MPEP § 2155 — MPEP § 2155
Current through: 2022-07-01

2155-Use of Affidavits or Declarations Under 37 CFR 1.130 To Overcome Prior Art Rejections 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2100 

 Section 2155 
 

 
 
 
 
 
 2155 Use of Affidavits or Declarations Under 37 CFR 1.130
 To Overcome Prior Art Rejections [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 .] 

 
 37 CFR 1.130 Affidavit or declaration of attribution or prior public disclosure under the
 Leahy-Smith America Invents Act. 

 
 (a) Affidavit or declaration of attribution . When any claim of an
 application or a patent under reexamination is rejected, the applicant or patent
 owner may submit an appropriate affidavit or declaration to disqualify a
 disclosure as prior art by establishing that the disclosure was made by the
 inventor or a joint inventor, or the subject matter disclosed was obtained
 directly or indirectly from the inventor or a joint inventor.
 

 (b) Affidavit or declaration of prior public disclosure . When any
 claim of an application or a patent under reexamination is rejected, the applicant
 or patent owner may submit an appropriate affidavit or declaration to disqualify a
 disclosure as prior art by establishing that the subject matter disclosed had,
 before such disclosure was made or before such subject matter was effectively
 filed, been publicly disclosed by the inventor or a joint inventor or another who
 obtained the subject matter disclosed directly or indirectly from the inventor or
 a joint inventor. An affidavit or declaration under this paragraph must identify
 the subject matter publicly disclosed and provide the date such subject matter was
 publicly disclosed by the inventor or a joint inventor or another who obtained the
 subject matter disclosed directly or indirectly from the inventor or a joint
 inventor.
 
 (1) If the subject matter publicly disclosed on
 that date was in a printed publication, the affidavit or declaration must be
 accompanied by a copy of the printed publication.
 

 (2) If the subject matter publicly disclosed on
 that date was not in a printed publication, the affidavit or declaration
 must describe the subject matter with sufficient detail and particularity to
 determine what subject matter had been publicly disclosed on that date by
 the inventor or a joint inventor or another who obtained the subject matter
 disclosed directly or indirectly from the inventor or a joint inventor.
 

 
 

 (c) When this section is not available . The provisions of this
 section are not available if the rejection is based upon a disclosure made more
 than one year before the effective filing date of the claimed invention. The
 provisions of this section may not be available if the rejection is based upon a
 U.S. patent or U.S. patent application publication of a patented or pending
 application naming another inventor, the patent or pending application claims an
 invention that is the same or substantially the same as the applicant's or patent
 owner's claimed invention, and the affidavit or declaration contends that an
 inventor named in the U.S. patent or U.S. patent application publication derived
 the claimed invention from the inventor or a joint inventor named in the
 application or patent, in which case an applicant or a patent owner may file a
 petition for a derivation proceeding pursuant to §
 42.401 et seq. of this title.
 

 (d) Applications and patents to which this section is applicable .
 The provisions of this section apply to any application for patent, and to any
 patent issuing thereon, that contains, or contained at any time:
 
 (1) A claim to a claimed invention that has an
 effective filing date as defined in § 1.109 that is on or
 after March 16, 2013; or
 

 (2) A specific reference under 35 U.S.C.
 120 , 121 , 365(c) , or 386(c) to any patent or
 application that contains, or contained at any time, a claim to a claimed
 invention that has an effective filing date as defined in §
 1.109 that is on or after March 16, 2013.
 

 
 

 
 

 The Office has provided a mechanism in 37 CFR 1.130 for
 filing an affidavit or declaration 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) . Under 37 CFR 1.130(a) , an affidavit or
 declaration of attribution may be submitted to except a disclosure as prior art because it
 was made by the inventor or a joint inventor, or the subject matter disclosed was obtained
 directly or indirectly from the inventor or a joint inventor. Under 37 CFR 1.130(b) , an
 affidavit or declaration of prior public disclosure may be submitted to except an
 intervening disclosure as prior art if the subject matter disclosed had, before such
 disclosure was made or before such subject matter was effectively filed in a U.S. patent,
 U.S. patent application publication, or WIPO published application, been publicly disclosed
 by the inventor or a joint inventor or another who obtained the subject matter disclosed
 directly or indirectly from the inventor or a joint inventor.
 

 
 2155.01 Showing That the Disclosure Was Made by the
 Inventor or a Joint Inventor [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 .] 

 AIA 35
 U.S.C. 102(b)(1)(A) provides that a grace period disclosure shall
 not be prior art to a claimed invention under AIA 35 U.S.C.
 102(a)(1) if the disclosure was made by the inventor or a joint
 inventor. An applicant may show that a disclosure was made by the inventor or a joint
 inventor by way of an affidavit or declaration under 37 CFR 1.130(a) (an affidavit or
 declaration of attribution). See In re Katz, 687 F.2d 450, 455, 215
 USPQ 14, 18 (CCPA 1982) and MPEP § 717.01(a)(1) . Where the
 authorship of the prior art disclosure includes the inventor or a joint inventor named
 in the application, an unequivocal statement from the inventor or a joint inventor that
 the inventor or joint inventor (or some combination of named inventors) invented the
 subject matter of the disclosure, accompanied by a reasonable explanation of the
 presence of additional authors, may be acceptable in the absence of evidence to the
 contrary. See In re DeBaun, 687 F.2d 459, 463, 214 USPQ 933, 936
 (CCPA 1982). When any claim of an application or a patent under reexamination is
 rejected, the applicant or patent owner may submit an appropriate affidavit or
 declaration to except a disclosure as prior art by establishing that the disclosure was
 made by the inventor or a joint inventor, or the subject matter disclosed was obtained
 directly or indirectly from the inventor or a joint inventor. However, an affidavit or
 declaration under 37
 CFR 1.130(a) that is only a naked assertion of inventorship and
 that fails to provide any context, explanation or evidence to support that assertion is
 insufficient. See EmeraChem Holdings, LLC v. Volkswagen Grp. of Am.,
 Inc., 859 F.3d 1341, 123 USPQ2d 1146 (Fed. Cir. 2017). See also Ex
 parte Kroger, 219 USPQ 370 (Bd. App. 1982) (affirming rejection
 notwithstanding declarations by the alleged actual inventors as to their inventorship in
 view of a nonapplicant author submitting a letter declaring the nonapplicant author's
 inventorship). This is similar to the process for disqualifying a publication as not
 being by “others” discussed in MPEP § 2132.01 , except that
 AIA 35
 U.S.C. 102(b)(1)(A) requires only that the disclosure be by the
 inventor or a joint inventor.
 

 The following examples are provided for illustration
 only:
 

 Example 1 On April 7, 2021, an attorney for AB Corp. files a
 U.S. nonprovisional patent application claiming subject matter X. Anwesha is the
 inventor named in a signed application data sheet (ADS), but there is no inventor's
 oath or declaration under 37 CFR 1.63 of record. The
 examiner finds a journal article disclosing subject matter X with a publication date
 of November 1, 2020, which is within the grace period. The journal article lists
 Anwesha and Bob as coauthors. There is no evidence of record to indicate that Bob did
 not invent subject matter X disclosed in the journal article. Accordingly, the
 examiner rejects the claim to X as being anticipated under 35 U.S.C.
 102(a)(1) by the journal article. In response to the prior art
 rejection, AB Corp.'s attorney files a declaration under 37 CFR 1.130(a) 
 signed by Anwesha averring that she is the sole inventor of the subject matter X
 disclosed in the article. Anwesha also explains in the declaration that Bob was a
 graduate student working under her direction and supervision and did not contribute
 to the conception of the claimed invention. In other words, Anwesha’s declaration
 establishes that Bob was not a joint inventor of subject matter X. 
 

 The examiner should withdraw the rejection because the
 declaration establishes that the journal article is not prior art. Anwesha's
 declaration includes a statement that Anwesha invented X, so there is no need for the
 examiner to require a signed inventor's oath or declaration under 37 CFR 1.63 
 at this time in order to withdraw the rejection. Furthermore, the declaration
 properly includes a reasonable explanation of Bob's involvement with the journal
 article. A statement from Bob is not needed. There is no evidence in the record to
 suggest that Bob was a joint inventor of X.
 

 

 Example 2 An attorney for AB Corp. files a U.S. patent
 application disclosing and claiming subject matter Y on June 2, 2021. Alexis is the
 inventor named in a signed ADS, but there is no inventor's oath or declaration under
 37 CFR
 1.63 on file. The examiner finds a U.S. patent application
 publication (PGPub) claiming subject matter Y and Z that was published on January 14,
 2021, which is within the grace period. The PGPub lists Alexis and Mehdi as joint
 inventors. There is no evidence of record to indicate that Mehdi did not invent
 subject matter Y as disclosed and claimed in the PGPub to Alexis and Mehdi.
 Accordingly, the examiner rejects the claim to Y as being anticipated by the PGPub
 under 35
 U.S.C. 102(a)(1) based on its publication date, and under 35
 U.S.C. 102(a)(2) based on its effectively filed date. 
 

 In response to the prior art rejections, AB Corp.’s
 attorney files a 37
 CFR 1.130(a) declaration signed by Alexis averring that she
 invented subject matter Y as disclosed and claimed in the PGPub. The examiner should
 maintain the rejections under both 35 U.S.C. 102(a)(1) and
 102(a)(2) because the declaration fails to establish that
 Mehdi is not a joint inventor of Y. Alexis' declaration under 37 CFR 1.130(a) 
 does include a statement that Alexis invented Y, so there is no need for the examiner
 to require a signed inventor's oath or declaration under 37 CFR 1.63 
 at this time in order to withdraw the rejection. However, Alexis’ declaration is
 ineffective because it lacks a reasonable explanation of Mehdi’s role in the PGPub.
 If Alexis’ declaration had stated that Mehdi was named as an inventor of the PGPub
 because Mehdi invented Z, the declaration would have been sufficient; a corroborating
 statement from Mehdi would not have been needed. 
 

 Note that in accordance with compact prosecution, it
 is appropriate in Example 2 for the examiner to reject under both sections of
 35
 U.S.C. 102(a) because the U.S. patent document reference has a
 public availability date (that is, either a publication date or an issue date) within
 the grace period. If the 35 U.S.C. 102(a)(1) date had been
 prior to the grace period, then no 35 U.S.C. 102(a)(2) rejection
 over the same disclosure would have been necessary because no exception could
 possibly have applied to overcome the 35 U.S.C. 102(a)(1) rejection.
 Given the facts of Example 2, however, an applicant’s response could possibly
 establish an exception to overcome one of the rejections while allowing the examiner
 to maintain the other rejection. At the time that a rejection is made, the examiner
 cannot foresee how the applicant will respond. Thus, in order to conclude prosecution
 in a timely manner and avoid the possibility of an additional non-final action, the
 examiner should make both a 35 U.S.C. 102(a)(1) rejection and
 a 35
 U.S.C. 102(a)(2) rejection when the 35 U.S.C.
 102(a)(1) date of a U.S. patent document is within the grace
 period year. 
 

 

 Example 3 On March 16, 2021, an attorney for Acme Corp. files a
 U.S. patent application claiming subject matter X. Ali is the inventor named in a
 signed ADS, but there is no inventor's oath or declaration under 37 CFR 1.63 
 on record. The examiner finds a September 10, 2021 U.S. patent application
 publication (PGPub) that names Ming as the inventor and that discloses but does not
 claim subject matter X. The effectively filed date of Ming’s application is January
 7, 2020, which is before Acme's filing date. Therefore, Ming’s PGPub is potential
 prior art under 35 U.S.C. 102(a)(2) . However,
 Ming’s PGPub is not potential prior art under 35 U.S.C.
 102(a)(1) because it published after Acme's filing date. The
 examiner should reject the claim to X under 35 U.S.C.
 102(a)(2) as being anticipated by Ming’s PGPub. At the time of
 the rejection, the examiner has no information about Ali's interaction with Ming. 
 

 In the reply to the Office action, Acme's attorney
 files a declaration under 37 CFR 1.130(a) signed by Ali to
 show that Ming's disclosure of X is not prior art because Ming learned about X from
 Ali. The declaration from Ali explains the circumstances under which Ali privately
 told Ming about X. Ali's declaration does not state that Ali is the inventor of
 X.
 

 The examiner should maintain the rejection under
 35
 U.S.C. 102(a)(2) because the record fails to establish that Ali
 invented X. Specifically, Ali's 37 CFR 1.130(a) declaration does
 not state that Ali invented X, and there is also no inventor's oath or declaration
 under 37 CFR
 1.63 of record to establish that Ali invented X. Thus, although
 Ali told Ming about X, it is not clearly established on the record that Al invented
 X. In order to establish that the exception under 35 U.S.C.
 102(b)(2)(A) applies and overcome the rejection, it is
 necessary to establish that Ali invented X. Acme's attorney could do that by
 submitting either a new declaration under 37 CFR 1.130(a) which states that
 Ali invented X or an inventor's oath or declaration under 37 CFR 1.63 
 signed by Ali. 
 

 Note that, in this example, determining the grace
 period is not needed because the grace period is only relevant to potential prior art
 as of a public availability date. In other words, the grace period is only relevant
 when there is potential prior art under 35 U.S.C. 102(a)(1) . In this
 example, Ming's PGPub was not publicly available until after Acme Corp. filed the
 application claiming X. Therefore, Ming’s PGPub was not prior art under
 35
 U.S.C. 102(a)(1) and no exceptions involving the grace period
 can possibly apply.
 

 

 Example 4 Similar to Example 3, on March 16, 2021, an attorney
 for Acme Corp. files a U.S. patent application claiming subject matter X. In contrast
 to Example 3, an inventor's oath or declaration under 37 CFR 1.63 
 signed by Ali is with the application. The examiner finds a U.S. patent to Gopal that
 issued on November 10, 2020 and discloses but does not claim subject matter X.
 Gopal’s patent is potential prior art under 35 U.S.C.
 102(a)(1) because the issue date of Gopal’s patent is before
 Acme's filing date and falls within the grace period. Accordingly, it is possible for
 an exception under 35 U.S.C. 102(b)(1)(A) to apply.
 In addition, the effectively filed date of Gopal’s application is also before Acme's
 filing date, so Gopal’s patent is potential prior art under 35 U.S.C.
 102(a)(2) as well. 
 

 Similar to example 2, it is appropriate for the
 examiner to reject the claims to X as anticipated under both sections of
 35
 U.S.C. 102(a) because the reference is a U.S. patent document
 having a public availability date (in this case, an issue date) that is within the
 grace period. The examiner should be aware that it is possible for the applicant to
 invoke a prior art exception under 35 U.S.C. 102(b)(1)(A) and show
 that Gopal’s patent is not prior art under 35 U.S.C.
 102(a)(1) but Gopal’s patent still remains available as prior
 art under 35 U.S.C. 102(a)(2) . Therefore, the examiner should make
 anticipation rejections under both 35 U.S.C. 102(a)(1) and
 35
 U.S.C. 102(a)(2) in accordance with compact prosecution
 guidance. At the time of the rejection, the examiner has no information about Ali's
 interaction with Gopal. 
 

 In reply to the Office action, Acme's attorney files
 a 37 CFR
 1.130(a) declaration signed by Gopal averring that Ali told him
 about subject matter X as disclosed in Gopal’s patent. In the reply, Acme's attorney
 also calls the examiner's attention to the fact that an inventor's oath or
 declaration signed by Ali is already of record. Note that this example is similar to
 example 3, but here Gopal signs the 37 CFR 1.130(a) declaration
 rather than Ali. 
 

 The examiner should withdraw the rejections under
 both 35
 U.S.C. 102(a)(1) and 102(a)(2) based on the Gopal patent because the evidence of
 record establishes that the disclosure of X in Gopal’s patent is attributable to Ali.
 In other words, there is evidence of record that Ali invented X and Gopal’s
 disclosure originated with Ali. In view of Gopal’s 37 CFR 1.130(a) 
 declaration, it is clear that Gopal did not invent X because the record shows that
 Gopal learned about it from Ali. Furthermore, there is an inventor's oath or
 declaration under 37 CFR 1.63 , signed by Ali, of
 record in the application file. The above evidence shows that Ali is an inventor of
 X. 
 

 Note that, in this example, the fact that Gopal’s
 patent did not claim X eliminates the possibility of derivation. If Gopal’s patent
 did claim X, then derivation issues may be present. The PTAB will consider
 instituting a derivation proceeding when a patent applicant submits a petition under
 37 CFR
 42.402 alleging derivation by an earlier applicant or
 patentee.
 

 

 

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

 AIA 35
 U.S.C. 102(b)(1)(B) provides that a grace period disclosure shall
 not be prior art to a claimed invention under AIA 35 U.S.C.
 102(a)(1) if subject matter disclosed had, before such disclosure,
 been publicly disclosed by the inventor or a joint inventor. Similarly,
 AIA 35
 U.S.C. 102(b)(2)(B) provides that a disclosure shall not be prior
 art to a claimed invention under AIA 35 U.S.C. 102(a)(2) if the
 subject matter disclosed had, before such subject matter was effectively filed under
 AIA 35
 U.S.C. 102(a)(2) , been publicly disclosed by the inventor or a
 joint inventor. An applicant may show that the subject matter disclosed had been
 publicly disclosed by the inventor or a joint inventor before the disclosure or
 effective filing date of the subject matter on which the rejection was based by way of
 an affidavit or declaration under 37 CFR 1.130(b) (an affidavit or
 declaration of prior public disclosure). Specifically, the affidavit or declaration must
 identify the subject matter publicly disclosed and establish the date and content of
 their earlier public disclosure. If the earlier public disclosure is a printed
 publication, the affidavit or declaration must be accompanied by a copy of the printed
 publication in accordance with 37 CFR 1.130(b)(1) . If the earlier
 disclosure is not a printed publication, the affidavit or declaration must describe the
 earlier disclosure with sufficient detail and particularity to determine that the
 earlier disclosure is a public disclosure of the subject matter, as required by
 37 CFR
 1.130(b)(2) .
 

 The manner of disclosure of subject matter referenced in
 an affidavit or declaration under 37 CFR 1.130(b)(2) is not critical.
 Just as the prior art provision of AIA 35 U.S.C. 102(a)(1) encompasses
 any disclosure that renders a claimed invention “available to the public,” any manner of
 disclosure may be evidenced in an affidavit or declaration under 37 CFR 1.130(b) .
 That is, when using an affidavit or declaration under 37 CFR 1.130(b) to
 except an intervening disclosure as prior art based on a prior public disclosure by an
 inventor or a joint inventor, it is not necessary for the subject matter to have been
 disclosed in the same manner or using the same words. For example, the inventor or a
 joint inventor may have publicly disclosed the subject matter in question via a slide
 presentation at a scientific meeting, while the intervening disclosure of the subject
 matter may have been made in a journal article. This difference in the manner of
 disclosure or differences in the words used to describe the subject matter will not
 preclude the inventor from submitting an affidavit or declaration under
 37 CFR
 1.130(b) to except subject matter in the intervening disclosure
 (e.g., a journal article) as prior art.
 

 The following examples are provided for illustration
 only:
 

 Example 1 On May 18, 2021, an attorney for Acme Corp. files a
 U.S. patent application claiming subject matter X. An inventor’s oath or declaration
 under 37 CFR
 1.63 signed by Maria is also filed with the application. During
 the prior art search, the examiner finds a journal article authored by Keiko that
 published on March 16, 2021 and discloses the same subject matter X. The journal
 article by Keiko is publicly available before Acme's filing date. Accordingly, the
 examiner should reject the claims to X as being anticipated by Keiko under
 35
 U.S.C. 102(a)(1) . At the time of the rejection, the examiner
 has no information about Maria’s prior public disclosure. 
 

 In reply to the Office action, Acme’s attorney files
 a 37 CFR
 1.130(b) declaration signed by Maria averring that she had
 disclosed X at a virtual conference on June 7, 2020, which is prior to the public
 availability date of Keiko’s disclosure of X in the journal article. The reply also
 includes a copy of Maria’s presentation slides at the virtual conference. In
 addition, the reply calls the examiner's attention to the inventor's oath or
 declaration signed by Maria that is already of record. 
 

 The examiner should withdraw the anticipation
 rejection under 35 U.S.C. 102(a)(1) because the
 evidence of record establishes that Maria had made a prior public disclosure of the
 same subject matter disclosed in Keiko’s journal article. It is important to note
 that if a prior public disclosure is made by a printed publication, 37 CFR
 1.130(b)(1) requires that a copy be included with the
 declaration. Acme has complied with this requirement by supplying a copy of the
 conference presentation slides. Furthermore, the application file includes an
 inventor's oath or declaration under 37 CFR 1.63 signed by Maria.
 Therefore, the record contains sufficient evidence that Maria is the inventor of X.
 Finally, it is clear that Maria disclosed the same subject matter as Keiko because
 both disclosed X.
 

 

 Example 2 This example has the same facts as example 1 above,
 but in this example, the journal article to Keiko discloses not only X, but also Y
 and a genus that encompasses both X and Y. As in example 1, the examiner should make
 an anticipation rejection under 35 U.S.C. 102(a)(1) for the
 claims to X. 
 

 At the time of the rejection, the examiner has no
 information about Maria’s prior public disclosure and cannot predict how the
 applicant will respond. Thus, in order to conclude prosecution in a timely manner and
 avoid the possibility of an additional non-final action, the examiner should consider
 whether Acme's claim to X can be rejected as obvious over Keiko’s disclosure of Y.
 The disclosure of Y by Keiko is still available as prior art because Maria’s
 disclosure of X is not the same subject matter as Keiko’s disclosure of Y. If the
 applicant shows that the Keiko’s disclosure of X and the genus that encompasses X and
 Y is not prior art in response to the rejection, the examiner could maintain the
 obviousness rejection based on Keiko’s disclosure of Y and make the next Office
 action final, unless it is not appropriate for other reasons. Stated another way, the
 second Office action cannot be made final if a new obviousness rejection based on
 Keiko’s disclosure of Y is made in response to the filing of the 37 CFR 1.130(b) 
 declaration, assuming Acme did not amend the claims. 
 

 Note that Maria’s prior public disclosure of X is
 considered to be the same subject matter as Keiko’s later‐disclosed genus that
 includes X, in the same sense that a species can be said to anticipate a genus. In
 other words, the inventor is not penalized just because a third party sees the
 inventor's disclosure and then re‐publicizes it in a more generalized fashion. 
 

 

 

 
 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 [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) and 102(b)(2)(A) provide similar treatment for disclosures of subject
 matter by another who obtained the subject matter disclosed directly or indirectly from
 the inventor or a joint inventor. Specifically, AIA 35 U.S.C.
 102(b)(1)(A) provides that a grace period disclosure shall not be
 prior art to a claimed invention under AIA 35 U.S.C. 102(a)(1) if the
 disclosure was made by another who obtained the subject matter disclosed directly or
 indirectly from the inventor or a joint inventor, and AIA 35 U.S.C.
 102(b)(2)(A) provides that a disclosure shall not be prior art to
 a claimed invention under AIA 35 U.S.C. 102(a)(2) if the
 subject matter disclosed was obtained directly or indirectly from the inventor or a
 joint inventor.
 

 In addition, AIA 35 U.S.C.
 102(b)(1)(B) and 102(b)(2)(B) respectively provide
 that a grace period disclosure under AIA 35 U.S.C. 102(a)(1) , and that a
 disclosure under AIA 35 U.S.C. 102(a)(2) shall not be
 prior art to a claimed invention, if the subject matter disclosed had, before such grace
 period disclosure was made under AIA 35 U.S.C. 102(a)(1) or before
 such subject matter was effectively filed according to 35 U.S.C.
 102(a)(2) , been publicly disclosed by another who obtained the
 subject matter disclosed directly or indirectly from the inventor or a joint inventor.
 An applicant may also show that another obtained the subject matter disclosed directly
 or indirectly from the inventor or a joint inventor in an affidavit or declaration under
 37 CFR
 1.130(b) . Thus, an applicant may establish a prior public
 disclosure by another if the applicant can establish that subject matter disclosed
 originated with the inventor or a joint inventor and that the subject matter was
 communicated by the inventor or a joint inventor, directly or indirectly. Any
 documentation which provides evidence of the communication of the subject matter by the
 inventor or a joint inventor to the entity that made the disclosure of the subject
 matter directly or indirectly, such as by an assignee of the inventor, should accompany
 the affidavit or declaration.
 

 

 
 2155.04 Enablement [R-11.2013]

 [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 .] 

 An affidavit or declaration under 37 CFR 1.130(a) or
 (b) need not demonstrate that the disclosure by the inventor, a
 joint inventor, or another who obtained the subject matter disclosed directly or
 indirectly from an inventor or a joint inventor was an “enabling” disclosure of the
 subject matter within the meaning of 35 U.S.C. 112(a) . Rather, an
 affidavit or declaration under 37 CFR 1.130 must show that: (1) the
 disclosure in question was made by the inventor or a joint inventor, or the subject
 matter disclosed was obtained directly or indirectly from the inventor or a joint
 inventor ( 37 CFR
 1.130(a) ); or (2) the subject matter disclosed had, before such
 disclosure was made or before such subject matter was effectively filed, been publicly
 disclosed by the inventor or a joint inventor or another who obtained the subject matter
 disclosed directly or indirectly from the inventor or a joint inventor
 ( 37 CFR
 1.130(b) ). 
 

 

 
 2155.05 Who May File an Affidavit or Declaration Under 37
 CFR 1.130 [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 .] 

 In accordance with 37 CFR 1.130 , the applicant or
 patent owner may submit an affidavit or declaration. When an assignee, obligated
 assignee, or person showing sufficient proprietary interest is the applicant under
 35 U.S.C.
 118 rather than the inventor, the applicant or their
 representative must be the party that files the affidavit or declaration under
 37 CFR
 1.130 even if the inventor or any party with knowledge of the
 relevant facts signed the affidavit or declaration. In other words, the affidavit or
 declaration must be filed by a party having authority to take action in the application.
 Authority to file papers in an application generally does not lie with the inventor if
 the inventor is not the applicant. See MPEP §
 717.01(c) .
 

 

 
 2155.06 Situations in Which an Affidavit or Declaration
 Is Not Available [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 .] 

 The provisions of 37 CFR 1.130 are not available if
 the rejection is based upon a disclosure made more than one year before the effective
 filing date of the claimed invention. A disclosure made more than one year before the
 effective filing date of a claimed invention is prior art under AIA 35 U.S.C.
 102(a)(1) that cannot be excepted as prior art under
 AIA 35
 U.S.C. 102(b)(1) .
 

 Additionally, the provisions of 37 CFR 1.130 may
 not be available if the rejection is based upon a U.S. patent or U.S. patent application
 publication naming another inventor if: (1) the patent or pending application claims an
 invention that is the same or substantially the same as the applicant's or patent
 owner's claimed invention; and (2) the affidavit or declaration contends that the
 inventor or a joint inventor named in the U.S. patent or U.S. patent application
 publication derived the claimed invention from the inventor or a joint inventor named in
 the application or patent. The provisions of 37 CFR 1.130 are not available if an
 affidavit or declaration would result in the Office issuing or confirming two patents
 containing patentably indistinct claims to two different parties. See In re
 Deckler, 977 F.2d 1449, 1451-52, 24 USPQ2d 1448, 1449 (Fed. Cir. 1992)
 ( 35 U.S.C.
 102 , 103 , and 135 
 “clearly contemplate—where different inventive entities are concerned—only one patent
 should issue for inventions which are either identical to or not patentably distinct
 from each other”) (quoting Aelony v. Arni, 547 F.2d 566, 570, 192
 USPQ 486, 490 (CCPA 1977)). In this situation, an applicant or patent owner may file a
 petition for a derivation proceeding pursuant to 37 CFR
 42.401 et seq. ( 37 CFR 1.130(c) ).
 

 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 2101-2102-[Reserved] 

 2103-Patent Examination Process 

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

 
 

 2105-Patent Eligible Subject Matter — Living Subject Matter 

 2106-Patent Subject Matter Eligibility 
 2106.01-[Reserved] 

 2106.02-[Reserved] 

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

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

 2106.04(a)(2)-Abstract Idea Groupings 

 2106.04(a)(3)-Tentative Abstract Ideas 

 
 

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

 2106.04(c)-The Markedly Different Characteristics Analysis 

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

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

 
 

 
 

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

 2106.05(b)-Particular Machine 

 2106.05(c)-Particular Transformation 

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

 2106.05(e)-Other Meaningful Limitations 

 2106.05(f)-Mere Instructions To Apply An Exception 

 2106.05(g)-Insignificant Extra-Solution Activity 

 2106.05(h)-Field of Use and Technological Environment 

 
 

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

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

 
 

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

 
 

 2106.07(b)-Evaluating Applicant’s Response 

 2106.07(c)-Clarifying the Record 

 
 

 
 

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

 2107.02-Procedural Considerations Related to Rejections for Lack of Utility 

 2107.03-Special Considerations for Asserted Therapeutic or Pharmacological Utilities 

 
 

 2108-[Reserved] 

 2109-Inventorship 

 2109.01-Joint Inventorship 

 2110-[Reserved] 

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

 2111.02-Effect of Preamble 

 2111.03-Transitional Phrases 

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

 2111.05-Functional and Nonfunctional Descriptive Material 

 
 

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

 2112.02-Process Claims 

 
 

 2113-Product-by-Process Claims 

 2114-Apparatus and Article Claims — Functional Language 

 2115-Material or Article Worked Upon by Apparatus 

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

 
 

 2117-Markush Claims 

 2118-2119-[Reserved] 

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

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

 
 

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

 2121.02-Compounds and Compositions — What Constitutes Enabling Prior Art 

 2121.03-Plant Genetics — What Constitutes Enabling Prior Art 

 2121.04-Apparatus and Articles — What Constitutes Enabling Prior Art 

 
 

 2122-Discussion of Utility in the Prior Art 

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

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

 
 

 2125-Drawings as Prior Art 

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

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

 
 

 2127-Domestic and Foreign Patent Applications as Prior Art 

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

 2128.02-Date Publication Is Available as a Reference 

 
 

 2129-Admissions as Prior Art 

 2130-[Reserved] 

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

 2131.02-Genus-Species Situations 

 2131.03-Anticipation of Ranges 

 2131.04-Secondary Considerations 

 2131.05-Nonanalogous or Disparaging Prior Art 

 
 

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

 
 

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

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

 
 

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

 2133.03(b)-“On Sale” 

 2133.03(c)-The “Invention” 

 2133.03(d)-“In This Country” 

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

 2133.03(e)(2)-Intent 

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

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

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

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

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

 
 

 
 

 
 

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

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

 
 

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

 2136.02-Content of the Prior Art Available Against the Claims 

 2136.03-Critical Reference Date 

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

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

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

 
 

 
 

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

 2137.02-[Reserved] 

 
 

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

 2138.02-“The Invention Was Made in This Country” 

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

 2138.04-“Conception” 

 2138.05-“Reduction to Practice” 

 2138.06-“Reasonable Diligence” 

 
 

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

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

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

 
 

 2140-[Reserved] 

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

 
 

 2141.02-Differences Between Prior Art and Claimed Invention 

 2141.03-Level of Ordinary Skill in the Art 

 
 

 2142-Legal Concept of Prima Facie Obviousness 

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

 2143.02-Reasonable Expectation of Success Is Required 

 2143.03-All Claim Limitations Must Be Considered 

 
 

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

 2144.02-Reliance on Scientific Theory 

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

 2144.04-Legal Precedent as Source of Supporting Rationale 

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

 2144.06-Art Recognized Equivalence for the Same Purpose 

 2144.07-Art Recognized Suitability for an Intended Purpose 

 2144.08-Obviousness of Species When Prior Art Teaches Genus 

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

 
 

 2145-Consideration of Applicant’s Rebuttal Arguments and Evidence 

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

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

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

 
 

 
 

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

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

 2149-[Reserved] 

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

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

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

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

 2152.02(b)-Described in a Printed Publication 

 2152.02(c)-In Public Use 

 2152.02(d)-On Sale 

 2152.02(e)-Otherwise Available to the Public 

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

 
 

 2152.03-Admissions 

 2152.04-The Meaning of “Disclosure” 

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

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

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

 
 

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

 2153.01(b)-[Reserved] 

 
 

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

 
 

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

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

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

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

 
 

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

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

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

 
 

 
 

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

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

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

 2155.04-Enablement 

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

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

 
 

 2156-Joint Research Agreements 

 2157-Improper Naming of Inventors 

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

 
 

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

 2159.02-Applications Filed on or After March 16, 2013 

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

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

 
 

 2160-[Reserved] 

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

 
 

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

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

 2163.02-Standard for Determining Compliance With the Written Description Requirement 

 2163.03-Typical Circumstances Where Adequate Written Description Issue Arises 

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

 2163.05-Changes to the Scope of Claims 

 2163.06-Relationship of Written Description Requirement to New Matter 

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

 2163.07(b)-Incorporation by Reference 

 
 

 
 

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

 2164.01(b)-How to Make the Claimed Invention 

 2164.01(c)-How to Use the Claimed Invention 

 
 

 2164.02-Working and Prophetic Examples 

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

 2164.04-Burden on the Examiner Under the Enablement Requirement 

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

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

 
 

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

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

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

 
 

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

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

 2164.08(b)-Inoperative Subject Matter 

 2164.08(c)-Critical Feature Not Claimed 

 
 

 
 

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

 2165.02-Best Mode Requirement Compared to Enablement Requirement 

 2165.03-Requirements for Rejection for Lack of Best Mode 

 2165.04-Examples of Evidence of Concealment 

 
 

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

 2167-2170-[Reserved] 

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

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

 
 

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

 2173.02-Determining Whether Claim Language is Definite 

 2173.03-Correspondence Between Specification and Claims 

 2173.04-Breadth Is Not Indefiniteness 

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

 2173.05(b)-Relative Terminology 

 2173.05(c)-Numerical Ranges and Amounts Limitations 

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

 2173.05(e)-Lack of Antecedent Basis 

 2173.05(f)-Reference to Limitations in Another Claim 

 2173.05(g)-Functional Limitations 

 2173.05(h)-Alternative Limitations 

 2173.05(i)-Negative Limitations 

 2173.05(j)-Old Combination 

 2173.05(k)-Aggregation 

 2173.05(l)-[Reserved] 

 2173.05(m)-Prolix 

 2173.05(n)-Multiplicity 

 2173.05(o)-Double Inclusion 

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

 2173.05(q)-“Use” Claims 

 2173.05(r)-Omnibus Claim 

 2173.05(s)-Reference to Figures or Tables 

 2173.05(t)-Chemical Formula 

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

 2173.05(v)-Mere Function of Machine 

 
 

 2173.06-Practice Compact Prosecution 

 
 

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

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

 2176-2180-[Reserved] 

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

 2182-Search and Identification of the Prior Art 

 2183-Making a Prima Facie Case of Equivalence 

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

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

 2186-Relationship to the Doctrine of Equivalents 

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

 2188-2189-[Reserved] 

 2190-Prosecution Laches and Res Judicata 

 

 

 
 

 
 
 

 
 

 

 
 
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 03/09/2026 20:49:33