MPEP § 2103 — MPEP § 2103
Current through: 2022-07-01

2103-Patent Examination Process 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

 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 2103 
 

 
 
 
 
 
 2103 Patent Examination Process [R-07.2022]
 I. DETERMINE WHAT INVENTION IS SOUGHT TO BE PATENTED It is essential that patent applicants obtain a prompt yet
 complete examination of their applications. Under the principles of compact prosecution,
 each claim should be reviewed for compliance with every statutory requirement for
 patentability in the initial review of the application, even if one or more claims are
 found to be deficient with respect to some statutory requirement. Thus, examiners should
 state all reasons and bases for rejecting claims in the first Office action.
 Deficiencies should be explained clearly, particularly when they serve as a basis for a
 rejection. Whenever practicable, examiners and patent reexamination specialists should
 indicate how rejections may be overcome and how problems may be resolved. Where a
 rejection not based on prior art is proper (lack of adequate written description,
 enablement, or utility, etc.) such rejection should be stated with a full development of
 the reasons rather than by a mere conclusion. A failure to follow this approach can lead
 to unnecessary delays in the prosecution of the application.
 

 The examination of reissue applications is covered in
 MPEP Chapter
 1400 , reexamination proceedings are covered in
 MPEP Chapters
 2200 ( ex parte ) and 2600 ( inter
 partes ), and supplemental examination is covered in MPEP Chapter
 2800 . 
 

 Prior to focusing on specific statutory requirements,
 examiners must begin examination by determining what, precisely, the inventor or joint
 inventor has invented and is seeking to patent, and how the claims relate to and define
 that invention. Examiners will review the complete specification, including the detailed
 description of the invention, any specific embodiments that have been disclosed, the
 claims and any specific, substantial, and credible utilities that have been asserted for
 the invention. 
 

 After obtaining an understanding of the invention, the
 examiner will conduct a search of the prior art and determine whether the invention as
 claimed complies with all statutory requirements. 
 

 A. Identify and Understand Any Utility for the Invention The claimed invention as a whole must be useful. The
 purpose of this requirement is to limit patent protection to inventions that possess
 a certain level of “real world” value, as opposed to subject matter that represents
 nothing more than an idea or concept, or is simply a starting point for future
 investigation or research (Brenner v. Manson, 383 U.S. 519,
 528-36, 148 USPQ 689, 693-96 (1966); In re Fisher, 421 F.3d 1365,
 76 USPQ2d 1225 (Fed. Cir. 2005); In re Ziegler, 992 F.2d 1197,
 1200-03, 26 USPQ2d 1600, 1603-06 (Fed. Cir. 1993)).
 

 Examiners should review the application to identify any
 asserted utility. The applicant or the inventor is in the best position to explain
 why an invention is useful. Accordingly, a complete disclosure should contain some
 indication of the practical application for the claimed invention, i.e., why the
 applicant asserts the claimed invention is useful. Such a statement will usually
 explain the purpose of the invention or how the invention may be used (e.g., a
 compound is believed to be useful in the treatment of a particular disorder). Note
 that the concept of a “practical application” in the evaluation of utility is
 different from the concept of whether a judicial exception is integrated into a
 “practical application” in the evaluation of subject matter eligibility. Regardless
 of the form of statement of utility, it must enable one ordinarily skilled in the art
 to understand why the applicant asserts the claimed invention is useful. See
 MPEP §
 2106 for subject matter eligibility guidelines and
 MPEP §
 2107 for utility examination guidelines. The application
 may describe more than one utility and practical application, but only one is
 necessary. Alternatively, an applicant may rely on the contemporaneous art to provide
 that the claimed invention has a well-established utility.
 

 B. Review the Detailed Disclosure and Specific Embodiments of the Invention
 To Understand What the Applicant Has Asserted as the Invention The written description will provide the clearest
 explanation of the invention, by exemplifying the invention, explaining how it
 relates to the prior art and explaining the relative significance of various features
 of the invention. Accordingly, examiners should continue their evaluation by:
 

 
 (A) determining the function of the invention,
 that is, what the invention does when used as disclosed (e.g., the
 functionality of a programmed computer); and
 

 (B) determining the features necessary to
 accomplish at least one asserted practical application.
 

 
 Patent applicants can assist the USPTO by preparing
 applications that clearly set forth these aspects of an invention.
 

 C. Review the Claims The claims define the property rights provided by a
 patent, and thus require careful scrutiny. The goal of claim analysis is to identify
 the boundaries of the protection sought by the applicant and to understand how the
 claims relate to and define what the applicant has indicated is the invention.
 Examiners must first determine the scope of a claim by thoroughly analyzing the
 language of the claim before determining if the claim complies with each statutory
 requirement for patentability. See In re Hiniker Co., 150 F.3d
 1362, 1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998) (“[T]he name of the game is the
 claim.”). 
 

 Examiners should begin claim analysis by identifying
 and evaluating each claim limitation. For processes, the claim limitations will
 define steps or acts to be performed. For products, the claim limitations will define
 discrete physical structures or materials. Product claims are claims that are
 directed to either machines, manufactures or compositions of matter. 
 

 Examiners should then correlate each claim limitation
 to all portions of the disclosure that describe the claim limitation. This is to be
 done in all cases, regardless of whether the claimed invention is defined using
 means- (or step-) plus- function language. The correlation step will ensure that
 examiners correctly interpret each claim limitation in light of the specification. 
 

 The subject matter of a properly construed claim is
 defined by the terms that limit the scope of the claim when given their broadest
 reasonable interpretation. It is this subject matter that must be examined. As a
 general matter, grammar and the plain meaning of terms as understood by one having
 ordinary skill in the art used in a claim will dictate whether, and to what extent,
 the language limits the claim scope. See MPEP § 2111.01 for more information
 on the plain meaning of claim language. Language that suggests or makes a feature or
 step optional but does not require that feature or step does not limit the scope of a
 claim under the broadest reasonable claim interpretation. The following types of
 claim language may raise a question as to its limiting effect:
 

 
 (A) statements of intended use or field of use,
 including statements of purpose or intended use in the preamble,
 

 (B) “adapted to” or “adapted for” clauses,

 (C) "wherein" or "whereby" clauses,

 (D) contingent limitations, 

 (E) printed matter, or

 (F) terms with associated functional
 language.
 

 
 This list of examples is not intended to be exhaustive.
 The determination of whether particular language is a limitation in a claim depends
 on the specific facts of the case. See, e.g., Griffin v. Bertina, 
 285 F.3d 1029, 1034, 62 USPQ2d 1431 (Fed. Cir. 2002)(finding that a “wherein” clause
 limited a process claim where the clause gave “meaning and purpose to the
 manipulative steps”). For more information about these types of claim language and
 how to determine whether they have a limiting effect on claim scope, see
 MPEP §§
 2111.02 through 
 2111.05 .
 

 Examiners are to give claims their broadest
 reasonable interpretation in light of the supporting disclosure. See
 MPEP §
 2111 . Disclosure may be express, implicit, or inherent.
 Examiners are to give claimed means- (or step-) plus- function limitations their
 broadest reasonable interpretation consistent with all corresponding structures (or
 materials or acts) described in the specification and their equivalents. See
 In re Aoyama, 656 F.3d 1293, 1297, 99 USPQ2d 1936, 1939 (Fed.
 Cir. 2011). Further guidance in interpreting the scope of equivalents is provided in
 MPEP §§
 2181 through 2186 . 
 

 While it is appropriate to use the specification to
 determine what applicant intends a term to mean, a positive limitation from the
 specification cannot be read into a claim that does not itself impose that
 limitation. See MPEP §
 2111.01 , subsection II. As explained in
 MPEP §
 2111 , giving a claim its broadest reasonable interpretation
 during prosecution will reduce the possibility that the claim, when issued, will be
 interpreted more broadly than is justified.
 

 Finally, when evaluating the scope of a claim, every
 limitation in the claim must be considered. Examiners may not dissect a claimed
 invention into discrete elements and then evaluate the elements in isolation.
 Instead, the claim as a whole must be considered. See, e.g., Diamond v.
 Diehr, 450 U.S. 175, 188-89, 209 USPQ 1, 9 (1981) (“In determining the
 eligibility of respondents’ claimed process for patent protection under
 §
 101 , their claims must be considered as a whole. It is
 inappropriate to dissect the claims into old and new elements and then to ignore the
 presence of the old elements in the analysis. This is particularly true in a process
 claim because a new combination of steps in a process may be patentable even though
 all the constituents of the combination were well known and in common use before the
 combination was made.”). 
 

 II. CONDUCT A THOROUGH SEARCH OF THE PRIOR ART Prior to evaluating the claimed invention for
 patentability, examiners are expected to conduct a thorough search of the prior art. See
 MPEP §§
 904 through 904.03 for more information about how
 to conduct a search. In many cases, the result of such a search will contribute to
 examiners' understanding of the invention. Both claimed and unclaimed aspects of the
 invention described in the specification should be searched if there is a reasonable
 expectation that the unclaimed aspects may be later claimed. A search must take into
 account any structure or material described in the specification and its equivalents
 which correspond to the claimed means- (or step-) plus- function limitation, in
 accordance with 35 U.S.C. 112(f) and
 MPEP §
 2181 through MPEP § 2186 .
 

 III. DETERMINE WHETHER THE CLAIMED INVENTION COMPLIES WITH 35 U.S.C. 101 
 

 A. Consider the Breadth of 35 U.S.C. 101 Under Controlling Law Section
 101 of title 35, United States Code, provides:
 

 
 Whoever invents or discovers any new and useful
 process, machine, manufacture, or composition of matter, or any new and useful
 improvement thereof, may obtain a patent therefor, subject to the conditions and
 requirements of this title.
 

 
 35 U.S.C.
 101 has been interpreted as imposing four requirements: (i)
 only one patent may be obtained for an invention; (ii) the inventor(s) must be
 identified in an application filed on or after September 16, 2012 or must be the
 applicant in applications filed before September 16, 2012; (iii) the claimed
 invention must be eligible for patenting; and (iv) the claimed invention must be
 useful (have utility). 
 

 See MPEP §
 2104 for a discussion of the four requirements,
 MPEP §
 2106 for a discussion of eligibility, and
 MPEP §
 2107 for the utility examination guidelines.
 

 The patent eligibility inquiry under 35 U.S.C. 101 
 is a threshold inquiry. Even if a claimed invention qualifies as eligible subject
 matter under 35
 U.S.C. 101 , it must also satisfy the other conditions and
 requirements of the patent laws, including the requirements for novelty
 ( 35 U.S.C.
 102 ), nonobviousness ( 35 U.S.C. 103 ), and adequate
 description and definite claiming ( 35 U.S.C. 112 ). Bilski
 v. Kappos, 561 U.S. 593, 602, 95 USPQ2d 1001, 1006 (2010). Therefore,
 examiners should avoid focusing on only issues of patent-eligibility under
 35 U.S.C.
 101 to the detriment of considering an application for
 compliance with the requirements of 35 U.S.C. 102 , 35 U.S.C. 103 ,
 and 35 U.S.C.
 112 , and should avoid treating an application solely on the
 basis of patent-eligibility under 35 U.S.C. 101 except in the most
 extreme cases. 
 

 IV. EVALUATE APPLICATION FOR COMPLIANCE WITH 35 U.S.C. 112 
 

 A. Determine Whether the Claimed Invention Complies with 35 U.S.C. 112(b)
 or Pre-AIA 35 U.S.C. 112, Second Paragraph Requirements 35 U.S.C.
 112(b) contains two separate and distinct requirements: (A)
 that the claim(s) set forth the subject matter the inventor or a joint inventor
 regards as the invention, and (B) that the claim(s) particularly point out and
 distinctly claim the invention. An application will be deficient under the first
 requirement of 35 U.S.C. 112(b) when evidence
 outside the application as filed, e.g., admissions, shows that the inventor or a
 joint inventor regards the invention to be different from what is claimed (see
 MPEP §
 2171 - MPEP § 2172.01 ). 
 

 An application fails to comply with the second
 requirement of 35 U.S.C. 112(b) when the claims
 do not set out and define the invention with a reasonable degree of precision and
 particularity. In this regard, the definiteness of the language must be analyzed, not
 in a vacuum, but always in light of the teachings of the disclosure as it would be
 interpreted by one of ordinary skill in the art. Applicant’s claims, interpreted in
 light of the disclosure, must reasonably apprise a person of ordinary skill in the
 art of the invention. 
 

 The scope of a limitation that invokes
 35
 U.S.C. 112(f) is defined as the corresponding structure or
 material set forth in the written description and equivalents thereof that perform
 the claimed function. See MPEP § 2181 through
 MPEP §
 2186 . See MPEP § 2173 et seq. for a discussion of a variety of issues pertaining to the
 35
 U.S.C. 112(b) requirement that the claims particularly point
 out and distinctly claim the invention. 
 

 B. Determine Whether the Claimed Invention Complies with 35 U.S.C. 112(a)
 or 35 U.S.C. 112, First Paragraph Requirements 35 U.S.C.
 112(a) contains three separate and distinct requirements:
 

 
 (A) adequate written description, 

 (B) enablement, and 

 (C) best mode.

 1. Adequate Written Description For the written description requirement, an
 applicant’s specification must reasonably convey to those skilled in the art that
 the inventor was in possession of the claimed invention as of the date of
 invention. See MPEP
 § 2163 for further guidance with respect to the
 evaluation of a patent application for compliance with the written description
 requirement.
 

 2. Enabling Disclosure An applicant’s specification must enable a person
 skilled in the art to make and use the claimed invention without undue
 experimentation. The fact that experimentation is complex, however, will not make
 it undue if a person of skill in the art routinely engages in such
 experimentation. 
 

 See MPEP § 2164 et seq. for detailed guidance with regard to the enablement
 requirement of 35 U.S.C. 112(a) .
 

 3. Best Mode Determining compliance with the best mode
 requirement requires a two-prong inquiry:
 

 
 (1) at the time the application was filed, did
 the inventor possess a best mode for practicing the invention; and
 

 (2) if the inventor did possess a best mode,
 does the written description disclose the best mode in such a manner that a
 person of ordinary skill in the art could practice the best mode.
 

 
 See MPEP § 2165 et seq. for additional guidance. Deficiencies related to
 disclosure of the best mode for carrying out the claimed invention are not usually
 encountered during examination of an application because evidence to support such
 a deficiency is seldom in the record. Fonar Corp. v. General Elec.
 Co., 107 F.3d 1543, 1548-49, 41 USPQ2d 1801, 1804-05 (Fed. Cir.
 1997). 
 

 V. DETERMINE WHETHER THE CLAIMED INVENTION COMPLIES WITH 35 U.S.C. 102 AND
 103 Reviewing a claimed invention for compliance with
 35 U.S.C.
 102 and 35 U.S.C.103 begins with a
 comparison of the claimed subject matter to what is known in the prior art. See
 MPEP §§
 2131 - 2146 and MPEP §§
 2150 - 2159 for specific guidance on
 patentability determinations under 35 U.S.C. 102 and 35 U.S.C. 103 . If
 no differences are found between the claimed invention and the prior art, then the
 claimed invention lacks novelty and is to be rejected by USPTO personnel under
 35 U.S.C.
 102 . Once differences are identified between the claimed invention
 and the prior art, those differences must be assessed and resolved in light of the
 knowledge possessed by a person of ordinary skill in the art. Against this backdrop, one
 must determine whether the invention would have been obvious to one of ordinary skill in
 the art. If not, the claimed invention satisfies 35 U.S.C. 103 .
 

 VI. CLEARLY COMMUNICATE FINDINGS, CONCLUSIONS AND THEIR BASES Once examiners have completed the above analyses of the
 claimed invention under all the statutory provisions, including 35 U.S.C. 101 ,
 35 U.S.C.
 112 , 35 U.S.C. 102 , and 35 U.S.C. 103 ,
 they should review all the proposed rejections and their bases to confirm that a
 prima facie case of unpatentability exists. Only then should any
 rejection be imposed in an Office action. The Office action should clearly communicate
 the findings, conclusions and reasons which support them.
 

 EXAMINERS SHOULD USE THE APPLICABLE FORM PARAGRAPHS IN
 OFFICE ACTIONS TO STATE THE BASIS FOR ANY OBJECTIONS OR REJECTIONS TO REDUCE THE CHANCE
 OF A MISUNDERSTANDING AS TO THE GROUNDS OF OBJECTION OR REJECTION. 
 

 [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 20:50:39