MPEP § 2153 — MPEP § 2153
Current through: 2022-07-01

2153-Prior Art Exceptions Under 35 U.S.C. 102(b)(1) to AIA 35 U.S.C. 102(a)(1) 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

 Skip over navigation 
 
 
 
 
 
 
 
 search for patents | search for trademarks 

 
 
 
 
 
 
 
 
 
 
 
 Search 
 
 
 

 
 

 
 
 
 
 
 PATENTS 
 
 Patent Search 

 
 Patent Process 

 
 Patent Classification 

 
 Patent Forms 

 
 Statistics 

 
 Electronic Business Center 

 
 Patent Laws, Regulations, Policies & Procedures 

 
 Resources and Guidance 

 
 Office of Data Management 

 
 Announcements 

 
 Initiatives & Events 

 
 International Protection 

 
 Employee Locator 

 
 Contact Patents 

 

 

 
 TRADEMARKS 
 
 Trademark Search 

 
 Trademarks Process 

 
 News & Notices 

 
 Manuals, Guides, Official Gazette 

 
 Laws & Regulations 

 
 Online Filing 

 
 Contact Trademarks 

 

 

 
 IP LAW & POLICY 
 
 Rulemaking 

 
 IP Policy and Enforcement 

 
 Protecting IP Overseas 

 
 Training and Education 

 
 Training Programs & Conferences 

 
 Office of Governmental Affairs 

 
 Office of Chief Economist 

 
 Boards and Counsel 

 

 

 
 PRODUCTS & SERVICES 
 
 Electronic Data Products 

 
 XML Resources 

 
 XML Resources - Retrospective 

 
 USPTO Contact Center Order Form 

 
 Services 

 
 Locate Libraries 

 
 Training/Events 

 
 Online Services Hub 

 

 

 
 INVENTORS 
 
 Patents for Inventors 

 
 Trademarks for Inventors 

 
 Inventors Assistance 

 
 Education and Information 

 
 Scam Prevention 

 
 Pro Se and Pro Bono 

 
 Current Events 

 
 State Resources 

 
 InventorsEye Newsletter 

 

 

 
 NEWS & NOTICES 
 
 Subscription Center 

 
 Press Releases 

 
 Testimony and Speeches 

 
 Director's Forum 

 
 Systems Status 

 
 Emergency Notices 

 
 USPTO Videos 

 
 Official Gazette 

 
 Federal Register Notices 

 
 Event Calendar 

 

 

 
 FAQs 
 
 Patents FAQs 

 
 Trademarks FAQs 

 
 Assignments 

 
 Security 

 
 Musicians and Artists 

 
 Browser Plugins 

 
 Other Web Resources 

 

 

 
 ABOUT US 
 
 USPTO Leadership 

 
 USPTO Organization 

 
 USPTO Offices 

 
 Careers 

 
 Budget, Performance, and Planning 

 
 Statistics 

 
 Vendor Information 

 
 Public Advisory Committees 

 
 National Medal of Technology and Innovation 

 
 IP in Motion 

 
 Contact Us 

 

 

 
 
 

 

 
 

 
 
 
 
 Home Page 

 
 Patents 

 
 Patent Laws, Regulations, Policies & Procedures 

 
 Manual of Patent Examining Procedure 

 Chapter 2100 

 Section 2153 
 

 
 
 
 
 
 2153 Prior Art Exceptions Under 35 U.S.C. 102(b)(1) to
 AIA 35 U.S.C. 102(a)(1) [R-07.2022]
 

 [Editor Note: This MPEP section is only applicable to applications
 subject to examination under the first inventor to file (FITF) provisions of the AIA as
 set forth in 35 U.S.C. 100 (note) . See MPEP §
 2159 et seq. to determine whether an application is subject to
 examination under the FITF provisions, and MPEP § 2131 - MPEP § 2138 for
 examination of applications subject to pre-AIA 35 U.S.C. 102 .] 

 See MPEP § 2153.01 for prior art exceptions
 based on grace period inventor-originated disclosures as provided for under
 AIA 35
 U.S.C. 102(b)(1)(A) . See MPEP §
 2153.02 for prior art exceptions based on inventor-originated
 prior public disclosures.
 

 
 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) [R-01.2024]
 

 [Editor Note: This MPEP section is only applicable to
 applications subject to examination under the first inventor to file (FITF)
 provisions of the AIA as set forth in 35 U.S.C. 100 (note) . See
 MPEP
 § 2159 et seq. to determine whether an application is
 subject to examination under the FITF provisions, and MPEP §
 2131 - MPEP § 2138 for examination of
 applications subject to pre-AIA 35 U.S.C. 102 .]
 

 AIA 35
 U.S.C. 102(b)(1)(A) provides exceptions to the prior art
 provisions of AIA 35 U.S.C. 102(a)(1) . These
 exceptions limit the use of an inventor's or at least one joint inventor’s own work as
 prior art, when the inventor's or at least one joint inventor’s own work has been
 publicly disclosed by the inventor, a joint inventor, or another who obtained the
 subject matter directly or indirectly from the inventor or joint inventor not more than
 one year before the effective filing date of the claimed invention. AIA 35 U.S.C.
 102(b)(1)(A) provides that a disclosure which would otherwise
 qualify as prior art under AIA 35 U.S.C. 102(a)(1) is not prior
 art if the disclosure was made: (1) One year or less before the effective filing date of
 the claimed invention; and (2) by the inventor or a joint inventor, or by another who
 obtained the subject matter directly or indirectly from the inventor or joint inventor.
 MPEP §
 2153.01(a) discusses issues pertaining to inventor-originated
 disclosures within the grace period. MPEP §
 2152.01 discusses the “effective filing date” of a claimed
 invention.
 

 
 2153.01(a) Grace Period Inventor-Originated Disclosure
 Exception [R-01.2024]
 

 [Editor Note: This MPEP section is only applicable to
 applications subject to examination under the first inventor to file (FITF)
 provisions of the AIA as set forth in 35 U.S.C. 100 (note) . See
 MPEP § 2159 et seq. to determine whether an application
 is subject to examination under the FITF provisions, and MPEP §
 2131 - MPEP § 2138 for examination of
 applications subject to pre-AIA 35 U.S.C. 102 .]
 

 AIA 35
 U.S.C. 102(b)(1)(A) first provides that a disclosure which
 would otherwise qualify as prior art under AIA 35 U.S.C.
 102(a)(1) is excepted as prior art if the disclosure is made:
 (1) one year or less before the effective filing date of the claimed invention; and
 (2) by the inventor or a joint inventor or by another who obtained the subject matter
 disclosed directly or indirectly from the inventor or a joint inventor (i.e., an
 inventor-originated disclosure). Thus, a disclosure that would otherwise qualify as
 prior art under AIA 35 U.S.C. 102(a)(1) may not
 be used as prior art by Office personnel if the disclosure is made one year or less
 before the effective filing date of the claimed invention, and the evidence shows
 that the disclosure is an inventor-originated disclosure. What evidence is necessary
 to show that the disclosure is an inventor-originated disclosure requires
 case-by-case treatment, depending upon whether it is apparent from the disclosure
 itself or the patent application specification that the disclosure is an
 inventor-originated disclosure.
 

 A disclosure made within the grace period is not prior
 art under AIA 35 U.S.C. 102(a)(1) if it is apparent from the disclosure
 itself that it is an inventor-originated disclosure. Specifically, Office personnel
 may not apply a disclosure as prior art under AIA 35 U.S.C.
 102(a)(1) if the disclosure: (1) was made one year or less
 before the effective filing date of the claimed invention; (2) names the inventor or
 a joint inventor as an author or an inventor; and (3) does not name additional
 persons as authors on a printed publication or joint inventors on a patent. This
 means that in circumstances where an application names additional persons as joint
 inventors relative to the persons named as authors in the publication (e.g., the
 application names as joint inventors A, B, and C, and the publication names as
 authors A and B), and the publication is one year or less before the effective filing
 date, it is apparent that the disclosure is a grace period inventor disclosure, and
 the publication is not prior art under AIA 35 U.S.C. 102(a)(1) . If,
 however, the application names fewer joint inventors than a publication (e.g., the
 application names as joint inventors A and B, and the publication names as authors A,
 B and C), it would not be readily apparent from the publication that it is an
 inventor-originated disclosure and the publication would be treated as prior art
 under AIA
 35 U.S.C. 102(a)(1) unless there is evidence of record that an
 exception under AIA 35 U.S.C. 102(b)(1) 
 applies.
 

 Applicants can include a statement regarding any grace
 period inventor-originated public disclosures in the specification upon filing. See
 37 CFR
 1.77(b)(6) and MPEP § 608.01(a) . In order to be
 effective to show that a grace period inventor-originated public disclosure is not
 prior art under AIA 35 U.S.C. 102(a)(1) because
 the AIA
 35 U.S.C. 102(b)(1)(A) exception applies, the statement must
 convey the same information as would be required in a declaration under
 37 CFR
 1.130(a) . See MPEP §§ 717.01(a)(1)
 , 2155.01 , and 2155.03 . An applicant is not required to identify any
 grace period inventor-originated public disclosures or to use the format specified in
 37 CFR
 1.77 , but identifying any such disclosures may expedite
 examination of the application and save applicants (and the Office) the costs related
 to an Office action and reply. If the patent application specification as filed
 contains a specific reference to a grace period inventor-originated public
 disclosure, and an oath or declaration under 37 CFR 1.63 from the inventor or
 the appropriate joint inventor(s) has been made of record, the Office will consider
 it apparent from the specification that the grace period public disclosure is
 attributable to the inventor or a joint inventor, provided there is a sufficient
 explanation of why the exception applies to a particular disclosure and there is no
 other evidence to the contrary. The applicant should also provide a copy of the grace
 period inventor-originated public disclosure (e.g., copy of a printed publication).
 The format specified in 37 CFR 1.77(b)(6) may not be the
 basis to add information about inventor-originated grace period public disclosures to
 the specification after the filing date of the application. Such an amendment may be
 considered new matter. Applicants should use 37 CFR 1.130(a) to submit such
 information after filing. 
 

 The Office has provided a mechanism for filing an
 affidavit or declaration (under 37 CFR 1.130 ) to establish that a
 disclosure is not prior art under AIA 35 U.S.C. 102(a) due to an
 exception in AIA 35 U.S.C. 102(b) . See
 MPEP §
 717 . In the situations in which it is not apparent from the
 grace period disclosure itself or the patent application specification that the
 disclosure is an inventor-originated disclosure, the applicant may establish that the
 AIA 35
 U.S.C. 102(b)(1)(A) exception applies by way of an affidavit or
 declaration under 37 CFR 1.130(a) . MPEP §
 2155.01 discusses the use of affidavits or declarations to
 show that a disclosure was an inventor-originated disclosure made during the grace
 period.
 

 The one-year grace period in AIA 35 U.S.C.
 102(b)(1)(A) is extended to the next succeeding business day if
 the end of the one-year grace period otherwise falls on a Saturday, Sunday, or
 federal holiday. Ex parte Olah, 131 USPQ 41 (Bd. App. 1960) and
 35 U.S.C.
 21(b) . The provisions of 35 U.S.C. 21(b) still apply
 notwithstanding the provisions of 37 CFR 1.6(a)(2) and
 37 CFR
 1.10 , which accord a filing date as of the date of deposit as
 Priority Mail Express ® with the U.S. Postal Service, and
 37 CFR
 1.6(a)(4) , which accords a filing date as of the date of
 submission using the USPTO patent electronic filing system.
 

 

 
 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) [R-01.2024]
 

 [Editor Note: This MPEP section is only applicable to
 applications subject to examination under the first inventor to file (FITF)
 provisions of the AIA as set forth in 35 U.S.C. 100 (note) . See
 MPEP
 § 2159 et seq. to determine whether an application is
 subject to examination under the FITF provisions, and MPEP §
 2131 - MPEP § 2138 for examination of
 applications subject to pre-AIA 35 U.S.C. 102 .]
 

 AIA 35
 U.S.C. 102(b)(1)(B) provides an additional exception to the prior
 art provision of AIA 35 U.S.C. 102(a)(1) .
 AIA 35
 U.S.C. 102(b)(1)(B) excepts as prior art a disclosure of subject
 matter that occurs after the subject matter had been publicly disclosed by the inventor,
 a joint inventor, or another who obtained the subject matter directly or indirectly from
 the inventor or joint inventor (i.e., an inventor-originated public disclosure).
 Specifically, AIA 35 U.S.C. 102(b)(1)(B) provides
 that a disclosure which would otherwise qualify as prior art under AIA 35 U.S.C.
 102(a)(1) (patent, printed publication, public use, sale, or other
 means of public availability) is excepted as prior art if: (1) the disclosure was made
 one year or less before the effective filing date of the claimed invention; and (2) the
 subject matter disclosed had been previously publicly disclosed by the inventor, a joint
 inventor, or another who obtained the subject matter directly or indirectly from the
 inventor or joint inventor. The previous inventor-originated public disclosure of the
 subject matter typically will be a disclosure within the one-year grace period (i.e., a
 grace period inventor-originated disclosure). However, if the previous
 inventor-originated public disclosure of the subject matter was made outside the grace
 period, that disclosure itself would qualify as prior art under AIA 35 U.S.C.
 102(a)(1) , and could not be excepted under AIA 35 U.S.C.
 102(b)(1)(A) . In other words, a previous inventor-originated
 public disclosure of the subject matter can be effective to establish that a grace
 period disclosure is excepted as prior art regardless of whether the previous
 inventor-originated disclosure was made within the grace period or not.
 MPEP §
 2152.01 discusses the “effective filing date” of a claimed
 invention. MPEP § 2155.02 discusses the use of affidavits or
 declarations to show that the subject matter disclosed had, before such disclosure, been
 publicly disclosed by the inventor or a joint inventor, and MPEP §
 2155.03 discusses the use of affidavits or declarations to
 show that the disclosure was made, or that the 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.
 

 The exception in AIA 35 U.S.C.
 102(b)(1)(B) applies if the “subject matter disclosed [in the
 intervening disclosure] had, before such [intervening] disclosure, been publicly
 disclosed by the inventor or a joint inventor (or another who obtained the subject
 matter directly or indirectly from the inventor or joint inventor).” See
 AIA 35
 U.S.C. 102(b)(1)(B) . The exception in AIA 35 U.S.C.
 102(b)(1)(B) focuses on the “subject matter” that had been
 previously publicly disclosed by the inventor or a joint inventor (or another who
 obtained the subject matter directly or indirectly from the inventor or joint inventor).
 The subject matter in the prior disclosure being relied upon under AIA 35 U.S.C.
 102(a) must be the same "subject matter" as the subject matter
 previously publicly disclosed by the inventor for the exceptions in AIA 35 U.S.C.
 102(b)(1)(B) and AIA 102(b)(2)(B) to apply. The
 exceptions in AIA 35 U.S.C. 102(b)(1)(B) and
 AIA
 102(b)(2)(B) do not apply even if the only differences between the
 subject matter in the prior art disclosure that is relied upon under AIA 35 U.S.C.
 102(a) and the subject matter previously publicly disclosed by the
 inventor are mere insubstantial changes, or only trivial or obvious variations. This
 guidance maintains the identical subject matter interpretation of AIA 35 U.S.C.
 102(b)(1)(B) and AIA 102(b)(2)(B) .
 

 There is no requirement under AIA 35 U.S.C.
 102(b)(1)(B) that the mode of disclosure by the inventor or a
 joint inventor (or another who obtained the subject matter directly or indirectly from
 the inventor or joint inventor) be the same as the mode of disclosure of the intervening
 grace period disclosure (e.g., patenting, publication, public use, sale activity). There
 is also no requirement that the disclosure by the inventor or a joint inventor be a
 verbatim or ipsissimis verbis disclosure of the intervening grace period disclosure. See
 In re Kao, 639 F.3d 1057, 1066 98 USPQ2d 1799, 1806 (Fed. Cir.
 2011) (subject matter does not change as a function of how one chooses to describe it).
 What is required for subject matter in an intervening grace period disclosure to be
 excepted under AIA 35 U.S.C. 102(b)(1)(B) is that
 the same subject matter as in the intervening disclosure must have been previously
 publicly disclosed by the inventor or a joint inventor (or by another who obtained the
 subject matter therefrom). 
 

 The exception in AIA 35 U.S.C.
 102(b)(1)(B) applies to the subject matter in the intervening
 grace period disclosure being relied upon as prior art for a rejection under
 AIA 35
 U.S.C. 102(a)(1) (an intervening disclosure) that was also
 publicly disclosed by the inventor or a joint inventor (or by another who obtained the
 subject matter therefrom) before such intervening disclosure. The subject matter of an
 intervening grace period disclosure that is not in the inventor-originated prior public
 disclosure is available as prior art under AIA 35 U.S.C. 102(a)(1) . For
 example, if the inventor or a joint inventor had publicly disclosed A, B, and C, and a
 subsequent intervening grace period disclosure discloses A, B, C, and D, then D remains
 available as prior art under AIA 35 U.S.C. 102(a)(1) even though
 the AIA 35
 U.S.C. 102(b)(1)(B) exception applies such that A, B, and C are
 not prior art. In other words, the exception in AIA 35 U.S.C.
 102(b)(1)(B) does not necessarily remove the entire disclosure in
 the intervening reference from being prior art.
 

 In addition, if subject matter of an intervening grace
 period disclosure is simply a more general description of the subject matter in an
 inventor-originated prior public disclosure, the exception in AIA 35 U.S.C.
 102(b)(1)(B) applies to such subject matter of the intervening
 grace period disclosure. To hold otherwise would unfairly deprive an inventor of a
 patent merely because a third party became aware of the inventor’s public disclosure and
 then publicized a genericized version of it. For example, if the inventor or a joint
 inventor had publicly disclosed a species, and a subsequent intervening grace period
 disclosure discloses a genus (i.e., provides a more generic disclosure of the species),
 the intervening grace period disclosure of the genus is not available as prior art under
 AIA 35
 U.S.C. 102(a)(1) . Conversely, if the inventor or a joint inventor
 had publicly disclosed a genus, and a subsequent intervening grace period disclosure
 discloses a species, the intervening grace period disclosure of the species would be
 available as prior art under AIA 35 U.S.C. 102(a)(1) . Likewise,
 if the inventor or a joint inventor had publicly disclosed a species, and a subsequent
 intervening grace period disclosure discloses an alternative species not also disclosed
 by the inventor or a joint inventor, the intervening grace period disclosure of the
 alternative species would be available as prior art under AIA 35 U.S.C.
 102(a)(1) because the “subject matter disclosed” requirement of
 AIA 35
 U.S.C. 102(b)(1)(B) would not have been met.
 

 Finally, AIA 35 U.S.C. 102(b)(1)(B) does not
 discuss “the claimed invention” with respect to either the subject matter disclosed by
 the inventor or a joint inventor, or the subject matter of the subsequent intervening
 grace period disclosure. The only inquiry with respect to the claimed invention is
 whether or not the subject matter in the prior art disclosure being relied upon
 anticipates or renders obvious the claimed invention. A determination of whether the
 exception in AIA 35 U.S.C. 102(b)(1)(B) is applicable to subject matter in an
 intervening grace period disclosure does not involve a comparison of the subject matter
 of the claimed invention to either the subject matter in the inventor-originated prior
 public disclosure, or to the subject matter of the subsequent intervening grace period
 disclosure.
 

 Applicants can include a statement in the specification
 upon filing regarding any inventor-originated public disclosures of subject matter made
 prior to a potential AIA 35 U.S.C. 102(a)(1) disclosure
 of that same subject matter. See 37 CFR 1.77(b)(6) and
 MPEP §
 608.01(a) . In order to be effective to show that a potential
 AIA 35
 U.S.C. 102(a)(1) disclosure of subject matter is not prior art
 under AIA 35
 U.S.C. 102(a)(1) because the AIA 35 U.S.C.
 102(b)(1)(B) exception applies, the statement must convey the same
 information as would be required in a declaration under 37 CFR 1.130(b) .
 See MPEP §§
 717.01(b)(1) , 2155.02 , and 2155.03 .
 An applicant is not required to identify any inventor-originated public disclosures of
 subject matter made prior to a potential AIA 35 U.S.C. 102(a)(1) disclosure
 of that same subject matter, or to use the format specified in 37 CFR
 1.77(b)(6) , but identifying any such public disclosures may
 expedite examination of the application and save applicants (and the Office) the costs
 related to an Office action and reply. If the patent application specification as filed
 contains a specific reference to an inventor-originated public disclosure of subject
 matter made prior to a potential AIA 35 U.S.C. 102(a)(1) disclosure
 of that same subject matter, and an oath or declaration under 37 CFR 1.63 
 from the inventor or the appropriate joint inventor(s) has been made of record, the
 Office will consider it apparent from the specification that the potential
 AIA 35
 U.S.C. 102(a)(1) disclosure of the same subject matter is not, in
 fact, prior art under AIA 35 U.S.C. 102(a)(1) , provided
 there is a sufficient explanation of why the exception applies to a particular
 disclosure and there is no other evidence to the contrary. The applicant must also
 provide a copy of the prior inventor-originated public disclosure if it was made by way
 of a printed publication; see 37 CFR 1.130(b) . Applicants may not
 use 37 CFR
 1.77(b)(6) to add information to the specification about
 inventor-originated public disclosures of subject matter made prior to a potential
 AIA 35
 U.S.C. 102(a)(1) disclosure of that same subject matter after the
 date that the application is filed. Applicants should use 37 CFR 1.130(b) to
 submit such information after filing.
 

 The one-year grace period in AIA 35 U.S.C.
 102(b)(1)(B) is extended to the next succeeding business day if
 the end of the one-year grace period otherwise falls on a Saturday, Sunday, or federal
 holiday. Ex parte Olah, 131 USPQ 41 (Bd. App. 1960) and
 35 U.S.C.
 21(b) . The provisions of 35 U.S.C. 21(b) still apply
 notwithstanding the provisions of 37 CFR 1.6(a)(2) and
 37 CFR
 1.10 , which accord a filing date as of the date of deposit as
 Priority Mail Express ® with the U.S. Postal Service and
 37 CFR
 1.6(a)(4) , which accords a filing date as of the date of
 submission using the USPTO patent electronic filing system.
 

 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 2101-2102-[Reserved] 

 2103-Patent Examination Process 

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

 
 

 2105-Patent Eligible Subject Matter — Living Subject Matter 

 2106-Patent Subject Matter Eligibility 
 2106.01-[Reserved] 

 2106.02-[Reserved] 

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

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

 2106.04(a)(2)-Abstract Idea Groupings 

 2106.04(a)(3)-Tentative Abstract Ideas 

 
 

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

 2106.04(c)-The Markedly Different Characteristics Analysis 

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

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

 
 

 
 

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

 2106.05(b)-Particular Machine 

 2106.05(c)-Particular Transformation 

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

 2106.05(e)-Other Meaningful Limitations 

 2106.05(f)-Mere Instructions To Apply An Exception 

 2106.05(g)-Insignificant Extra-Solution Activity 

 2106.05(h)-Field of Use and Technological Environment 

 
 

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

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

 
 

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

 
 

 2106.07(b)-Evaluating Applicant’s Response 

 2106.07(c)-Clarifying the Record 

 
 

 
 

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

 2107.02-Procedural Considerations Related to Rejections for Lack of Utility 

 2107.03-Special Considerations for Asserted Therapeutic or Pharmacological Utilities 

 
 

 2108-[Reserved] 

 2109-Inventorship 

 2109.01-Joint Inventorship 

 2110-[Reserved] 

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

 2111.02-Effect of Preamble 

 2111.03-Transitional Phrases 

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

 2111.05-Functional and Nonfunctional Descriptive Material 

 
 

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

 2112.02-Process Claims 

 
 

 2113-Product-by-Process Claims 

 2114-Apparatus and Article Claims — Functional Language 

 2115-Material or Article Worked Upon by Apparatus 

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

 
 

 2117-Markush Claims 

 2118-2119-[Reserved] 

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

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

 
 

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

 2121.02-Compounds and Compositions — What Constitutes Enabling Prior Art 

 2121.03-Plant Genetics — What Constitutes Enabling Prior Art 

 2121.04-Apparatus and Articles — What Constitutes Enabling Prior Art 

 
 

 2122-Discussion of Utility in the Prior Art 

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

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

 
 

 2125-Drawings as Prior Art 

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

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

 
 

 2127-Domestic and Foreign Patent Applications as Prior Art 

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

 2128.02-Date Publication Is Available as a Reference 

 
 

 2129-Admissions as Prior Art 

 2130-[Reserved] 

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

 2131.02-Genus-Species Situations 

 2131.03-Anticipation of Ranges 

 2131.04-Secondary Considerations 

 2131.05-Nonanalogous or Disparaging Prior Art 

 
 

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

 
 

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

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

 
 

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

 2133.03(b)-“On Sale” 

 2133.03(c)-The “Invention” 

 2133.03(d)-“In This Country” 

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

 2133.03(e)(2)-Intent 

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

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

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

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

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

 
 

 
 

 
 

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

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

 
 

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

 2136.02-Content of the Prior Art Available Against the Claims 

 2136.03-Critical Reference Date 

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

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

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

 
 

 
 

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

 2137.02-[Reserved] 

 
 

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

 2138.02-“The Invention Was Made in This Country” 

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

 2138.04-“Conception” 

 2138.05-“Reduction to Practice” 

 2138.06-“Reasonable Diligence” 

 
 

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

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

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

 
 

 2140-[Reserved] 

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

 
 

 2141.02-Differences Between Prior Art and Claimed Invention 

 2141.03-Level of Ordinary Skill in the Art 

 
 

 2142-Legal Concept of Prima Facie Obviousness 

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

 2143.02-Reasonable Expectation of Success Is Required 

 2143.03-All Claim Limitations Must Be Considered 

 
 

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

 2144.02-Reliance on Scientific Theory 

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

 2144.04-Legal Precedent as Source of Supporting Rationale 

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

 2144.06-Art Recognized Equivalence for the Same Purpose 

 2144.07-Art Recognized Suitability for an Intended Purpose 

 2144.08-Obviousness of Species When Prior Art Teaches Genus 

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

 
 

 2145-Consideration of Applicant’s Rebuttal Arguments and Evidence 

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

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

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

 
 

 
 

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

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

 2149-[Reserved] 

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

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

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

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

 2152.02(b)-Described in a Printed Publication 

 2152.02(c)-In Public Use 

 2152.02(d)-On Sale 

 2152.02(e)-Otherwise Available to the Public 

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

 
 

 2152.03-Admissions 

 2152.04-The Meaning of “Disclosure” 

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

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

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

 
 

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

 2153.01(b)-[Reserved] 

 
 

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

 
 

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

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

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

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

 
 

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

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

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

 
 

 
 

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

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

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

 2155.04-Enablement 

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

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

 
 

 2156-Joint Research Agreements 

 2157-Improper Naming of Inventors 

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

 
 

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

 2159.02-Applications Filed on or After March 16, 2013 

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

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

 
 

 2160-[Reserved] 

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

 
 

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

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

 2163.02-Standard for Determining Compliance With the Written Description Requirement 

 2163.03-Typical Circumstances Where Adequate Written Description Issue Arises 

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

 2163.05-Changes to the Scope of Claims 

 2163.06-Relationship of Written Description Requirement to New Matter 

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

 2163.07(b)-Incorporation by Reference 

 
 

 
 

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

 2164.01(b)-How to Make the Claimed Invention 

 2164.01(c)-How to Use the Claimed Invention 

 
 

 2164.02-Working and Prophetic Examples 

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

 2164.04-Burden on the Examiner Under the Enablement Requirement 

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

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

 
 

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

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

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

 
 

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

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

 2164.08(b)-Inoperative Subject Matter 

 2164.08(c)-Critical Feature Not Claimed 

 
 

 
 

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

 2165.02-Best Mode Requirement Compared to Enablement Requirement 

 2165.03-Requirements for Rejection for Lack of Best Mode 

 2165.04-Examples of Evidence of Concealment 

 
 

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

 2167-2170-[Reserved] 

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

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

 
 

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

 2173.02-Determining Whether Claim Language is Definite 

 2173.03-Correspondence Between Specification and Claims 

 2173.04-Breadth Is Not Indefiniteness 

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

 2173.05(b)-Relative Terminology 

 2173.05(c)-Numerical Ranges and Amounts Limitations 

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

 2173.05(e)-Lack of Antecedent Basis 

 2173.05(f)-Reference to Limitations in Another Claim 

 2173.05(g)-Functional Limitations 

 2173.05(h)-Alternative Limitations 

 2173.05(i)-Negative Limitations 

 2173.05(j)-Old Combination 

 2173.05(k)-Aggregation 

 2173.05(l)-[Reserved] 

 2173.05(m)-Prolix 

 2173.05(n)-Multiplicity 

 2173.05(o)-Double Inclusion 

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

 2173.05(q)-“Use” Claims 

 2173.05(r)-Omnibus Claim 

 2173.05(s)-Reference to Figures or Tables 

 2173.05(t)-Chemical Formula 

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

 2173.05(v)-Mere Function of Machine 

 
 

 2173.06-Practice Compact Prosecution 

 
 

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

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

 2176-2180-[Reserved] 

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

 2182-Search and Identification of the Prior Art 

 2183-Making a Prima Facie Case of Equivalence 

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

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

 2186-Relationship to the Doctrine of Equivalents 

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

 2188-2189-[Reserved] 

 2190-Prosecution Laches and Res Judicata 

 

 

 
 

 
 
 

 
 

 

 
 
 Accessibility 

 Privacy Policy 

 Terms of Use 

 Security 

 Emergencies/Security Alerts 

 Information Quality Guidelines 

 
 

 
 
 Federal Activities Inventory Reform (FAIR) Act 

 Notification and Federal Employee Antidiscrimination and Retaliation (NoFEAR) Act 

 Budget & Performance 

 Freedom of Information Act (FOIA) 

 
 

 
 
 Department of Commerce NoFEAR Act Report 

 Regulations.gov 

 STOP!Fakes.gov 

 Department of Commerce 

 USA.gov 

 
 

 
 
 Strategy Targeting Organized Piracy (STOP!) 

 Careers 

 Site Index 

 Contact Us 

 Submit Feedback 

 
 

 
 This page is owned by Patents.

 Last Modified: 
 
 03/09/2026 20:49:33