MPEP § 2175 — MPEP § 2175
Current through: 2022-07-01

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

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2100 

 Section 2175 
 

 
 
 
 
 
 2175 Form Paragraphs for Use in Rejections Under 35
 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, Second Paragraph [R-01.2024]
 

 Rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second
 paragraph , are discussed in MPEP §§ 2171 - 2174 and
 2181 , subsection II. Form paragraphs 7.30.02 ,
 7.34 through 7.34.05 , 7.34.07 through 7.34.10 , 7.34.12 through
 7.34.15 ,
 7.35 , and 7.35.01 should be used to make rejections
 under 35 U.S.C.
 112(b) or pre-AIA 35 U.S.C. 112, second paragraph .
 

 ¶ 7.30.02 Statement of Statutory Basis, 35 U.S.C. 112(b) and pre-AIA 35
 U.S.C. 112, Second Paragraph
 

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

 
 (B) CONCLUSION.—The specification shall conclude with one or more
 claims particularly pointing out and distinctly claiming the subject matter which the
 inventor or a joint inventor regards as the invention.
 

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

 
 The specification shall conclude with one or more claims
 particularly pointing out and distinctly claiming the subject matter which the applicant
 regards as his invention.
 

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

 2. Paragraphs
 7.30.01 
 and 7.30.02 
 are to be used ONLY ONCE in a given Office action.
 
 
 

 ¶ 7.34 Rejection, 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd
 Paragraph, Failure To Claim Inventor’s Invention 
 

 Claim [1] rejected under 35 U.S.C.
 112(b) or pre-AIA 35 U.S.C. 112 , second paragraph,
 as failing to set forth the subject matter which the inventor or a joint inventor, or for
 applications subject to pre-AIA 35 U.S.C. 112 the applicant, regards as the invention. Evidence
 that claim [2] fail(s) to correspond in scope with that which the inventor or a
 joint inventor, or for pre-AIA applications the applicant, regards as the invention can be
 found in the reply filed [3] . In that paper, the inventor or a joint inventor, or
 for pre-AIA applications the applicant, has stated [4] , and this statement
 indicates that the invention is different from what is defined in the claim(s) because
 [5] .
 

 Examiner Note:
 
 1. This rejection must be preceded
 by form paragraph 7.30.02 or 7.103 .
 

 2. This paragraph is to be used
 only where inventor or applicant has stated, somewhere other than in the application, as
 filed, that the invention is something different from what is defined in the claim(s).
 
 

 3. In bracket 3, identify the
 submission by inventor or applicant (which is not the application, as filed, but may be
 in the remarks by applicant, in the brief, in an affidavit, etc.) by the date the paper
 was filed in the USPTO.
 

 4. In bracket 4, set forth what
 inventor or applicant has stated in the submission to indicate a different
 invention.
 

 5. In bracket 5, explain how the
 statement indicates an invention other than what is being claimed.
 
 
 

 ¶ 7.34.01 Rejection, 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd
 Paragraph, Failure To Particularly Point out and Distinctly Claim (Indefinite) 
 

 Claim [1] rejected under 35 U.S.C.
 112(b) or pre-AIA 35 U.S.C. 112 , second paragraph,
 as being indefinite for failing to particularly point out and distinctly claim the subject
 matter which the inventor or a joint inventor (or for applications subject to
 pre-AIA 35 U.S.C.
 112 , the applicant), regards as the invention.
 

 Examiner Note:
 
 1. This rejection must be preceded
 by form paragraph 7.30.02 or 7.103 . 
 

 2. In bracket 1, pluralize "Claim" if necessary, insert claim
 number(s), and insert --is-- or --are-- as appropriate. Any claim dependent on a listed
 rejected claim should be reviewed to determine if the dependent claim should be rejected
 as indefinite for the same reason(s) as the listed rejected claim(s), and if so, the
 dependent claim(s) should be added to the listed rejected claim(s).
 

 3. This form paragraph should be followed by one or more of the
 following form paragraphs 7.34.02 - 7.34.10 , and/or 7.34.23 - 7.34.24 as applicable. If none of
 these form paragraphs are appropriate, a full explanation of the deficiency of the
 claims should be supplied. Whenever possible, identify the particular term(s) or
 limitation(s) which render the claim(s) indefinite and state why such term or limitation
 renders the claim indefinite. If the scope of the claimed subject matter can be
 determined by one having ordinary skill in the art, a rejection using this form
 paragraph would not be appropriate. See MPEP §§ 2171 - 2174 for guidance.
 See also form paragraph 7.34.15 for pro se applicants.
 
 
 

 ¶ 7.34.02 Terminology Used Inconsistent with Accepted Meaning 

 Where applicant acts as his or her own lexicographer to specifically
 define a term of a claim contrary to its ordinary meaning, the written description must
 clearly redefine the claim term and set forth the uncommon definition so as to put one
 reasonably skilled in the art on notice that the applicant intended to so redefine that claim
 term. Process Control Corp. v. HydReclaim Corp. , 190 F.3d 1350, 1357, 52
 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “ [1] ” in claim [2] is
 used by the claim to mean “ [3] ,” while the accepted meaning is
 “ [4] .” The term is indefinite because the specification does not clearly redefine
 the term.
 

 Examiner Note:
 
 1. In bracket 3, point out the meaning that is assigned to the term by applicant’s claims, taking into account the entire disclosure.

 2. In bracket 4, point out the accepted meaning of the term. Support for the examiner’s stated accepted meaning should be provided
 through the citation of an appropriate reference source, e.g., textbook or dictionary. See MPEP § 2173.05(a) .
 

 3. This paragraph must be preceded by form paragraph 7.34.01 .
 

 4. This paragraph should only be used where the specification does not clearly redefine the claim term at issue.
 
 

 ¶ 7.34.03 Relative Term - Term of Degree Rendering Claim Indefinite 

 The term “ [1]” in claim
 [2] is a relative term which renders the claim indefinite. The term
 “ [1] ” is not defined by the claim, the specification does not provide a
 standard for ascertaining the requisite degree, and one of ordinary skill in the art would not
 be reasonably apprised of the scope of the invention. [3] 

 Examiner Note:
 
 1. In bracket 3, explain which
 parameter, quantity, or other limitation in the claim has been rendered indefinite by
 the use of the term appearing in bracket 1.
 

 2. This form paragraph must be
 preceded by form paragraph 7.34.01 .
 
 
 

 ¶ 7.34.04 Broader Range/Limitation And Narrow Range/Limitation in Same Claim

 A broad range or limitation together with a narrow range or limitation
 that falls within the broad range or limitation (in the same claim) may be considered
 indefinite if the resulting claim does not clearly set forth the metes and bounds of the
 patent protection desired. See MPEP § 2173.05(c) . In the present instance, claim [1] 
 recites the broad recitation [2] , and the claim also recites [3] 
 which is the narrower statement of the range/limitation. The claim(s) are considered
 indefinite because there is a question or doubt as to whether the feature introduced by such
 narrower language is (a) merely exemplary of the remainder of the claim, and therefore not
 required, or (b) a required feature of the claims.
 

 Examiner Note:
 
 1. In bracket 2, insert the broader range/limitation and where it appears in the claim; in bracket 3, insert the narrow range/limitation
 and where it appears. This form paragraph may be modified to fit other instances of indefiniteness in the claims.
 

 2. This form paragraph must be preceded by form paragraph 7.34.01 .
 
 
 

 ¶ 7.34.05 Lack of Antecedent Basis in the Claims

 Claim [1] recites the limitation [2] in [3] . There is insufficient antecedent basis for this limitation in the claim.
 

 Examiner Note:
 
 1. In bracket 2, insert the limitation which lacks antecedent basis, for example --said lever-- or --the lever--. 

 2. In bracket 3, identify where in the claim(s) the limitation appears, for example, --line 3--, --the 3 rd paragraph of the claim--, --the last 2 lines of the claim--, etc.
 

 3. This form paragraph should ONLY be used in aggravated situations where the lack of antecedent basis makes the scope of the
 claim indeterminate. It must be preceded by form paragraph 7.34.01 .
 
 
 

 ¶ 7.34.07 Claims Are a Literal Translation

 The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal
 translation into English from a foreign document and are replete with grammatical and idiomatic errors.
 

 Examiner Note:

 This form paragraph must be preceded by form paragraph 7.34.01 .
 

 

 ¶ 7.34.08 Indefinite Claim Language: “For Example”

 Regarding claim [1] , the phrase “for example” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase
 are part of the claimed invention. See MPEP § 2173.05(d) .
 

 Examiner Note:

 This form paragraph must be preceded by form paragraph 7.34.01 .
 

 

 ¶ 7.34.09 Indefinite Claim Language: “Or The Like”

 Regarding claim [1] , the phrase “or the like” renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed
 (those encompassed by “or the like”), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d) .
 

 Examiner Note:

 This form paragraph must be preceded by form paragraph 7.34.01 .
 

 

 ¶ 7.34.10 Indefinite Claim Language: “Such As”

 Regarding claim [1] , the phrase “such as” renders the claim indefinite because it is unclear whether the limitations following the phrase are
 part of the claimed invention. See MPEP § 2173.05(d) .
 

 Examiner Note:

 This form paragraph must be preceded by form paragraph 7.34.01 .
 

 

 ¶ 7.34.12 Essential Steps Omitted

 Claim [1] rejected under 35 U.S.C.
 112(b) or pre-AIA 35 U.S.C. 112 , second paragraph,
 as being incomplete for omitting essential steps, such omission amounting to a gap between the
 steps. See MPEP §
 2172.01 . The omitted steps are: [2] 

 Examiner Note:
 
 1. This rejection must be preceded
 by form paragraph 7.30.02 or 7.103 .
 

 2. In bracket 2, recite the steps
 omitted from the claims.
 

 3. Give the rationale for considering the omitted steps critical or
 essential. The rationale must explain the basis for concluding that the inventor regards
 the omitted matter to be essential to the invention.
 
 
 

 ¶ 7.34.13 Essential Elements Omitted

 Claim [1] rejected under 35 U.S.C.
 112(b) or pre-AIA 35 U.S.C. 112 , second paragraph,
 as being incomplete for omitting essential elements, such omission amounting to a gap between
 the elements. See MPEP §
 2172.01 . The omitted elements are: [2] 

 Examiner Note:
 
 1. This rejection must be preceded
 by form paragraph 7.30.02 or 7.103 .
 

 2. In bracket 2, recite the
 elements omitted from the claims.
 

 3. Give the rationale for considering the omitted elements critical or
 essential. The rationale must explain the basis for concluding that the inventor regards
 the omitted matter to be essential to the invention.
 
 
 

 ¶ 7.34.14 Essential Cooperative Relationships Omitted

 Claim [1] rejected under 35 U.S.C.
 112(b) or pre-AIA 35 U.S.C. 112 , second paragraph,
 as being incomplete for omitting essential structural cooperative relationships of elements,
 such omission amounting to a gap between the necessary structural connections. See
 MPEP §
 2172.01 . The omitted structural cooperative relationships are:
 [2] 

 Examiner Note:
 
 1. This rejection must be preceded
 by form paragraph 7.30.02 or 7.103 .
 

 2. In bracket 2, recite the
 structural cooperative relationships of elements omitted from the
 claims.
 

 3. Give the rationale for
 considering the omitted structural cooperative relationships of elements being critical
 or essential.
 
 
 

 ¶ 7.34.15 Rejection Under 35 U.S.C. 112, Pro Se

 Claim [1] rejected as failing to define the invention in
 the manner required by 35 U.S.C. 112(b) or pre-AIA 35
 U.S.C. 112 , second paragraph.
 

 The claim(s) are narrative in form and replete with indefinite language.
 The structure which goes to make up the device must be clearly and positively specified. The
 structure must be organized and correlated in such a manner as to present a complete
 operative device. The claim(s) must be in one sentence form only. Note the format of the
 claims in the patent(s) cited.
 

 

 ¶ 7.35 Rejection, 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd
 Paragraph, Failure To Particularly Point out and Distinctly Claim - Omnibus Claim
 

 Claim [1] rejected under 35 U.S.C.
 112(b) or pre-AIA 35 U.S.C. 112 , second paragraph,
 as being indefinite in that it fails to point out what is included or excluded by the claim
 language. This claim is an omnibus type claim.
 

 Examiner Note:
 
 1. This rejection must be preceded
 by form paragraph 7.30.02 or 7.103 .
 

 2. Use this paragraph to reject an
 “omnibus” type claim. No further explanation is necessary.
 

 3. An example of an omnibus claim is: “A device substantially as shown
 and described.”
 
 
 

 ¶ 7.35.01 Trademark or Trade Name as a Limitation in the Claim

 Claim [1] contains the
 trademark/trade name [2] . Where a trademark or trade name is used in a claim as a
 limitation to identify or describe a particular material or product, the claim does not comply
 with the requirements of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C.
 112 , second paragraph. See Ex parte Simpson , 218 USPQ
 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be
 used properly to identify any particular material or product. A trademark or trade name is
 used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade
 name does not identify or describe the goods associated with the trademark or trade name. In
 the present case, the trademark/trade name is used to identify/describe [3] and,
 accordingly, the identification/description is indefinite.
 

 Examiner Note:
 
 1. In bracket 2, insert the
 trademark/trade name and where it is used in the claim.
 

 2. In bracket 3, specify the
 material or product which is identified or described in the claim by the trademark/trade
 name.
 
 
 

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 2101-2102-[Reserved] 

 2103-Patent Examination Process 

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

 
 

 2105-Patent Eligible Subject Matter — Living Subject Matter 

 2106-Patent Subject Matter Eligibility 
 2106.01-[Reserved] 

 2106.02-[Reserved] 

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

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

 2106.04(a)(2)-Abstract Idea Groupings 

 2106.04(a)(3)-Tentative Abstract Ideas 

 
 

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

 2106.04(c)-The Markedly Different Characteristics Analysis 

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

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

 
 

 
 

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

 2106.05(b)-Particular Machine 

 2106.05(c)-Particular Transformation 

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

 2106.05(e)-Other Meaningful Limitations 

 2106.05(f)-Mere Instructions To Apply An Exception 

 2106.05(g)-Insignificant Extra-Solution Activity 

 2106.05(h)-Field of Use and Technological Environment 

 
 

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

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

 
 

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

 
 

 2106.07(b)-Evaluating Applicant’s Response 

 2106.07(c)-Clarifying the Record 

 
 

 
 

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

 2107.02-Procedural Considerations Related to Rejections for Lack of Utility 

 2107.03-Special Considerations for Asserted Therapeutic or Pharmacological Utilities 

 
 

 2108-[Reserved] 

 2109-Inventorship 

 2109.01-Joint Inventorship 

 2110-[Reserved] 

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

 2111.02-Effect of Preamble 

 2111.03-Transitional Phrases 

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

 2111.05-Functional and Nonfunctional Descriptive Material 

 
 

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

 2112.02-Process Claims 

 
 

 2113-Product-by-Process Claims 

 2114-Apparatus and Article Claims — Functional Language 

 2115-Material or Article Worked Upon by Apparatus 

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

 
 

 2117-Markush Claims 

 2118-2119-[Reserved] 

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

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

 
 

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

 2121.02-Compounds and Compositions — What Constitutes Enabling Prior Art 

 2121.03-Plant Genetics — What Constitutes Enabling Prior Art 

 2121.04-Apparatus and Articles — What Constitutes Enabling Prior Art 

 
 

 2122-Discussion of Utility in the Prior Art 

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

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

 
 

 2125-Drawings as Prior Art 

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

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

 
 

 2127-Domestic and Foreign Patent Applications as Prior Art 

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

 2128.02-Date Publication Is Available as a Reference 

 
 

 2129-Admissions as Prior Art 

 2130-[Reserved] 

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

 2131.02-Genus-Species Situations 

 2131.03-Anticipation of Ranges 

 2131.04-Secondary Considerations 

 2131.05-Nonanalogous or Disparaging Prior Art 

 
 

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

 
 

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

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

 
 

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

 2133.03(b)-“On Sale” 

 2133.03(c)-The “Invention” 

 2133.03(d)-“In This Country” 

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

 2133.03(e)(2)-Intent 

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

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

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

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

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

 
 

 
 

 
 

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

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

 
 

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

 2136.02-Content of the Prior Art Available Against the Claims 

 2136.03-Critical Reference Date 

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

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

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

 
 

 
 

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

 2137.02-[Reserved] 

 
 

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

 2138.02-“The Invention Was Made in This Country” 

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

 2138.04-“Conception” 

 2138.05-“Reduction to Practice” 

 2138.06-“Reasonable Diligence” 

 
 

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

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

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

 
 

 2140-[Reserved] 

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

 
 

 2141.02-Differences Between Prior Art and Claimed Invention 

 2141.03-Level of Ordinary Skill in the Art 

 
 

 2142-Legal Concept of Prima Facie Obviousness 

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

 2143.02-Reasonable Expectation of Success Is Required 

 2143.03-All Claim Limitations Must Be Considered 

 
 

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

 2144.02-Reliance on Scientific Theory 

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

 2144.04-Legal Precedent as Source of Supporting Rationale 

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

 2144.06-Art Recognized Equivalence for the Same Purpose 

 2144.07-Art Recognized Suitability for an Intended Purpose 

 2144.08-Obviousness of Species When Prior Art Teaches Genus 

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

 
 

 2145-Consideration of Applicant’s Rebuttal Arguments and Evidence 

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

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

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

 
 

 
 

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

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

 2149-[Reserved] 

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

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

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

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

 2152.02(b)-Described in a Printed Publication 

 2152.02(c)-In Public Use 

 2152.02(d)-On Sale 

 2152.02(e)-Otherwise Available to the Public 

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

 
 

 2152.03-Admissions 

 2152.04-The Meaning of “Disclosure” 

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

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

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

 
 

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

 2153.01(b)-[Reserved] 

 
 

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

 
 

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

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

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

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

 
 

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

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

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

 
 

 
 

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

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

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

 2155.04-Enablement 

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

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

 
 

 2156-Joint Research Agreements 

 2157-Improper Naming of Inventors 

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

 
 

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

 2159.02-Applications Filed on or After March 16, 2013 

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

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

 
 

 2160-[Reserved] 

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

 
 

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

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

 2163.02-Standard for Determining Compliance With the Written Description Requirement 

 2163.03-Typical Circumstances Where Adequate Written Description Issue Arises 

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

 2163.05-Changes to the Scope of Claims 

 2163.06-Relationship of Written Description Requirement to New Matter 

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

 2163.07(b)-Incorporation by Reference 

 
 

 
 

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

 2164.01(b)-How to Make the Claimed Invention 

 2164.01(c)-How to Use the Claimed Invention 

 
 

 2164.02-Working and Prophetic Examples 

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

 2164.04-Burden on the Examiner Under the Enablement Requirement 

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

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

 
 

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

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

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

 
 

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

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

 2164.08(b)-Inoperative Subject Matter 

 2164.08(c)-Critical Feature Not Claimed 

 
 

 
 

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

 2165.02-Best Mode Requirement Compared to Enablement Requirement 

 2165.03-Requirements for Rejection for Lack of Best Mode 

 2165.04-Examples of Evidence of Concealment 

 
 

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

 2167-2170-[Reserved] 

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

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

 
 

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

 2173.02-Determining Whether Claim Language is Definite 

 2173.03-Correspondence Between Specification and Claims 

 2173.04-Breadth Is Not Indefiniteness 

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

 2173.05(b)-Relative Terminology 

 2173.05(c)-Numerical Ranges and Amounts Limitations 

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

 2173.05(e)-Lack of Antecedent Basis 

 2173.05(f)-Reference to Limitations in Another Claim 

 2173.05(g)-Functional Limitations 

 2173.05(h)-Alternative Limitations 

 2173.05(i)-Negative Limitations 

 2173.05(j)-Old Combination 

 2173.05(k)-Aggregation 

 2173.05(l)-[Reserved] 

 2173.05(m)-Prolix 

 2173.05(n)-Multiplicity 

 2173.05(o)-Double Inclusion 

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

 2173.05(q)-“Use” Claims 

 2173.05(r)-Omnibus Claim 

 2173.05(s)-Reference to Figures or Tables 

 2173.05(t)-Chemical Formula 

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

 2173.05(v)-Mere Function of Machine 

 
 

 2173.06-Practice Compact Prosecution 

 
 

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

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

 2176-2180-[Reserved] 

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

 2182-Search and Identification of the Prior Art 

 2183-Making a Prima Facie Case of Equivalence 

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

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

 2186-Relationship to the Doctrine of Equivalents 

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

 2188-2189-[Reserved] 

 2190-Prosecution Laches and Res Judicata 

 

 

 
 

 
 
 

 
 

 

 
 
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 03/09/2026 20:49:33