claimed compounds did not possess such activity was an unexpected
 result sufficient to establish unobviousness within the meaning of
 35 U.S.C.
 103 .).
 

 

 
 716.02(b) Burden on Applicant [R-08.2012]
 I. BURDEN ON APPLICANT TO ESTABLISH RESULTS ARE UNEXPECTED AND
 SIGNIFICANT The evidence relied upon should establish “that the differences in
 results are in fact unexpected and unobvious and of both statistical and practical
 significance.” Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat.
 App. & Inter. 1992) (Mere conclusions in appellants’ brief that the claimed
 polymer had an unexpectedly increased impact strength “are not entitled to the
 weight of conclusions accompanying the evidence, either in the specification or in
 a declaration.”); Ex parte C, 27 USPQ2d 1492 (Bd. Pat. App.
 & Inter. 1992) (Applicant alleged unexpected results with regard to the
 claimed soybean plant, however there was no basis for judging the practical
 significance of data with regard to maturity date, flowering date, flower color,
 or height of the plant.). See also In re Nolan, 553 F.2d 1261,
 1267, 193 USPQ 641, 645 (CCPA 1977) and In re Eli Lilly, 902
 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990) as discussed in MPEP §
 716.02(c) .
 

 II. APPLICANTS HAVE BURDEN OF EXPLAINING PROFFERED DATA “[A]ppellants have the burden of explaining the data in any
 declaration they proffer as evidence of non-obviousness.” Ex parte
 Ishizaka, 24 USPQ2d 1621, 1624 (Bd. Pat. App. & Inter. 1992).
 
 

 III. DIRECT AND INDIRECT COMPARATIVE TESTS ARE PROBATIVE OF NONOBVIOUSNESS
 Evidence of unexpected properties may be in the form of a direct
 or indirect comparison of the claimed invention with the closest prior art which
 is commensurate in scope with the claims. See In re Boesch, 
 617 F.2d 272, 205 USPQ 215 (CCPA 1980) and MPEP § 716.02(d) -
 §
 716.02(e) . See In re Blondel, 499
 F.2d 1311, 1317, 182 USPQ 294, 298 (CCPA 1974) and In re
 Fouche, 439 F.2d 1237, 1241-42, 169 USPQ 429, 433 (CCPA 1971) for
 examples of cases where indirect comparative testing was found sufficient to rebut
 a prima facie case of obviousness. 
 

 The patentability of an intermediate may be established by
 unexpected properties of an end product “when one of ordinary skill in the art
 would reasonably ascribe to a claimed intermediate the ‘contributing cause’ for
 such an unexpectedly superior activity or property.” In re
 Magerlein, 602 F.2d 366, 373, 202 USPQ 473, 479 (CCPA 1979). “In
 order to establish that the claimed intermediate is a ‘contributing cause’ of the
 unexpectedly superior activity or property of an end product, an applicant must
 identify the cause of the unexpectedly superior activity or property (compared to
 the prior art) in the end product and establish a nexus for that cause between the
 intermediate and the end product.” Id. at 479.
 

 

 
 716.02(c) Weighing Evidence of Expected and Unexpected
 Results [R-08.2012]
 
 I. EVIDENCE OF UNEXPECTED AND EXPECTED PROPERTIES MUST BE WEIGHED Evidence of unexpected results must be weighed against evidence
 supporting prima facie obviousness in making a final
 determination of the obviousness of the claimed invention. In re
 May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (Claims directed to a
 method of effecting analgesia without producing physical dependence by
 administering the levo isomer of a compound having a certain chemical structure
 were rejected as obvious over the prior art. Evidence that the compound was
 unexpectedly nonaddictive was sufficient to overcome the obviousness rejection.
 Although the compound also had the expected result of potent analgesia, there was
 evidence of record showing that the goal of research in this area was to produce
 an analgesic compound which was nonaddictive, enhancing the evidentiary value of
 the showing of nonaddictiveness as an indicium of nonobviousness.). See
 MPEP
 § 716.01(d) for guidance on weighing evidence submitted
 to traverse a rejection. 
 

 Where the unexpected properties of a claimed invention are not
 shown to have a significance equal to or greater than the expected properties, the
 evidence of unexpected properties may not be sufficient to rebut the evidence of
 obviousness. In re Nolan, 553 F.2d 1261, 1267, 193 USPQ 641,
 645 (CCPA 1977) (Claims were directed to a display/memory device which was
 prima facie obvious over the prior art. The court found that
 a higher memory margin and lower operating voltage would have been expected
 properties of the claimed device, and that a higher memory margin appears to be
 the most significant improvement for a memory device. Although applicant presented
 evidence of unexpected properties with regard to lower peak discharge current and
 higher luminous efficiency, these properties were not shown to have a significance
 equal to or greater than that of the expected higher memory margin and lower
 operating voltage. The court held the evidence of nonobviousness was not
 sufficient to rebut the evidence of obviousness.); In re Eli
 Lilly, 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990) (Evidence of
 improved feed efficiency in steers was not sufficient to rebut prima
 facie case of obviousness based on prior art which specifically
 taught the use of compound X537A to enhance weight gain in animals because the
 evidence did not show that a significant aspect of the claimed invention would
 have been unexpected.). 
 

 II. EXPECTED BENEFICIAL RESULTS ARE EVIDENCE OF OBVIOUSNESS “Expected beneficial results are evidence of obviousness of a
 claimed invention, just as unexpected results are evidence of unobviousness
 thereof.” In re Gershon, 372 F.2d 535, 538, 152 USPQ 602,
 604 (CCPA 1967) (resultant decrease of dental enamel solubility accomplished by
 adding an acidic buffering agent to a fluoride containing dentifrice was expected
 based on the teaching of the prior art); Ex parte Blanc, 13
 USPQ2d 1383 (Bd. Pat. App. & Inter. 1989) (Claims at issue were directed to a
 process of sterilizing a polyolefinic composition which contains an antioxidant
 with high-energy radiation. Although evidence was presented in appellant’s
 specification showing that particular antioxidants are effective, the Board
 concluded that these beneficial results would have been expected because one of
 the references taught a claimed antioxidant is very efficient and provides better
 results compared with other prior art antioxidants.).
 

 

 
 716.02(d) Unexpected Results Commensurate in Scope With Claimed
 Invention [R-08.2012]
 

 Whether the unexpected results are the result of unexpectedly
 improved results or a property not taught by the prior art, the “objective evidence
 of nonobviousness must be commensurate in scope with the claims which the evidence is
 offered to support.” In other words, the showing of unexpected results must be
 reviewed to see if the results occur over the entire claimed range. In re
 Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) (Claims were
 directed to a process for removing corrosion at “elevated temperatures” using a
 certain ion exchange resin (with the exception of claim 8 which recited a temperature
 in excess of 100°C). Appellant demonstrated unexpected results via comparative tests
 with the prior art ion exchange resin at 110°C and 130°C. The court affirmed the
 rejection of claims 1-7 and 9-10 because the term “elevated temperatures” encompassed
 temperatures as low as 60°C where the prior art ion exchange resin was known to
 perform well. The rejection of claim 8, directed to a temperature in excess of 100°C,
 was reversed.). See also In re Peterson, 315 F.3d 1325, 1329-31,
 65 USPQ2d 1379, 1382-85 (Fed. Cir. 2003) (data showing improved alloy strength with
 the addition of 2% rhenium did not evidence unexpected results for the entire claimed
 range of about 1-3% rhenium); In re Grasselli, 713 F.2d 731, 741,
 218 USPQ 769, 777 (Fed. Cir. 1983) (Claims were directed to certain catalysts
 containing an alkali metal. Evidence presented to rebut an obviousness rejection
 compared catalysts containing sodium with the prior art. The court held this evidence
 insufficient to rebut the prima facie case because experiments
 limited to sodium were not commensurate in scope with the claims.). 
 

 I. NONOBVIOUSNESS OF A GENUS OR CLAIMED RANGE MAY BE SUPPORTED BY DATA SHOWING
 UNEXPECTED RESULTS OF A SPECIES OR NARROWER RANGE UNDER CERTAIN
 CIRCUMSTANCES The nonobviousness of a broader claimed range can be supported by
 evidence based on unexpected results from testing a narrower range if one of
 ordinary skill in the art would be able to determine a trend in the exemplified
 data which would allow the artisan to reasonably extend the probative value
 thereof. In re Kollman, 595 F.2d 48, 201 USPQ 193 (CCPA 1979)
 (Claims directed to mixtures of an herbicide known as “FENAC” with a diphenyl
 ether herbicide in certain relative proportions were rejected as prima
 facie obvious. Applicant presented evidence alleging unexpected
 results testing three species of diphenyl ether herbicides over limited relative
 proportion ranges. The court held that the limited number of species exemplified
 did not provide an adequate basis for concluding that similar results would be
 obtained for the other diphenyl ether herbicides within the scope of the generic
 claims. Claims 6-8 recited a FENAC:diphenyl ether ratio of 1:1 to 4:1 for the
 three specific ethers tested. For two of the claimed ethers, unexpected results
 were demonstrated over a ratio of 16:1 to 2:1, and the effectiveness increased as
 the ratio approached the untested region of the claimed range. The court held
 these tests were commensurate in scope with the claims and supported the
 nonobviousness thereof. However, for a third ether, data was only provided over
 the range of 1:1 to 2:1 where the effectiveness decreased to the “expected level”
 as it approached the untested region. This evidence was not sufficient to overcome
 the obviousness rejection.); In re Lindner, 457 F.2d 506, 509,
 173 USPQ 356, 359 (CCPA 1972) (Evidence of nonobviousness consisted of comparing a
 single composition within the broad scope of the claims with the prior art. The
 court did not find the evidence sufficient to rebut the prima
 facie case of obviousness because there was “no adequate basis for
 reasonably concluding that the great number and variety of compositions included
 in the claims would behave in the same manner as the tested composition.”).
 

 II. DEMONSTRATING CRITICALITY OF A CLAIMED RANGE To establish unexpected results over a claimed range, applicants
 should compare a sufficient number of tests both inside and outside the claimed
 range to show the criticality of the claimed range. In re Hill, 
 284 F.2d 955, 128 USPQ 197 (CCPA 1960).
 

 

 
 716.02(e) Comparison With Closest Prior Art [R-08.2012]

 An affidavit or declaration under 37 CFR 1.132 must compare the
 claimed subject matter with the closest prior art to be effective to rebut a
 prima facie case of obviousness. In re
 Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). “A comparison of the
 claimed invention with the disclosure of each cited reference
 to determine the number of claim limitations in common with each reference, bearing
 in mind the relative importance of particular limitations, will usually yield the
 closest single prior art reference.” In re Merchant, 575 F.2d 865,
 868, 197 USPQ 785, 787 (CCPA 1978) (emphasis in original). Where the comparison is
 not identical with the reference disclosure, deviations therefrom should be
 explained, In re Finley, 174 F.2d 130, 81 USPQ 383 (CCPA 1949),
 and if not explained should be noted and evaluated, and if significant, explanation
 should be required. In re Armstrong , 280 F.2d 132, 126 USPQ 281
 (CCPA 1960) (deviations from example were inconsequential). 
 

 I. THE CLAIMED INVENTION MAY BE COMPARED WITH PRIOR ART THAT IS CLOSER THAN
 THAT APPLIED BY THE EXAMINER Applicants may compare the claimed invention with prior art that
 is more closely related to the invention than the prior art relied upon by the
 examiner. In re Holladay, 584 F.2d 384, 199 USPQ 516 (CCPA
 1978); Ex parte Humber, 217 USPQ 265 (Bd. App. 1961) (Claims to
 a 13-chloro substituted compound were rejected as obvious over nonchlorinated
 analogs of the claimed compound. Evidence showing unexpected results for the
 claimed compound as compared with the 9-, 12-, and 14- chloro derivatives of the
 compound rebutted the prima facie case of obviousness because
 the compounds compared against were closer to the claimed invention than the prior
 art relied upon.).
 

 II. COMPARISONS WHEN THERE ARE TWO EQUALLY CLOSE PRIOR ART REFERENCES Showing unexpected results over one of two equally close prior art
 references will not rebut prima facie obviousness unless the
 teachings of the prior art references are sufficiently similar to each other that
 the testing of one showing unexpected results would provide the same information
 as to the other. In re Johnson, 747 F.2d 1456, 1461, 223 USPQ
 1260, 1264 (Fed. Cir. 1984) (Claimed compounds differed from the prior art either
 by the presence of a trifluoromethyl group instead of a chloride radical, or by
 the presence of an unsaturated ester group instead of a saturated ester group.
 Although applicant compared the claimed invention with the prior art compound
 containing a chloride radical, the court found this evidence insufficient to rebut
 the prima facie case of obviousness because the evidence did
 not show relative effectiveness over all compounds of the closest prior art. An
 applicant does not have to test all the compounds taught by each reference,
 “[h]owever, where an applicant tests less than all cited compounds, the
 test must be sufficient to permit a conclusion respecting the relative
 effectiveness of applicant’s claimed compounds and the compounds of the closest
 prior art. ” Id. (quoting In re
 Payne, 606 F.2d 303, 316, 203 USPQ 245, 256 (CCPA 1979)) (emphasis in
 original).).
 

 III. THE CLAIMED INVENTION MAY BE COMPARED WITH THE CLOSEST SUBJECT MATTER THAT
 EXISTS IN THE PRIOR ART Although evidence of unexpected results must compare the claimed
 invention with the closest prior art, applicant is not required to compare the
 claimed invention with subject matter that does not exist in the prior art.
 In re Geiger, 815 F.2d 686, 689, 2 USPQ2d 1276, 1279 (Fed.
 Cir. 1987) (Newman, J., concurring) (Evidence rebutted prima
 facie case by comparing claimed invention with the most relevant
 prior art. Note that the majority held the Office failed to establish a
 prima facie case of obviousness.); In re
 Chapman, 357 F.2d 418, 148 USPQ 711 (CCPA 1966) (Requiring applicant
 to compare claimed invention with polymer suggested by the combination of
 references relied upon in the rejection of the claimed invention under
 35 U.S.C.
 103 “would be requiring comparison of the results of the
 invention with the results of the invention.” 357 F.2d at 422, 148 USPQ at
 714.).
 

 

 
 716.02(f) Advantages Disclosed or Inherent [R-08.2012]

 The totality of the record must be considered when determining
 whether a claimed invention would have been obvious to one of ordinary skill in the
 art at the time the invention was made. Therefore, evidence and arguments directed to
 advantages not disclosed in the specification cannot be disregarded. In re
 Chu, 66 F.3d 292, 298-99, 36 USPQ2d 1089, 1094-95 (Fed. Cir. 1995)
 (Although the purported advantage of placement of a selective catalytic reduction
 catalyst in the bag retainer of an apparatus for controlling emissions was not
 disclosed in the specification, evidence and arguments rebutting the conclusion that
 such placement was a matter of “design choice” should have been considered as part of
 the totality of the record. “We have found no cases supporting the position that a
 patent applicant’s evidence or arguments traversing a § 103 rejection must be
 contained within the specification. There is no logical support for such a
 proposition as well, given that obviousness is determined by the totality of the
 record including, in some instances most significantly, the evidence and arguments
 proffered during the give-and-take of ex parte patent
 prosecution.” 66 F.3d at 299, 36 USPQ2d at 1095.). See also In re
 Zenitz, 333 F.2d 924, 928, 142 USPQ 158, 161 (CCPA 1964) (evidence that
 claimed compound minimized side effects of hypotensive activity must be considered
 because this undisclosed property would inherently flow from disclosed use as
 tranquilizer); Ex parte Sasajima, 212 USPQ 103, 104 - 05 (Bd. App.
 1981) (evidence relating to initially undisclosed relative toxicity of claimed
 pharmaceutical compound must be considered). 
 

 The specification need not disclose proportions or values as critical
 for applicants to present evidence showing the proportions or values to be critical.
 In re Saunders, 444 F.2d 599, 607, 170 USPQ 213, 220 (CCPA
 1971).
 

 

 
 716.02(g) [Reserved]

 [Editor Note: Information pertaining to
 declaration or affidavit form has been moved to MPEP §
 716 .] 

 

 

 
 716.03 Commercial Success [R-01.2024]
 I. BURDEN OF PRODUCTION FOR EVIDENCE OF COMMERCIAL SUCCESS AND NEXUS An applicant who is asserting commercial success to support its
 contention of nonobviousness bears the burden of proof in establishing commercial
 success.
 

 The Federal Circuit has acknowledged that applicant bears the burden
 of production for evidence of commercial success, stating:
 

 
 In the ex parte process of examining a patent
 application, however, the PTO lacks the means or resources to gather evidence
 which supports or refutes the applicant’s assertion that the sale constitute
 commercial success. C.f . Ex parte Remark, 
 15 USPQ2d 1498, 1503 (Bd. Pat. App. & Int. 1990)(evidentiary routine of
 shifting burdens in civil proceedings inappropriate in ex parte 
 prosecution proceedings because examiner has no available means for adducing
 evidence). Consequently, the PTO must rely upon the applicant to provide hard
 evidence of commercial success.
 

 
 In re Huang, 100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir.
 1996). See also In re GPAC, 57 F.3d 1573, 1580, 35 USPQ2d 1116,
 1121 (Fed. Cir. 1995); In re Paulsen, 30 F.3d 1475, 1482, 31
 USPQ2d 1671, 1676 (Fed. Cir. 1994) (Evidence of commercial success of articles not
 covered by the claims subject to the 35 U.S.C. 103 rejection was not
 probative of nonobviousness).
 

 The term “nexus” designates a factually and legally sufficient
 connection between the evidence of commercial success and the claimed invention so
 that the evidence is of probative value in the determination of nonobviousness.
 Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d
 1387, 7 USPQ2d 1222 (Fed. Cir. 1988). See MPEP §§ 716.01(b) and
 2145 for guidance on determining if the nexus requirement
 is met.
 

 II. COMMERCIAL SUCCESS ABROAD IS RELEVANT Commercial success abroad, as well as in the United States, is
 relevant in resolving the issue of nonobviousness. Lindemann Maschinenfabrik
 GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 221 USPQ 481
 (Fed. Cir. 1984).
 

 
 716.03(a) Commercial Success Commensurate in Scope With Claimed
 Invention [R-07.2022]
 
 I. EVIDENCE OF COMMERCIAL SUCCESS MUST BE COMMENSURATE IN SCOPE WITH THE
 CLAIMS Objective evidence of nonobviousness including commercial success
 must be commensurate in scope with the claims. In re Tiffin, 
 448 F.2d 791, 171 USPQ 294 (CCPA 1971) (evidence showing commercial success of
 thermoplastic foam “cups” used in vending machines was not commensurate in scope
 with claims directed to thermoplastic foam “containers” broadly). In order to be
 commensurate in scope with the claims, the commercial success must be due to
 claimed features, and not due to unclaimed features. Joy Technologies
 Inc. v. Manbeck, 751 F. Supp. 225, 229, 17 USPQ2d 1257, 1260 (D.D.C.
 1990), aff’d , 959 F.2d 226, 228, 22 USPQ2d 1153, 1156 (Fed.
 Cir. 1992) (Features responsible for commercial success were recited only in
 allowed dependent claims, and therefore the evidence of commercial success was not
 commensurate in scope with the broad claims at issue.). See also
 MPEP §§
 716.01(b) and 2145 for more guidance on
 determining if the nexus requirement is met.
 

 An affidavit or declaration attributing commercial success to a
 product or process “constructed according to the disclosure and claims of [the]
 patent application” or other equivalent language does not establish a nexus
 between the claimed invention and the commercial success because there is no
 evidence that the product or process which has been sold corresponds to the
 claimed invention, or that whatever commercial success may have occurred is
 attributable to the product or process defined by the claims. Ex parte
 Standish, 10 USPQ2d 1454, 1458 (Bd. Pat. App. & Inter. 1988).
 
 

 II. REQUIREMENTS WHEN CLAIMED INVENTION IS NOT COEXTENSIVE WITH COMMERCIAL
 PRODUCT OR PROCESS If a particular range is claimed, applicant does not need to show
 commercial success at every point in the range. “Where, as here, the claims are
 directed to a combination of ranges and procedures not shown by the prior art, and
 where substantial commercial success is achieved at an apparently typical point
 within those ranges, and the affidavits definitely indicate that operation
 throughout the claimed ranges approximates that at the particular points involved
 in the commercial operation, we think the evidence as to commercial success is
 persuasive.” In re Hollingsworth, 253 F.2d 238, 240, 117 USPQ
 182, 184 (CCPA 1958). See also Demaco Corp. v. F. Von Langsdorff
 Licensing Ltd., 851 F.2d 1387, 7 USPQ2d 1222 (Fed. Cir. 1988) (where
 the commercially successful product or process is not coextensive with the claimed
 invention, applicant must show a legally sufficient relationship between the
 claimed feature and the commercial product or process). 
 

 

 
 716.03(b) Commercial Success Derived From Claimed Invention [R-01.2024]
 I. COMMERCIAL SUCCESS MUST BE ATTRIBUTABLE TO THE CLAIMED INVENTION In considering evidence of commercial success, care should be
 taken to determine that the commercial success alleged is a result of the
 invention claimed, in a marketplace where the consumer is free to choose on the
 basis of objective principles, and that such success is not the result of heavy
 promotion or advertising, shift in advertising, consumption by purchasers normally
 tied to applicant or assignee, or other business events extraneous to the merits
 of the claimed invention, etc. In re Mageli, 470 F.2d 1380, 176
 USPQ 305 (CCPA 1973) (conclusory statements or opinions that increased sales were
 due to the merits of the invention are entitled to little weight); In re
 Noznick, 478 F.2d 1260, 178 USPQ 43 (CCPA 1973). See also
 UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 696, 2023
 USPQ2d 448 (Fed. Cir. 2023)(where market entry by others was precluded due to
 blocking patents, the inference of non-obviousness of the asserted claims from
 evidence of commercial success may be weak). 
 

 In ex parte proceedings before the Patent and
 Trademark Office, an applicant must show that the claimed features were
 responsible for the commercial success of an article if the evidence of
 nonobviousness is to be given any weight. See In re Huang, 100
 F.3d 135, 140, 40 USPQ2d 1685, 1690 (Fed. Cir. 1996) (Inventor’s opinion as to the
 purchaser’s reason for buying the product is insufficient to demonstrate a nexus
 between the sales and the claimed invention.). Merely showing that there was
 commercial success of an article which embodied the invention is not sufficient.
 Ex parte Remark, 15 USPQ2d 1498, 1502-02 (Bd. Pat. App.
 & Inter. 1990). Compare Demaco Corp. v. F. Von Langsdorff Licensing
 Ltd., 851 F.2d 1387, 7 USPQ2d 1222 (Fed. Cir. 1988) (In civil
 litigation, a patentee does not have to prove that the commercial success is not
 due to other factors. “A requirement for proof of the negative of all imaginable
 contributing factors would be unfairly burdensome, and contrary to the ordinary
 rules of evidence.”).
 

 See also Pentec, Inc. v. Graphic Controls
 Corp., 776 F.2d 309, 227 USPQ 766 (Fed. Cir. 1985) (commercial
 success may have been attributable to extensive advertising and position as a
 market leader before the introduction of the patented product); In re
 Fielder, 471 F.2d 690, 176 USPQ 300 (CCPA 1973) (success of invention
 could be due to recent changes in related technology or consumer demand; here
 success of claimed voting ballot could be due to the contemporary drive toward
 greater use of automated data processing techniques); EWP Corp. v.
 Reliance Universal, Inc., 755 F.2d 898, 225 USPQ 20 (Fed. Cir. 1985)
 (evidence of licensing is a secondary consideration which must be carefully
 appraised as to its evidentiary value because licensing programs may succeed for
 reasons unrelated to the unobviousness of the product or process, e.g., license is
 mutually beneficial or less expensive than defending infringement suits);
 Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d
 1367, 231 USPQ 81 (Fed. Cir. 1986) (Evidence of commercial success supported a
 conclusion of nonobviousness of claims to an immunometric “sandwich” assay with
 monoclonal antibodies. Patentee’s assays became a market leader with 25% of the
 market within a few years. Evidence of advertising did not show absence of a nexus
 between commercial success and the merits of the claimed invention because
 spending 25-35% of sales on marketing was not inordinate (mature companies spent
 17-32% of sales in this market), and advertising served primarily to make industry
 aware of the product because this is not kind of merchandise that can be sold by
 advertising hyperbole.). 
 

 II. COMMERCIAL SUCCESS MUST FLOW FROM THE FUNCTIONS AND ADVANTAGES DISCLOSED OR
 INHERENT IN THE SPECIFICATION DESCRIPTION To be pertinent to the issue of nonobviousness, the commercial
 success of devices falling within the claims of the patent must flow from the
 functions and advantages disclosed or inherent in the description in the
 specification. Furthermore, the success of an embodiment within the claims may not
 be attributable to improvements or modifications made by others. In re
 Vamco Machine & Tool, Inc., 752 F.2d 1564, 224 USPQ 617 (Fed.
 Cir. 1985). See also Merck & Cie v. Gnosis S.P.A. , 808 F.3d
 829, 833, 117 USPQ2d 1393, 1399 (Fed. Cir. 2015), cert. denied ,
 137 S. Ct. 297 (2016) (commercial success resulted from a “unique combination” of
 ingredients, a synergistic interaction of components, or a specific combination of
 specific forms of B-vitamins and other active ingredients, rather than from the
 claimed method of “using L-5-MTHF and ‘at least one B-vitamin’”).
 

 III. IN DESIGN CASES, ESTABLISHMENT OF NEXUS IS ESPECIALLY DIFFICULT Establishing a nexus between commercial success and the claimed
 invention is especially difficult in design cases. Evidence of commercial success
 must be clearly attributable to the design to be of probative value, and not to
 brand name recognition, improved performance, or some other factor.
 Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423, 221
 USPQ 97 (Fed. Cir. 1984) (showing of commercial success was not accompanied by
 evidence attributing commercial success of Litton microwave oven to the design
 thereof).
 

 IV. SALES FIGURES MUST BE ADEQUATELY DEFINED Gross sales figures do not show commercial success absent evidence
 as to market share, Cable Electric Products, Inc. v. Genmark,
 Inc., 770 F.2d 1015, 226 USPQ 881 (Fed. Cir. 1985) (overruled on
 other grounds by Midwest Indus., Inc. v. Karavan Trailers,
 Inc., 175 F.3d 1356, 50 USPQ2d 1672 (Fed. Cir. 1999)), or as to the
 time period during which the product was sold, or as to what sales would normally
 be expected in the market, Ex parte Standish, 10 USPQ2d 1454
 (Bd. Pat. App. & Inter. 1988). 
 

 

 

 
 716.04 Long-Felt Need and Failure of Others [R-07.2022]
 I. THE CLAIMED INVENTION MUST SATISFY A LONG-FELT NEED WHICH WAS RECOGNIZED,
 PERSISTENT, AND NOT SOLVED BY OTHERS Establishing long-felt need requires objective evidence that an art
 recognized problem existed in the art for a long period of time without solution. The
 relevance of long-felt need and the failure of others to the issue of obviousness
 depends on several factors. First, the need must have been a persistent one that was
 recognized by those of ordinary skill in the art. In re Gershon, 
 372 F.2d 535, 539, 152 USPQ 602, 605 (CCPA 1967) (“Since the alleged problem in this
 case was first recognized by appellants, and others apparently have not yet become
 aware of its existence, it goes without saying that there could not possibly be any
 evidence of either a long felt need in the . . . art for a solution to a problem of
 dubious existence or failure of others skilled in the art who unsuccessfully
 attempted to solve a problem of which they were not aware.”); Orthopedic
 Equipment Co., Inc. v. All Orthopedic Appliances, Inc., 707 F.2d 1376,
 217 USPQ 1281 (Fed. Cir. 1983) (Although the claimed invention achieved the desirable
 result of reducing inventories, there was no evidence of any prior unsuccessful
 attempts to do so.).
 

 Second, the long-felt need must not have been satisfied by another
 before the invention by the inventor. Newell Companies v. Kenney Mfg.
 Co., 864 F.2d 757, 768, 9 USPQ2d 1417, 1426 (Fed. Cir. 1988) (Although
 at one time there was a long-felt need for a “do-it-yourself” window shade material
 which was adjustable without the use of tools, a prior art product fulfilled the need
 by using a scored plastic material which could be torn. “[O]nce another supplied the
 key element, there was no long-felt need or, indeed, a problem to be solved”.) 
 

 Third, the invention must in fact satisfy the long-felt need.
 In re Cavanagh, 436 F.2d 491, 168 USPQ 466 (CCPA 1971).
 

 See Ex parte Thompson, Appeal
 2011-011620 (March 21, 2014) (informative) for the board’s analysis of the
 above-mentioned three factors in reversing an obviousness rejection due to evidence
 of long felt need.
 

 II. LONG-FELT NEED IS MEASURED FROM THE DATE A PROBLEM IS IDENTIFIED AND EFFORTS
 ARE MADE TO SOLVE IT Long-felt need is analyzed as of the date the problem is identified
 and articulated, and there is evidence of efforts to solve that problem, not as of
 the date of the most pertinent prior art references. Texas Instruments Inc.
 v. Int’l Trade Comm’n, 988 F.2d 1165, 1179, 26 USPQ2d 1018, 1029 (Fed.
 Cir. 1993).
 

 III. OTHER FACTORS CONTRIBUTING TO THE PRESENCE OF A LONG-FELT NEED MUST BE
 CONSIDERED The failure to solve a long-felt need may be due to factors such as
 lack of interest or lack of appreciation of an invention’s potential or marketability
 rather than want of technical know-how. Scully Signal Co. v. Electronics
 Corp. of America, 570 F.2d 355, 196 USPQ 657 (1st. Cir. 1977).
 

 See also Environmental Designs, Ltd. v. Union Oil Co. of
 Cal., 713 F.2d 693, 698, 218 USPQ 865, 869 (Fed. Cir. 1983) (presence of
 legislative regulations for controlling sulfur dioxide emissions did not militate
 against existence of long-felt need to reduce the sulfur content in the air);
 In re Tiffin, 443 F.2d 394, 170 USPQ 88 (CCPA 1971) (fact that
 affidavit supporting contention of fulfillment of a long-felt need was sworn by a
 licensee adds to the weight to be accorded the affidavit, as long as there is a
 bona fide licensing agreement entered into at arm’s
 length).
 

 

 
 716.05 Skepticism of Experts [R-08.2012]

 “Expressions of disbelief by experts constitute strong evidence of
 nonobviousness.” Environmental Designs, Ltd. v. Union Oil Co. of
 Cal., 713 F.2d 693, 698, 218 USPQ 865, 869 (Fed. Cir. 1983) (citing
 United States v. Adams, 383 U.S. 39, 52, 148 USPQ 479, 483-484
 (1966)) (The patented process converted all the sulfur compounds in a certain effluent
 gas stream to hydrogen sulfide, and thereafter treated the resulting effluent for
 removal of hydrogen sulfide. Before learning of the patented process, chemical experts,
 aware of earlier failed efforts to reduce the sulfur content of effluent gas streams,
 were of the opinion that reducing sulfur compounds to hydrogen sulfide would not
 adequately solve the problem.).
 

 “The skepticism of an expert, expressed before these inventors proved
 him wrong, is entitled to fair evidentiary weight, . . . as are the five to six years of
 research that preceded the claimed invention.” In re Dow Chemical
 Co., 837 F.2d 469, 5 USPQ2d 1529 (Fed. Cir. 1988); Burlington
 Industries Inc. v. Quigg, 822 F.2d 1581, 3 USPQ2d 1436 (Fed. Cir. 1987)
 (testimony that the invention met with initial incredulity and skepticism of experts was
 sufficient to rebut the prima facie case of obviousness based on the
 prior art).
 

 

 
 716.06 Copying [R-07.2022]

 Another form of secondary evidence which may be presented by applicants
 during prosecution of an application, but which is more often presented during
 litigation, is evidence that competitors in the marketplace are copying the invention
 instead of using the prior art. Iron Grip Barbell Co. v. USA Sports,
 Inc., 392 F.3d 1317, 1325, 73 USPQ2d 1225, 1230 (Fed. Cir. 2004) (“Our
 cases do establish that copying by a competitor may be a relevant consideration in the
 secondary factor analysis”). As indicated by the Federal Circuit in Wyers v.
 Master Lock Co., 616 F.3d 1231, 1246, 95 USPQ2d 1525, 1537 (Fed. Cir.
 2010), copying “… requires evidence of efforts to replicate a specific product, which
 may be demonstrated through internal company documents, direct evidence such as
 disassembling a patented prototype, photographing its features, and using the photograph
 as a blueprint to build a replica, or access to the patented product combined with
 substantial similarity to the patented product.” . 
 

 Evidence that shows access to a competitor’s non-public
 information and use of that information to develop a product may be persuasive evidence
 of copying. Liqwd, Inc. v. L’Oreal USA, Inc., 941 F.3d 1133, 1139
 (Fed. Cir. 2019) (Liqwd presented evidence, such as emails and declarations, that showed
 L’Oreal had access to the then-confidential disclosure of the patent application and
 L’Oreal’s subsequent loss of interest in purchasing Liqwd’s technology). Evidence of
 copying was persuasive of nonobviousness when an alleged infringer tried for a
 substantial length of time to design a product or process similar to the claimed
 invention, but failed and then copied the claimed invention instead. Dow Chem.
 Co. v. American Cyanamid Co., 816 F.2d 617, 2 USPQ2d 1350 (Fed. Cir. 1987)
 and Panduit Corp. v. Dennison Manufacturing Co., 774 F.2d 1082,
 1098-99, 227 USPQ 337, 348, 349 (Fed. Cir. 1985), vacated on other grounds, 475 U.S.
 809, 229 USPQ 478 (1986), on remand, 810 F.2d 1561, 1 USPQ2d 1593 (Fed. Cir. 1987)
 (evidence of copying found persuasive of nonobviousness where admitted infringer failed
 to satisfactorily produce a solution after 10 years of effort and expense). 
 

 However, more than the mere fact of copying is necessary
 to make that action significant because copying may be attributable to other factors
 such as a lack of concern for patent property or contempt for the patentee’s ability to
 enforce the patent. Cable Electric Products, Inc. v. Genmark,
 Inc., 770 F.2d 1015, 226 USPQ 881 (Fed. Cir. 1985) (overruled on other
 grounds by Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d
 1356, 50 USPQ2d 1672 (Fed. Cir. 1999)). Alleged copying is not persuasive of
 nonobviousness when the copy is not identical to the claimed product, and the other
 manufacturer had not expended great effort to develop its own
 solution. Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309,
 227 USPQ 766 (Fed. Cir. 1985). See also Vandenberg v. Dairy Equipment
 Co., 740 F.2d 1560, 1568, 224 USPQ 195, 199 (Fed. Cir. 1984) (evidence of
 copying not found persuasive of nonobviousness because the basic concepts of a plastic
 support device using a ball and socket joint were developed prior to learning of their
 competitor’s device). 
 

 

 
 716.07 Inoperability of References [R-07.2022]

 Since every patent is presumed valid ( 35 U.S.C. 282 ),
 and since that presumption includes the presumption of operability
 (Metropolitan Eng. Co. v. Coe, 78 F.2d 199, 25 USPQ 216 (D.C. Cir.
 1935), examiners should not express any opinion on the operability of a patent.
 Affidavits or declarations attacking the operability of a patent cited as a reference
 must rebut the presumption of operability by a preponderance of the evidence.
 In re Sasse, 629 F.2d 675, 207 USPQ 107 (CCPA 1980). 
 

 Further, since in a patent it is presumed that a process if used by one
 skilled in the art will produce the product or result described therein, such
 presumption is not overcome by a mere showing that it is possible to operate within the
 disclosure without obtaining the alleged product. In re Weber, 405
 F.2d 1403, 160 USPQ 549 (CCPA 1969). It is to be presumed also that skilled workers
 would as a matter of course, if they do not immediately obtain desired results,
 make certain experiments and adaptations, within the skill of the competent worker. The
 failures of experimenters who have no interest in succeeding should not be accorded
 great weight. In re Michalek, 162 F.2d 229, 74 USPQ 107 (CCPA 1947);
 In re Reid, 179 F.2d 998, 84 USPQ 478 (CCPA 1950). 
 

 Where the affidavit or declaration presented asserts inoperability in
 features of the reference which are not relied upon, the reference is still effective as
 to other features which are operative. In re Shepherd, 172 F.2d 560,
 80 USPQ 495 (CCPA 1949).
 

 Where the affidavit or declaration presented asserts that the reference
 relied upon is inoperative, the claims represented by applicant must distinguish from
 the alleged inoperative reference disclosure. In re Crosby, 157 F.2d
 198, 71 USPQ 73 (CCPA 1946). See also In re Epstein, 32 F.3d 1559, 31
 USPQ2d 1817 (Fed. Cir. 1994) (lack of diagrams, flow charts, and other details in the
 prior art references did not render them nonenabling in view of the fact that
 applicant’s own specification failed to provide such detailed information, and that one
 skilled in the art would have known how to implement the features of the references). 
 

 If a patent teaches or suggests the claimed invention, an affidavit or
 declaration by patentee that they did not intend the disclosed invention to be used as
 claimed by applicant is immaterial. In re Pio, 217 F.2d 956, 104 USPQ
 177 (CCPA 1954). Compare In re Yale, 434 F.2d 666, 168 USPQ 46 (CCPA
 1970) (Correspondence from a co-author of a literature article confirming that the
 article misidentified a compound through a typographical error that would have been
 obvious to one of ordinary skill in the art was persuasive evidence that the erroneously
 typed compound was not put in the possession of the public.).
 

 

 
 716.08 Utility and Operability of Applicant’s Disclosure [R-08.2012]

 See MPEP
 § 2107.02 , for guidance on when it is proper to require
 evidence of utility or operativeness, and how to evaluate any evidence which is
 submitted to overcome a rejection under 35 U.S.C. 101 for lack of utility.
 See MPEP §
 2107 - § 2107.03 generally for utility
 examination guidelines and an overview of legal precedent relevant to the utility
 requirement of 35 U.S.C. 101 .
 

 

 
 716.09 Sufficiency of Disclosure [R-11.2013]

 See MPEP
 § 2164 - § 2164.08(c) for guidance in
 determining whether the specification provides an enabling disclosure in compliance with
 35 U.S.C.
 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.
 

 Once the examiner has established a prima facie case
 of lack of enablement, the burden falls on the applicant to present persuasive
 arguments, supported by suitable proofs where necessary, that one skilled in the art
 would have been able to make and use the claimed invention using the disclosure as a
 guide. In re Brandstadter, 484 F.2d 1395, 179 USPQ 286 (CCPA 1973).
 Evidence to supplement a specification which on its face appears deficient under
 35 U.S.C.
 112 must establish that the information which must be read into
 the specification to make it complete would have been known to those of ordinary skill
 in the art. In re Howarth, 654 F.2d 103, 210 USPQ 689 (CCPA 1981)
 (copies of patent specifications which had been opened for inspection in Rhodesia,
 Panama, and Luxembourg prior to the U.S. filing date of the applicant were not
 sufficient to overcome a rejection for lack of enablement under 35 U.S.C.
 112(a) or pre-AIA 35 U.S.C. 112 , first
 paragraph).
 

 Affidavits or declarations presented to show that the disclosure of an
 application is sufficient to one skilled in the art are not acceptable to establish
 facts which the specification itself should recite. In re Buchner, 
 929 F.2d 660, 18 USPQ2d 1331 (Fed. Cir. 1991) (Expert described how he would construct
 elements necessary to the claimed invention whose construction was not described in the
 application or the prior art; this was not sufficient to demonstrate that such
 construction was well-known to those of ordinary skill in the art.); In re
 Smyth, 189 F.2d 982, 90 USPQ 106 (CCPA 1951).
 

 Affidavits or declarations purporting to explain the disclosure or to
 interpret the disclosure of a pending application are usually not considered.
 In re Oppenauer, 143 F.2d 974, 62 USPQ 297 (CCPA 1944). But see
 Glaser v. Strickland, 220 USPQ 446 (Bd. Pat. Int. 1983) which
 reexamines the rationale on which In re Oppenauer was based in light
 of the Federal Rules of Evidence. The Board stated as a general proposition “Opinion
 testimony which merely purports to state that a claim or count, is ‘disclosed’ in an
 application involved in an interference . . . should not be given any weight. Opinion
 testimony which purports to state that a particular feature or limitation of a claim or
 count is disclosed in an application involved in an interference and which explains the
 underlying factual basis for the opinion may be helpful and can be admitted. The weight
 to which the latter testimony may be entitled must be evaluated strictly on a
 case-by-case basis.” 
 

 

 
 716.10 Attribution Affidavit or Declaration to Overcome Rejection Under
 Pre-AIA 35 U.S.C. 102 or 103 [R-10.2019]
 

 [Editor Note: This MPEP section is not applicable to applications
 subject to the first inventor to file provisions of the AIA unless being relied upon
 to overcome a rejection under pre-AIA 35 U.S.C. 102(g) . See
 35
 U.S.C. 100 (note) and MPEP §
 2159 . For a discussion of 37 CFR 1.130 ,
 affidavits or declarations of attribution or prior public disclosure in applications
 subject to the first inventor to file provisions of the AIA, see
 MPEP §
 717 . “Derivation” or "derived" as used in the discussion
 below is in the context of pre-AIA law. “Derivation proceedings” as created in the
 AIA are discussed in MPEP § 2310 et seq.] 

 Under certain circumstances an affidavit or declaration may be submitted
 which attempts to attribute an activity, a reference or part of a reference to the
 inventor or at least one joint inventor to overcome a rejection based on
 pre-AIA 35 U.S.C.
 102 prior art. If successful, the activity or the reference is no
 longer applicable. When subject matter, disclosed in a patent or patent application
 (reference) naming an inventive entity including inventor S and another joint inventor
 is claimed in a later application naming inventor S without the joint inventor, the
 joint patent or joint patent application publication is a valid reference available as
 prior art under pre-AIA 35 U.S.C. 102(a), (e), or (f) until overcome by an
 affidavit or declaration under 37 CFR 1.131(a) showing prior
 invention (see MPEP §
 715 ) or by an affidavit or declaration under 37 CFR 1.132 . An
 unequivocal declaration under 37 CFR 1.132 by S that he/she
 conceived or invented the subject matter that was disclosed but not claimed in the
 patent or patent application publication and relied on in the rejection has been
 sufficient to overcome the rejection. In re DeBaun, 687 F.2d 459, 214 USPQ 933 (CCPA
 1982)(declaration corroborated by attached drawing). Depending on the situation,
 documentation created contemporaneously with the conception/invention and/or
 declarations/affidavits by the other inventor(s) named in the reference may be used to
 corroborate inventorship. See EmeraChem Holdings, LLC v. Volkswagen Grp. of
 Am., Inc., 859 F.3d 1341, 123 USPQ2d 1146 (Fed. Cir. 2017). Where the
 reference is a U.S. patent or patent application publication which includes a claim
 reciting the subject matter relied upon in a rejection and that subject matter
 anticipates or would render obvious the subject matter of a claim in the application
 under examination, a declaration under 37 CFR 1.132 must also explain the
 presence of the additional inventor in the reference (e.g., the disclosure in claim 1 of
 the reference is relied upon to reject the claims; the affidavit or declaration explains
 that S is the sole inventor of claim 1, and the additional inventor and S are joint
 inventors of claim 2 of the reference). Testimony or disclaimer by the other inventor
 named in the reference is usually not required but, if submitted, should be considered
 by the examiner.
 

 Note that an affidavit or declaration under
 37 CFR
 1.131(a) cannot be used to overcome a rejection based on a U.S.
 patent or U.S. patent application publication naming a different inventive entity which
 claims interfering subject matter as defined in 37 CFR 41.203(a) . See
 MPEP §
 715.05 .
 

 For applications subject to current 35 U.S.C.
 102 , see MPEP §§ 717 , 2153 and
 2154 . 
 

 Where there is a published article identifying the authorship
 ( MPEP §
 715.01(c) ) or a patent or an application publication
 identifying the inventorship ( MPEP § 715.01(a) ) that discloses
 subject matter being claimed in an application undergoing examination, the designation
 of authorship or inventorship does not raise a presumption of inventorship with respect
 to the subject matter disclosed in the article or with respect to the subject matter
 disclosed but not claimed in the patent or published application so as to justify a
 rejection under pre-AIA 35 U.S.C. 102(f) . 
 

 However, it is incumbent upon the applicant in the application, in
 response to an inquiry regarding the appropriate inventorship under pre-AIA 35 U.S.C.
 102(f) or to rebut a rejection under pre-AIA 35 U.S.C. 102(a) or
 (e) , to provide a satisfactory showing by way of affidavit or
 declaration under 37
 CFR 1.132 that the inventorship of the application is correct in
 that the reference discloses subject matter derived from the inventor or at least one
 joint inventor of the application undergoing examination rather than invented by the
 author, patentee, or applicant of the published application notwithstanding the
 authorship of the article or the inventorship of the patent or published application.
 In re Katz, 687 F.2d 450, 455, 215 USPQ 14, 18 (CCPA 1982)
 (inquiry is appropriate to clarify any ambiguity created by an article regarding
 inventorship and it is then incumbent upon the applicant to provide “a satisfactory
 showing that would lead to a reasonable conclusion that [inventor or at least one joint
 inventor] is the ... inventor” of the subject matter disclosed in the article and
 claimed in the application).
 

 An uncontradicted “unequivocal statement” from an inventor or joint
 inventor regarding the subject matter disclosed in an article, patent, or published
 application has been accepted as establishing inventorship. In re
 DeBaun, 687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA 1982)(declaration
 corroborated by attached drawing). Depending on the situation, documentation created
 contemporaneously with the conception/invention and/or declarations/affidavits by the
 other inventor(s) named in the reference may be used to corroborate inventorship. See
 EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc., 859 F.3d
 1341, 123 USPQ2d 1146 (Fed. Cir. 2017). When additional documentary evidence contradicts
 statements made by the inventor or at least one joint inventor with respect to
 inventorship, it may be appropriate to maintain the rejection(s). Ex parte
 Kroger, 219 USPQ 370 (Bd. App. 1982) (a rejection under pre-AIA 35 U.S.C.
 102(f) was affirmed notwithstanding declarations by the alleged
 actual inventors as to their inventorship in view of a nonapplicant author submitting a
 letter declaring the author’s inventorship); In re Carreira, 532 F.2d
 1356, 189 USPQ 461 (CCPA 1976) (disclaiming declarations from patentees were directed at
 the generic invention and not at the claimed species, hence no need to consider
 derivation of the subject matter).
 

 A successful 37 CFR 1.132 affidavit or
 declaration establishing derivation by the author, patentee, or applicant of the
 published application of a first reference does not enable an applicant to step into the
 shoes of that author, patentee, or applicant of the published application in regard to
 its date of publication so as to defeat a later second reference. In re
 Costello, 717 F.2d 1346, 1350, 219 USPQ 389, 392 (Fed. Cir. 1983). 
 

 Affidavits or declarations of attribution for applications
 subject to pre-AIA 35
 U.S.C. 102 are affidavits or declarations under 37 CFR 1.132 
 because these are not otherwise provided for in the rules of practice. The Office will
 treat affidavits or declarations of attribution for applications subject to the current
 35 U.S.C.
 102 as affidavits or declarations under 37 CFR 1.130 , and
 affidavits or declarations of attribution for applications subject to pre-AIA 35 U.S.C.
 102 as affidavits or declarations under 37 CFR 1.132 ,
 regardless of whether the affidavit or declaration is designated as an affidavit or
 declaration under 37
 CFR 1.130 , 1.131 , or 37 CFR 1.132 .
 

 EXAMPLES The following examples demonstrate the application of an attribution
 affidavit or declaration.
 

 Example 1 During the search the examiner finds a reference fully describing
 the claimed invention. The authorship or inventive entity of the reference is the
 same as the inventive entity of the application and the reference was published or
 patented less than one year prior to the filing date of the application. The
 reference cannot be used against applicant because it does not satisfy the 1-year
 time requirement of pre-AIA 35 U.S.C. 102(b) .
 

 

 Example 2 Same facts as above, but the authorship or inventive entity of the
 reference is different from the inventive entity of the application. Because the
 inventive entities are different, the reference is prior art under
 pre-AIA
 35 U.S.C. 102(a) or (e) .
 

 

 In the situation described in Example 2, an affidavit under
 37 CFR
 1.132 may be submitted to show that the relevant portions of
 the reference originated with or were obtained from the inventor or at least one
 joint inventor named in the application undergoing examination. Thus the affidavit
 attempts to convert the fact situation from that described in Example 2 to the
 situation described in Example 1.
 

 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 701-Statutory Authority for Examination 

 702-Requisites of the Application 
 702.01-Obviously Informal Cases 

 
 

 703-[Reserved] 

 704-Search and Requirements for Information 
 704.01-Search 

 704.02-704.09-[Reserved] 

 704.10-Requirements for Information 

 704.11-What Information May Be Required 
 704.11(a)-Examples of Information Reasonably Required 

 704.11(b)-When May a Requirement for Information Be Made 

 
 

 704.12-Replies to a Requirement for Information 
 704.12(a)-Relationship of Requirement for Information to Duty of Disclosure 

 704.12(b)-What Constitutes a Complete Reply 

 704.12(c)-Treatment of an Incomplete Reply 

 
 

 704.13-Time Periods for Reply 

 704.14-Making a Requirement for Information 
 704.14(a)-Format of the Requirement 

 704.14(b)-Examiner’s Obligation Following Applicant’s Reply 

 704.14(c)-Petitions to Requirements Under 37 CFR 1.105 

 704.14(d)-Relationship to Information Disclosure Statements 

 
 

 
 

 705-Patentability Reports 
 705.01-Instructions re Patentability Reports 
 705.01(a)-Nature of P.R., Its Use and Disposal 

 705.01(b)-Sequence of Examination 

 705.01(c)-Counting and Recording P.R.s 

 705.01(d)-[Reserved] 

 705.01(e)-Limitation as to Use 

 705.01(f)-Interviews With Applicants 

 
 

 
 

 706-Rejection of Claims 
 706.01-Contrasted With Objections 

 706.02-Rejection on Prior Art 
 706.02(a)-[Reserved] 
 706.02(a)(1)-[Reserved] 

 706.02(a)(2)-[Reserved] 

 
 

 706.02(b)-[Reserved] 
 706.02(b)(1)-[Reserved] 

 706.02(b)(2)-[Reserved] 

 
 

 706.02(c)-[Reserved] 
 706.02(c)(1) -[Reserved] 

 706.02(c)(2)-[Reserved] 

 
 

 706.02(d)-[Reserved] 

 706.02(e)-[Reserved] 

 706.02(f)-[Reserved] 
 706.02(f)(1)-[Reserved] 

 706.02(f)(2)-[Reserved] 

 
 

 706.02(g)-[Reserved] 

 706.02(h)-[Reserved] 

 706.02(i)-[Reserved] 

 706.02(j)-[Reserved] 

 706.02(k)-[Reserved] 

 706.02(l)-[Reserved] 
 706.02(l)(1)-[Reserved] 

 706.02(l)(2)-[Reserved] 

 706.02(l)(3)-[Reserved] 

 
 

 706.02(m)-[Reserved] 

 706.02(n)-[Reserved] 

 
 

 706.03-Rejections Not Based on Prior Art 
 706.03(a)-[Reserved] 

 706.03(b)-[Reserved] 

 706.03(c)-[Reserved] 

 706.03(d)-[Reserved] 

 706.03(e)-[Reserved] 

 706.03(f) - 706.03(j)-[Reserved] 

 706.03(k)-[Reserved] 

 706.03(l) - 706.03(n)-[Reserved] 

 706.03(o)-[Reserved] 

 706.03(p) - 706.03(r)-[Reserved] 

 706.03(s)-[Reserved] 

 706.03(t)-[Reserved] 

 706.03(u)-[Reserved] 

 706.03(v)-[Reserved] 

 706.03(w)-[Reserved] 

 706.03(x)-[Reserved] 

 706.03(y)-[Reserved] 

 
 

 706.04-Rejection of Previously Allowed Claims 

 706.05-Rejection After Allowance of Application 

 706.06-Rejection of Claims Copied From Patent 

 706.07-Final Rejection 
 706.07(a)-Final Rejection, When Proper on Second Action 

 706.07(b)-Final Rejection, When Proper on First Action 

 706.07(c)-Final Rejection, Premature 

 706.07(d)-Final Rejection, Withdrawal of, Premature 

 706.07(e)-Withdrawal of Final Rejection, General 

 706.07(f)-Time for Reply to Final Rejection 

 706.07(g)-Transitional After-Final Practice 

 706.07(h)-Request for Continued Examination (RCE) Practice 

 
 

 
 

 707-Examiner’s Letter or Action 
 707.01-Primary Examiner Indicates Action for New Assistant 

 707.02-Applications Up for Third Action and 5-Year Applications 

 707.03‑707.04-[Reserved] 

 707.05-Citation of References 
 707.05(a)-Copies of Cited References 

 707.05(b)-Citation of Related Art and Information by Applicants 

 707.05(c)-Order of Listing 

 707.05(d)-Reference Cited in Subsequent Actions 

 707.05(e)-Data Used in Citing References 

 707.05(f)-Non-Patent Documents Having a Lengthy Citation 

 707.05(g)-Incorrect Citation of References 

 
 

 707.06-Citation of Decisions, Orders Memorandums, and Notices 

 707.07-Completeness and Clarity of Examiner’s Action 
 707.07(a)-Complete Action on Formal Matters 

 707.07(b) - 707.07(c)-[Reserved] 

 707.07(d)-Language To Be Used in Rejecting Claims 

 707.07(e)-Note All Outstanding Requirements 

 707.07(f)-Answer All Material Traversed 

 707.07(g)-Piecemeal Examination 

 707.07(h)-Notify of Inaccuracies in Amendment 

 707.07(i)-Each Claim To Be Mentioned in Each Office Action 

 707.07(j)-State When Claims Are Allowable 

 707.07(k)-Numbering Paragraphs 

 707.07(l)-Comment on Examples 

 
 

 707.08-Reviewing and Initialing by Assistant Examiner 

 707.09-Signing by Primary or Other Authorized Examiner 

 707.10-Entry 

 707.11-Date 

 707.12-Mailing 

 707.13-Returned Office Action 

 
 

 708-Order of Examination 
 708.01-List of Special Cases 

 708.02-Petition To Make Special 
 708.02(a)-Accelerated Examination 

 708.02(b)-Prioritized Examination 

 708.02(c)-Patent Prosecution Highway Program 

 
 

 708.03-Examiner Tenders Resignation 

 
 

 709-Suspension of Action 
 709.01-Overlapping Applications by Same Applicant or Owned by Same Assignee 

 
 

 710-Period for Reply 
 710.01-Statutory Period 
 710.01(a)-Statutory Period, How Computed 

 
 

 710.02-Shortened Statutory Period and Time Limit Actions Computed 
 710.02(a)-[Reserved] 

 710.02(b)-Shortened Statutory Period: Situations in Which Used 

 710.02(c)-Specified Time Limits: Situations in Which Used 

 710.02(d)-Difference Between Shortened Statutory Periods for Reply and Specified Time Limits 

 710.02(e)-Extension of Time 

 
 

 710.03-[Reserved] 

 710.04-Two Periods Running 
 710.04(a)-Copying Patent Claims 

 
 

 710.05-Period Ending on Saturday, Sunday, or a Federal Holiday 

 710.06-Situations When Reply Period Is Reset or Restarted 

 
 

 711-Abandonment of Patent Application 
 711.01-Express or Formal Abandonment 

 711.02-Failure To Take Required Action During Statutory Period 
 711.02(a)-Insufficiency of Reply 

 711.02(b)-Special Situations Involving Abandonment 

 711.02(c)-Termination of Proceedings 

 
 

 711.03-Reconsideration of Holding of Abandonment; Revival 
 711.03(a)-Holding Based on Insufficiency of Reply 

 711.03(b)-Holding Based on Failure To Reply Within Period 

 711.03(c)-Petitions Relating to Abandonment 

 711.03(d)-Examiner’s Statement on Petition To Set Aside Examiner’s Holding 

 
 

 711.04-Public Access to Abandoned Applications 
 711.04(a)-Date of Abandonment 

 711.04(b)-Ordering of Patented and Abandoned Files 

 711.04(c)-Notifying Applicants of Abandonment 

 
 

 711.05-Letter of Abandonment Received After Application Is Allowed 

 711.06-Abstracts, Abbreviatures, and Defensive Publications 
 711.06(a)-Citation and Use of Abstracts, Abbreviatures, and Defensive Publications as References 

 
 

 
 

 712-[Reserved] 

 713-Interviews 
 713.01-General Policy, How Conducted 

 713.02-Interviews Prior to First Official Action 

 713.03-Interview for “Sounding Out” Examiner Not Permitted 

 713.04-Substance of Interview Must Be Made of Record 

 713.05-Interviews Prohibited or Granted, Special Situations 

 713.06-No Inter Partes Questions Discussed Ex Parte 

 713.07-Exposure of Other Cases 

 713.08-Demonstration, Exhibits, Models 

 713.09-Interviews Between Final Rejection and Notice of Appeal 

 713.10-Interview Preceding Filing Amendment Under 37 CFR 1.312 

 
 

 714-Amendments, Applicant’s Action 
 714.01-Signatures to Amendments 
 714.01(a)-Unsigned or Improperly Signed Amendment 

 714.01(b)-[Reserved] 

 714.01(c)-Signed by Attorney or Agent Not of Record 

 714.01(d)-Amendment Signed by Applicant but Not by Attorney or Agent of Record 

 714.01(e)-Amendments Before First Office Action 

 
 

 714.02-Must Be Fully Responsive 

 714.03-Amendments Not Fully Responsive, Action To Be Taken 
 714.03(a)-Supplemental Amendment 

 
 

 714.04-Claims Presented in Amendment With No Attempt To Point Out Patentable Novelty 

 714.05-Examiner Should Immediately Review 

 714.06-[Reserved] 

 714.07-Amendments Not in Permanent Ink 

 714.08-714.09-[Reserved] 

 714.10-Claims Added in Excess of Claims Previously Paid For 

 714.11-Amendment Filed During Interference Proceedings 

 714.12-Amendments and Other Replies After Final Rejection or Action 

 714.13-Amendments and Other Replies After Final Rejection or Action, Procedure Followed 

 714.14-Amendments After Allowance of All Claims 

 714.15-Amendment Received in Technology Center After Mailing of Notice of Allowance 

 714.16-Amendment After Notice of Allowance, 37 CFR 1.312 
 714.16(a)-Amendments Under 37 CFR 1.312, Copied Patent Claims 

 714.16(b)-Amendments Under 37 CFR 1.312 Filed With a Motion Under 37 CFR 41.208 

 714.16(c)-Amendments Under 37 CFR 1.312, Additional Claims 

 714.16(d)-Amendments Under 37 CFR 1.312, Handling 

 714.16(e)-Amendments Under 37 CFR 1.312, Entry in Part 

 
 

 714.17-Amendment Filed After the Period for Reply Has Expired 

 714.18-Entry of Amendments 

 714.19-List of Amendments, Entry Denied 

 714.20-List of Amendments Entered in Part 

 714.21-Amendments Inadvertently Entered, No Legal Effect 

 714.22-714.24-[Reserved] 

 714.25-Discourtesy of Applicant or Attorney 

 
 

 715-Swearing Behind a Reference — Affidavit or Declaration Under 37 CFR 1.131(a) 
 715.01-37 CFR 1.131(a) Affidavits Versus 37 CFR 1.132 Affidavits 
 715.01(a)-Reference Is a Patent or Published Application Naming Different Inventive Entity With at Least One Common Inventor 

 715.01(b)-Reference and Application Have Common Assignee 

 715.01(c)-Reference Is Publication of Inventor’s Own Invention 

 715.01(d)-Activities Applied Against the Claims 

 
 

 715.02-How Much of the Claimed Invention Must Be Shown, Including the General Rule as to Generic Claims 

 715.03-Genus-Species, Practice Relative to Cases Where Predictability Is in Question 

 715.04-Who May Make Affidavit or Declaration Under 37 CFR 1.131(a); Formal Requirements of Affidavits and Declarations 

 715.05-U.S. Patent or Application Publication Claiming Same Invention 

 715.06-[Reserved] 

 715.07-Facts and Documentary Evidence 
 715.07(a)-Diligence 

 715.07(b)-Interference Testimony Sometimes Used 

 715.07(c)-Acts Relied Upon Must Have Been Carried Out in This Country or a NAFTA or WTO Member Country 

 715.07(d)-Disposition of Exhibits 

 
 

 715.08-Decided by Primary Examiner 

 715.09-Timely Presentation 

 715.10-Review of Affidavit or Declaration for Evidence of Prior Public Use or Sale or Failure to Disclose Best Mode 

 
 

 716-Affidavits or Declarations Under 37 CFR 1.132 and Other Evidence Traversing Rejections 
 716.01-Generally Applicable Criteria 
 716.01(a)-Objective Evidence of Nonobviousness 

 716.01(b)-Nexus Requirement and Evidence of Nonobviousness 

 716.01(c)-Probative Value of Objective Evidence 

 716.01(d)-Weighing Objective Evidence 

 
 

 716.02-Allegations of Unexpected Results 
 716.02(a)-Evidence Must Show Unexpected Results 

 716.02(b)-Burden on Applicant 

 716.02(c)-Weighing Evidence of Expected and Unexpected Results 

 716.02(d)-Unexpected Results Commensurate in Scope With Claimed Invention 

 716.02(e)-Comparison With Closest Prior Art 

 716.02(f)-Advantages Disclosed or Inherent 

 716.02(g)-[Reserved] 

 
 

 716.03-Commercial Success 
 716.03(a)-Commercial Success Commensurate in Scope With Claimed Invention 

 716.03(b)-Commercial Success Derived From Claimed Invention 

 
 

 716.04-Long-Felt Need and Failure of Others 

 716.05-Skepticism of Experts 

 716.06-Copying 

 716.07-Inoperability of References 

 716.08-Utility and Operability of Applicant’s Disclosure 

 716.09-Sufficiency of Disclosure 

 716.10-Attribution Affidavit or Declaration to Overcome Rejection Under Pre-AIA 35 U.S.C. 102 or 103 

 
 

 717-Prior Art Exceptions under AIA 35 U.S.C. 102(b)(1) and (2) 
 717.01-Affidavit or Declaration Under 37 CFR 1.130 
 717.01(a) -Declarations or Affidavits under 37 CFR 1.130(a) – Attribution 
 717.01(a)(1) -Evaluation of Declarations or Affidavits under 37 CFR 1.130(a) 

 
 

 717.01(b) -Declarations or Affidavits under 37 CFR 1.130(b) – Prior Public Disclosure 
 717.01(b)(1) -Evaluation of Declarations or Affidavits under 37 CFR 1.130(b) 

 717.01(b)(2) -Determining if the Subject Matter of the Intervening Disclosure is the Same as the Subject Matter of the Inventor–Originated
 Prior Public Disclosure 

 
 

 717.01(c) -Who May Make Affidavit or Declaration; Formal Requirements of Affidavits and Declarations 

 717.01(d)-U.S. Patent or Application Publication Claiming Same Invention 

 717.01(e) -Passed Upon (or Decided by) by Primary Examiner 

 717.01(f) -Seasonable (or Timely) Presentation 

 
 

 717.02 -Prior Art Exception for Commonly Owned or Joint Research Agreement Subject Matter under AIA 35 U.S.C. 102(b)(2)(C) 
 717.02(a) -Invoking the Prior Art Exception under 35 U.S.C. 102(b)(2)(C) 

 717.02(b) -Evaluating Whether the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) is Properly Invoked 

 717.02(c) -Examination Procedure With Respect to the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) 

 717.02(d) -Form Paragraphs With Respect to the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) 

 
 

 
 

 718-Affidavit or Declaration to Disqualify Commonly Owned Patent as Prior Art, 37 CFR 1.131(c) 

 719-File Wrapper 
 719.01-Papers in Image File Wrapper 

 719.02-Residence of Inventor Changed 

 719.03-Classification During Examination 

 719.04-Index of Claims 

 719.05-Field of Search 

 
 

 720-Public Use Proceedings 

 721‑723-[Reserved] 

 724-Trade Secret, Proprietary, and Protective Order Materials 
 724.01-Completeness of the Patent File Wrapper 

 724.02-Method of Submitting Trade Secret, Proprietary, and/or Protective Order Materials 

 724.03-Types of Trade Secret, Proprietary, and/or Protective Order Materials Submitted Under MPEP § 724.02 

 724.04-Office Treatment and Handling of Materials Submitted Under MPEP § 724.02 
 724.04(a)-Materials Submitted in an Application Covered by 35 U.S.C. 122 

 724.04(b)-Materials Submitted in Reissue Applications Open to the Public Under 37 CFR 1.11(b) 

 724.04(c)-Materials Submitted in Reexamination File Open to the Public Under 37 CFR 1.11(d) 

 
 

 724.05-Petition To Expunge Information or Copy of Papers in Application File 

 724.06-Handling of Petitions To Expunge Information or Copy of Papers in Application File 

 
 

 

 

 
 

 
 
 

 
 

 

 
 
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 03/09/2026 20:50:53