MPEP § 2152 — MPEP § 2152
Current through: 2022-07-01

2152-Detailed Discussion of AIA 35 U.S.C. 102(a) and (b) 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2100 

 Section 2152 
 

 
 
 
 
 
 2152 Detailed Discussion of AIA 35 U.S.C. 102(a) and
 (b) [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 .] 

 AIA 35 U.S.C.
 102(a) defines the prior art that will preclude the grant of a patent
 on a claimed invention unless an exception in AIA 35 U.S.C. 102(b) is applicable.
 Specifically, AIA 35 U.S.C. 102(a) provides that:
 

 
 [a] person shall be entitled to a patent unless—

 
 (1) the claimed invention was patented, described in a
 printed publication, or in public use, on sale, or otherwise available to the
 public before the effective filing date of the claimed invention; or
 

 (2) the claimed invention was described in a patent
 issued under section 151 , or in an application for patent published or
 deemed published under section 122(b) , in which the
 patent or application, as the case may be, names another inventor and was
 effectively filed before the effective filing date of the claimed invention.
 

 
 
 As an initial matter, Office personnel should note that the
 introductory phrase “[a] person shall be entitled to a patent unless” remains unchanged
 from the pre-AIA version of 35 U.S.C. 102 . Thus, 35 U.S.C.
 102 continues to provide that the Office bears the initial burden of
 explaining why the applicable statutory or regulatory requirements have not been met if a
 claim in an application is to be rejected. The AIA also does not change the requirement
 that whenever a claim for a patent is rejected or an objection or requirement is made, the
 Office shall notify the applicant thereof and state the reasons for such rejection,
 objection, or requirement, and provide such information and references as may be useful to
 the applicant in judging of the propriety of continuing the prosecution of the application.
 See 35 U.S.C.
 132 , 37 CFR 1.104(c) and
 MPEP §
 706 . 
 

 The categories of prior art documents and activities are set
 forth in AIA 35
 U.S.C. 102(a)(1) and the categories of prior art patent documents are
 set forth in AIA 35 U.S.C. 102(a)(2) . These documents and activities are used to
 determine whether a claimed invention is novel or nonobvious. The documents upon which a
 prior art rejection under 35 U.S.C. 102(a)(1) may be based are an
 issued patent, a published application, and a non-patent printed publication. The documents
 upon which a prior art rejection under 35 U.S.C. 102(a)(2) may be based are
 U.S. patent documents only (see discussion of U.S. patent documents in
 MPEP §
 2151 ). Evidence that the claimed invention was in public use, on
 sale, or otherwise available to the public may also be used as the basis for a prior art
 rejection under 35 U.S.C. 102(a)(1) . Note that a printed publication that does not
 have a sufficiently early publication date to itself qualify as prior art under
 AIA 35
 U.S.C. 102(a)(1) may be competent evidence of a previous public use,
 sale activity, or other availability of a claimed invention to the public where the public
 use, sale activity, or other public availability does have a sufficiently early date to
 qualify as prior art under AIA 35 U.S.C. 102(a)(1) . See
 In re Epstein, 32 F.3d 1559, 31 USPQ2d 1817 (Fed. Cir. 1994) and
 MPEP §
 2133.03(b) , subsection III.C.
 

 AIA 35 U.S.C.
 102(b) sets out exceptions to AIA 35 U.S.C.
 102(a) , in that prior art that otherwise would be included in
 AIA 35
 U.S.C. 102(a) shall not be prior art if it falls within an exception
 under AIA 35
 U.S.C. 102(b) .
 

 Exceptions to the categories of prior art defined in
 AIA 35
 U.S.C. 102(a)(1) are provided in AIA 35 U.S.C.
 102(b)(1) . Specifically, AIA 35 U.S.C.
 102(b)(1) states that “[a] disclosure made 1 year or less before the
 effective filing date of a claimed invention shall not be prior art to the claimed
 invention under subsection (a)(1) if—
 

 
 (A) the disclosure was made by the inventor or a joint
 inventor or by another who obtained the subject matter disclosed directly or
 indirectly from the inventor or a joint inventor; or
 

 (B) the subject matter disclosed had, before such
 disclosure, 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.” 
 

 
 Exceptions to the categories of prior art defined in
 AIA 35
 U.S.C. 102(a)(2) are provided in AIA 35 U.S.C.
 102(b)(2) . Specifically, AIA 35 U.S.C.
 102(b)(2) states that “[a] disclosure shall not be prior art to a
 claimed invention under subsection (a)(2) if—
 

 
 (A) the subject matter disclosed was obtained directly or
 indirectly from the inventor or a joint inventor;
 

 (B) the subject matter disclosed had, before such subject
 matter was effectively filed under subsection (a)(2), 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; or
 

 (C) the subject matter disclosed and the claimed
 invention, not later than the effective filing date of the claimed invention, were
 owned by the same person or subject to an obligation of assignment to the same
 person.” 
 

 
 Although some of the provisions of AIA 35 U.S.C.
 102(a) and (b) are similar to pre-AIA 35 U.S.C.
 102(a) , (b) , and (e) , the AIA has
 introduced a number of important changes with respect to prior art documents and activities
 (collectively, “disclosures”). First, the availability of a U.S. patent document as prior
 art to a claimed invention is measured from the effective filing date of the claimed
 invention as defined in 35 U.S.C. 100(i) , which takes into
 account both foreign priority and domestic benefit dates. Note that this differs from
 practice under pre-AIA 35
 U.S.C. 102 wherein the availability of a patent document as prior art
 is measured from either “the date of the application for patent in the United States”
 ( pre-AIA 35 U.S.C.
 102(b) ) or “the invention thereof by the applicant for patent”
 ( pre-AIA 35 U.S.C.
 102(a) and (e) ). Second, the AIA adopts a global
 view of prior art disclosures and thus does not require that a public use or sale activity
 be “in this country” to be a prior art activity. Finally, a catch-all “otherwise available
 to the public” category of prior art is added.
 

 
 2152.01 Effective Filing Date of the Claimed
 Invention [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 .] 

 Pre-AIA 35 U.S.C.
 102(a) and (e) reference patent-defeating
 activities occurring before the inventor invented the claimed invention.
 AIA 35
 U.S.C. 102(a)(1) and (a)(2) make no mention of the date
 of the invention, but instead concern documents that existed or activities that occurred
 “before the effective filing date of the claimed invention.” As a result, it is no
 longer possible to antedate or “swear behind” certain prior art disclosures by making a
 showing under 37
 CFR 1.131 that the inventor invented the claimed subject matter
 prior to the effective date of the prior art disclosure.
 

 The AIA defines the term “effective filing date” for a
 claimed invention in a patent or application for patent (other than a reissue
 application or reissued patent) as the earliest of: (1) the actual filing date of the
 patent or the application for the patent containing the claimed invention; or (2) the
 filing date of the earliest application for which the patent or application is entitled,
 as to such invention, to a right of priority or the benefit of an earlier filing date
 under 35 U.S.C.
 119 , 120 , 121 ,
 365 , or 386 . See 35 U.S.C.
 100(i)(1) . 
 

 In examining applications subject to AIA 35 U.S.C.
 102 , the effective filing date of a claimed invention is the
 actual filing date of the U.S. application, unless situation (A), (B), (C), or (D) as
 set forth below applies. Note that the actual filing date of an application that entered
 the national stage under 35 U.S.C. 371 is the international
 filing date (see 35
 U.S.C. 363 and MPEP § 1893.03(b) ); the actual the
 filing date of an international design application in the United States is the date of
 international registration determined by the International Bureau under the Hague
 Agreement (in the absence of a petition for review)(see 37 CFR
 1.1023 and MPEP § 2908 ).
 

 
 (A) If the application is a continuation or divisional of one or more
 earlier U.S. applications or international applications and if the requirements of
 35 U.S.C.
 120 , 365(c) , or 386(c) have been satisfied, the effective filing date of a
 claimed invention is the same as the earliest filing date in the line of
 continuation or divisional applications.
 

 (B) If the application is a continuation-in-part of an earlier U.S.
 application or international application, any claims in the new application not
 supported by the specification and claims of the parent application have an
 effective filing date equal to the actual filing date of the new application. Any
 claims which are fully supported under 35 U.S.C. 112 by the earlier
 parent application have the effective filing date of that earlier parent
 application.
 

 (C) If the application properly claims benefit under 35 U.S.C.
 119(e) to a provisional application, the effective filing
 date of a claimed invention is the filing date of the provisional application for
 any claims which are fully supported under 35 U.S.C. 112 by the
 provisional application.
 

 (D) If the application properly claims foreign priority under
 35 U.S.C.
 119(a)-(d) , 365(a) or (b) , or
 386(a) or (b) , the effective filing date of a claimed
 invention is the filing date of the foreign priority document if the claim is
 adequately supported in the foreign priority document. See MPEP §§
 216 and 2152.06 .
 

 
 See MPEP § 1893.03(c) for a discussion of claims for priority to,
 or the benefit of, the filing date of a prior-filed foreign or domestic application in
 an application that entered the national stage under 35 U.S.C. 371 . See
 MPEP §§
 211.01(c) and 1895 for additional information on
 determining the effective filing date of a claimed invention in a continuation,
 divisional, or continuation-in-part of a PCT application designating the United States.
 See also MPEP §§
 1895.01 and 1896 which discuss differences between
 applications filed under 35 U.S.C. 111(a) and international
 applications that enter national stage under 35 U.S.C. 371 .
 

 See MPEP §§ 2920.05(d) and
 2920.05(e) for a discussion of claims for priority to, or the
 benefit of, the filing date of a prior-filed foreign or domestic application in
 international design applications.
 

 The one-year grace period (as defined in
 MPEP §
 2151 ) in AIA 35 U.S.C. 102(b)(1) is measured
 from the filing date of any U.S. or foreign patent application to which the patent or
 application is entitled to benefit or priority as to such invention, whereas the
 one-year grace period in pre-AIA 35 U.S.C. 102(b) is measured
 from only the filing date of the earliest application filed in the United States
 (directly or through the PCT).
 

 As under pre-AIA law, the effective filing date of a
 claimed invention is determined on a claim-by-claim basis and not an
 application-by-application basis. That is, the principle that different claims in the
 same application may be entitled to different effective filing dates vis-à-vis the prior
 art remains unchanged by the AIA. See MPEP § 2133.01 for a discussion of
 relevant pre-AIA case law in the context of continuation-in-part applications. However,
 it is important to note that although prior art is applied on a claim-by-claim basis,
 the determination of whether pre-AIA 35 U.S.C. 102 and
 35 U.S.C.
 103 or AIA 35 U.S.C. 102 and
 103 apply is made on an application-by-application basis.
 MPEP §
 2151 and MPEP § 2159 discuss the applicability
 date provisions of section 3 of the AIA.
 

 Finally, the AIA provides that the “effective filing
 date” for a claimed invention in a reissued patent or application for a reissue patent
 shall be determined by deeming the claim to the claimed invention to have been contained
 in the patent for which reissue was sought. See 35 U.S.C.
 100(i)(2) .
 

 

 
 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) [R-08.2017]
 

 [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 .] 

 Prior art documents and activities which may preclude
 patentability are set forth in AIA 35 U.S.C. 102(a)(1) . Such
 documents and activities include prior patenting of the claimed invention, descriptions
 of the claimed invention in a printed publication, public use of the claimed invention,
 placing the claimed invention on sale, and otherwise making the claimed invention
 available to the public. MPEP §§
 2152.02(a) – 2152.02(f) discuss each prior art document and activity that
 might preclude patentability under AIA in turn. 35 U.S.C.
 102(a)(1) 

 
 2152.02(a) Patented [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 .] 

 AIA 35
 U.S.C. 102(a)(1) indicates that a prior patent of a claimed
 invention will preclude the grant of a subsequent patent on the claimed invention.
 This means that if a claimed invention was patented in this or a foreign country
 before the effective filing date of the claimed invention, AIA 35 U.S.C.
 102(a)(1) precludes the grant of a patent on the claimed
 invention. The effective date of the patent for purposes of determining whether the
 patent qualifies as prior art under AIA 35 U.S.C. 102(a)(1) is the
 grant date of the patent. There is an exception to this rule if the patent is secret
 as of the date the rights are awarded. See In re Ekenstam, 256
 F.2d 321, 323, 118 USPQ 349, 353 (CCPA 1958); see also MPEP § 2126.01 . In
 such situations, the patent is available as prior art as of the date the patent was
 made available to the public by being laid open for public inspection or disseminated
 in printed form. See In re Carlson, 983 F.2d 1032, 1037, 25 USPQ2d
 1207 (Fed. Cir. 1992); see also MPEP § 2126 . The phrase “patented”
 in AIA 35
 U.S.C. 102(a)(1) has the same meaning as “patented” in
 pre-AIA 35
 U.S.C. 102(a) and (b) . For a discussion of
 “patented” as used in pre-AIA 35 U.S.C. 102(a) and
 (b) , see generally MPEP § 2126 .
 

 Although an invention may be described in a patent and
 not claimed therein, the grant date would also be the applicable prior art date for
 purposes of relying on the subject matter disclosed therein as “described in a
 printed publication,” provided that the patent was made available to the public on
 its grant date. Note that a U.S. patent that issues after the effective filing date
 of a claimed invention and is not available as prior art against that invention under
 AIA 35
 U.S.C. 102(a)(1) could be available as prior art under
 AIA 35
 U.S.C. 102(a)(2) .
 

 

 
 2152.02(b) Described in a Printed Publication [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 .]
 

 If a claimed invention is described in a patent,
 published patent application, or printed publication, such a document may be
 available as prior art under AIA 35 U.S.C. 102(a)(1) . Both
 pre-AIA 35
 U.S.C. 102(a) and (b) and AIA 35 U.S.C.
 102(a)(1) use the term “described” with respect to an invention
 in a prior art printed publication. Likewise, AIA 35 U.S.C.
 102(a)(2) uses that term with respect to U.S. patents, U.S.
 patent application publications, and WIPO published applications. Thus, the Office
 does not view the AIA as changing the extent to which a claimed invention must be
 described for a prior art document to anticipate the claimed invention under
 35
 U.S.C. 102 .
 

 While the conditions for patentability of
 AIA 35
 U.S.C. 112(a) require a written description of the claimed
 invention that would have enabled a person skilled in the art to make as well as use
 the invention, the prior art provisions of AIA 35 U.S.C.
 102(a)(1) and (a)(2) require only that the
 claimed invention is “described” in a prior art document (patent, published patent
 application, or printed publication). The two basic requirements that must be met by
 a prior art document in order to describe a claimed invention such that it is
 anticipated under AIA 35 U.S.C. 102 are the same as
 those under pre-AIA
 35 U.S.C. 102 . First, “each and every element of the claimed
 invention” must be disclosed either explicitly or inherently, and the elements must
 be “arranged or combined in the same way as in the claim.” See In re
 Gleave, 560 F.3d 1331, 1334, 90 USPQ2d 1235, 1237-38 (Fed. Cir. 2009),
 citing Eli Lilly & Co. v. Zenith Goldline Pharms., Inc., 471
 F.3d 1369, 1375, 81 USPQ2d 1324,1328 (Fed. Cir. 2006); Net MoneyIN, Inc. v.
 VeriSign, Inc., 545 F.3d 1359, 1370, 88 USPQ2d 1751, 1759 (Fed. Cir.
 2008); In re Bond, 910 F.2d 831, 832-33, 15 USPQ2d 1566, 1567
 (Fed. Cir. 1990). Second, a person of ordinary skill in the art must have been
 enabled to make the invention without undue experimentation. See
 Gleave, 560 F.3d at 1334, 90 USPQ2d at 1238 (citing
 Impax Labs., Inc. v. Aventis Pharms. Inc., 545 F.3d 1312, 1314,
 88 USPQ2d 1381, 1383 (Fed. Cir. 2008), and In re LeGrice, 301 F.2d
 929, 940-44, 133 USPQ 365, 372 (CCPA 1962)). Thus, in order for a prior art document
 to describe a claimed invention such that it is anticipated under AIA 35 U.S.C.
 102(a)(1) or (a)(2) , it must disclose all
 elements of the claimed invention arranged as they are in the claim, and also provide
 sufficient guidance to enable a person skilled in the art to make the claimed
 invention. There is, however, no requirement that a prior art document meet the “how
 to use” requirement of 35 U.S.C. 112(a) in order to
 qualify as prior art. See Gleave, 560 F.3d at 1334, 90 USPQ2d at
 1237-38; see also In re Schoenwald, 964 F.2d 1122, 1124, 22 USPQ2d
 1671, 1673 (Fed. Cir. 1992) (holding that a claimed compound was anticipated even
 though the prior art reference did not disclose a use for the compound);
 Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1380-81,
 67 USPQ2d 1664, 1670 (Fed. Cir. 2003) (pointing out that actually reducing the
 invention to practice is not necessary in order for a prior art reference to
 anticipate); Impax Labs, 468 F.3d at 1382 (stating that “proof of
 efficacy is not required for a prior art reference to be enabling for purposes of
 anticipation”). Furthermore, compliance with the “how to make” requirement is judged
 from the viewpoint of a person of ordinary skill in the art, and thus does not
 require that the prior art document explicitly disclose information within the
 knowledge of such a person. See In re Donohue, 766 F.2d 531, 533,
 226 USPQ 619, 621 (Fed. Cir. 1985).
 

 There is an additional important distinction between
 the written description that is necessary to support a claim under 35 U.S.C.
 112(a) and the description sufficient to anticipate the subject
 matter of the claim under AIA 35 U.S.C. 102(a)(1) or
 (a)(2) . See Rasmusson v. SmithKline Beecham
 Corp., 413 F.3d 1318, 75 USPQ2d 1297 (Fed. Cir. 2005). To provide
 support for a claim under 35 U.S.C. 112(a) , it is necessary
 that the specification describe and enable the entire scope of the claimed invention.
 However, in order for a prior art document to describe a claimed invention under
 AIA 35
 U.S.C. 102(a)(1) or (a)(2) , the prior art document need only describe and enable
 one skilled in the art to make a single species or embodiment of the claimed
 invention. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562, 19
 USPQ2d 1111, 1115 (Fed. Cir. 1991) (“As the court pointed out, ‘the description of a
 single embodiment of broadly claimed subject matter constitutes a description of the
 invention for anticipation purposes..., whereas the same information in a
 specification might not alone be enough to provide a description of that invention
 for purposes of adequate disclosure.’”) (quoting In re Lukach, 442
 F.2d 967, 970, 169 USPQ 795, 797 (CCPA 1971)); see also In re Van
 Langenhoven, 458 F.2d 132, 173 USPQ 426 (CCPA 1972), and In re
 Ruscetta, 255 F.2d 687, 118 USPQ 101 (CCPA 1958). 
 

 An anticipatory description it is not required in
 order for a disclosure to qualify as prior art, unless the disclosure is being used
 as the basis for an anticipation rejection. In accordance with pre-AIA case law
 concerning obviousness, a disclosure may be cited for all that it would reasonably
 have made known to a person of ordinary skill in the art. Thus, the description
 requirement of AIA 35 U.S.C. 102(a)(1) and
 (a)(2) does not preclude an examiner from applying a
 disclosure in an obviousness rejection under AIA 35 U.S.C.
 103 simply because the disclosure is not adequate to anticipate
 the claimed invention.
 

 

 
 2152.02(c) In Public Use [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 .]
 

 Public use rejections under 35 U.S.C.
 102(a)(1) may be based on uses that are public anywhere in the
 world. While there is no requirement that the use or sale activity be by another, it
 should be noted that certain uses or sales are subject to the exceptions in
 35
 U.S.C. 102(b)(1) , e.g., uses or sales by the inventor or a
 joint inventor (or have originated with the inventor) that precede the effective
 filing date by less than one year. See MPEP §
 2154.02 .
 

 Under pre-AIA 35 U.S.C. 102(b) , an
 invention that was “in public use” precluded the grant of a patent only if such
 public use occurred “in this country.” See MPEP § 2133.03(d) .
 

 Under AIA 35 U.S.C. 102(a)(1) , there is
 no geographic limitation on where prior public use or public availability occurs.
 Furthermore, a public use would need to occur before the effective filing date of the
 claimed invention to constitute prior art under AIA 35 U.S.C.
 102(a)(1) .
 

 The pre-AIA case law also indicates that a public use
 will bar patentability if the public use occurs before the critical date and the
 invention is ready for patenting. Under pre-AIA 35 U.S.C. 102(b) , the
 critical date is the date that is one year prior to the date of application for
 patent in the United States. See Invitrogen Corp. v. Biocrest Manufacturing.
 L.P., 424 F.3d 1374, 1379-80, 76 USPQ2d 1741, 1744 (Fed. Cir. 2005) and
 MPEP §
 2133 . Under pre-AIA 35 U.S.C. 102(b) , the
 uses of an invention before the patent's critical date that constitute a “public use”
 fall into two categories: the use either “(1) was accessible to the public; or (2)
 was commercially exploited.” See American Seating Co. v. USSC Group,
 Inc., 514 F.3d 1262, 1267, 85 USPQ2d 1683, 1685 (Fed. Cir. 2008) and
 MPEP §
 2133.03(a) . Whether a use is a pre-AIA 35 U.S.C.
 102(b) public use also depends on who is making the use of the
 invention. “[W]hen an asserted prior use is not that of the applicant,
 [pre-AIA 35
 U.S.C.] 102(b) is not a bar when that prior use or knowledge is
 not available to the public.” See Woodland Trust v. Flowertree Nursery,
 Inc., 148 F.3d 1368, 1371, 47 USPQ2d 1363, 1366 (Fed. Cir. 1998). In
 other words, a use by a third party who did not obtain the invention from the
 inventor named in the application or patent is an invalidating use under
 pre-AIA 35
 U.S.C. 102(b) only if it falls into the first category: That
 the use was accessible to the public. See MPEP § 2133.03(a) , subsection II.C.
 On the other hand, “an inventor's own prior commercial use, albeit kept secret, may
 constitute a public use or sale under [pre-AIA 35 U.S.C.] 102(b) ,
 barring him from obtaining a patent.” See Woodland Trust, 148 F.3d
 at 1370, 47 USPQ2d at 1366 and MPEP § 2133.03(a) , subsection II.A.
 Also, an inventor creates a public use bar under pre-AIA 35 U.S.C. 102(b) when the
 inventor shows the invention to, or allows it to be used by, another person who is
 “under no limitation, restriction, or obligation of confidentiality” to the inventor.
 See American Seating, 514 F.3d at 1267, 85 USPQ2d at 1685 and
 MPEP §
 2133.03(a) , subsection II.B.
 

 Further, under pre-AIA 35 U.S.C. 102(a) , “in
 order to invalidate a patent based on prior knowledge or use” by another in this
 country prior to the patent's priority date, “that knowledge or use must have been
 available to the public.” See Woodland Trust, 148 F.3d at 1370, 47
 USPQ2d at 1366 and MPEP § 2132 , subsection I. Patent-defeating “use,” under
 pre-AIA 35
 U.S.C. 102(a) includes only that “use which is accessible to
 the public.” See id. (quoting Carella v. Starlight
 Archery, 804 F.2d 135, 139, 231 USPQ 644, 646 (Fed. Cir. 1986)).
 

 As discussed previously, public use under
 AIA 35
 U.S.C. 102(a)(1) is limited to those uses that are available to
 the public. The public use provision of AIA 35 U.S.C. 102(a)(1) thus has
 the same substantive scope, with respect to uses by either the inventor or a third
 party, as public uses under pre-AIA 35 U.S.C. 102(b) by
 unrelated third parties or others under pre-AIA 35 U.S.C. 102(a) .
 

 As also discussed previously, once an examiner becomes
 aware that a claimed invention has been the subject of a potentially public use, the
 examiner should require the applicant to provide information showing that the use did
 not make the claimed process accessible to the public. 
 

 

 
 2152.02(d) On Sale [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 § 2133.03 
 et seq. for information about on sale in regard to applications subject to
 pre-AIA 35
 U.S.C. 102 .] 

 On sale rejections under 35 U.S.C.
 102(a)(1) may be based on sales or offers for sale without
 regard to where the sale activity took place. While there is no requirement that the
 sale activity be by another, it should be noted that certain uses or sales are
 subject to the exceptions in 35 U.S.C. 102(b)(1) , e.g., uses
 or sales by the inventor or a joint inventor (or have originated with the inventor)
 that precede the effective filing date by less than one year. See
 MPEP
 § 2154.02 .
 

 The pre-AIA case law indicates that on sale activity
 will bar patentability if the claimed invention was: (1) the subject of a commercial
 sale or offer for sale, not primarily for experimental purposes; and (2) ready for
 patenting. See Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67, 48
 USPQ2d 1641, 1646-47 (1998). Contract law and commercial law principles apply in
 order to determine whether a commercial sale or offer for sale occurred.
 Medicines Co. v. Hospira, Inc., 827 F.3d 1363, 1373, 119 USPQ2d
 1329, 1336 (Fed. Cir. 2016) ( en banc ). In addition, the enablement
 inquiry is not applicable to the question of whether a claimed invention is “on sale”
 under pre-AIA 35
 U.S.C. 102(b) . See In re Epstein, 32 F.3d
 1559, 1568, 31 USPQ2d 1817, 1824 (Fed. Cir. 1994). The phrase “on sale” in
 AIA 35
 U.S.C. 102(a)(1) is treated as having the same meaning as “on
 sale” in pre-AIA 35
 U.S.C. 102(b) . For a discussion of “on sale” as used in
 pre-AIA 35
 U.S.C. 102(b) , see generally MPEP § 2133.03(b) et seq. 

 Under pre-AIA 35 U.S.C. 102(b) , if an
 invention was “on sale,” patentability was precluded only if the invention was on
 sale “in this country.” See MPEP § 2133.03(d) . Under
 AIA 35
 U.S.C. 102(a)(1) , there is no geographic limitation on where
 the sale or offer for sale may occur. When formulating a rejection, Office personnel
 should consider evidence of sales activity, regardless of where the sale activity
 took place.
 

 The pre-AIA 35 U.S.C. 102(b) “on
 sale” provision has been interpreted as including commercial activity even if the
 activity is secret. See MPEP § 2133.03(b) , subsection III.A.
 AIA 35
 U.S.C. 102(a)(1) uses the same “on sale” term as
 pre-AIA 35
 U.S.C. 102(b) and is treated as having the same meaning. In
 Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 139
 S.Ct. 628, 129 USPQ2d at 1193 (2019), the Supreme Court “determine[d] that Congress
 did not alter the meaning of ‘on sale’ when it enacted the AIA, [and held] that an
 inventor’s sale of an invention to a third party who is obligated to keep the
 invention confidential can qualify as prior art under [AIA 35 U.S.C.] § 102(a).”
 Id. at 634, 129 USPQ2d at 1193. Thus, a sale or offer for sale
 that does not disclose the subject matter of an invention or make the invention
 available to the general public may nevertheless qualify as prior art in an
 anticipation or obviousness rejection, regardless of whether the application or
 patent under consideration is subject to the FITF provisions of the AIA or the first
 to invent provisions of pre-AIA law.
 

 

 
 2152.02(e) Otherwise Available to the Public [R-10.2019]

 [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(a)(1) provides a “catch-all” provision, which
 defines a new additional category of potential prior art not provided for in
 pre-AIA 35
 U.S.C. 102 . Specifically, a claimed invention is not entitled
 to a patent if it was “otherwise available to the public” before its effective filing
 date. This “catch-all” provision permits decision makers to focus on whether the
 disclosure was “available to the public,” rather than on the means by which the
 claimed invention became available to the public or whether a disclosure constitutes
 a “printed publication” or falls within another category of prior art as defined in
 AIA 35
 U.S.C. 102(a)(1) . The availability of the subject matter to the
 public may arise in situations such as a student thesis in a university library (see,
 e.g., In re Cronyn, 890 F.2d 1158, 13 USPQ2d 1070 (Fed. Cir.
 1989); In re Hall, 781 F.2d 897, 228 USPQ 453 (Fed. Cir. 1986);
 In re Bayer, 568 F.2d 1357, 196 USPQ 670 (CCPA 1978) and
 MPEP §
 2128.01 , subsection I.); a poster display or other
 information disseminated at a scientific meeting (see, e.g., In re
 Klopfenstein, 380 F.3d 1345, 72 USPQ2d 1117 (Fed. Cir. 2004),
 Massachusetts Institute of Technology v. AB Fortia, 774 F.2d
 1104, 227 USPQ 428 (Fed. Cir. 1985), Jazz Pharm., Inc. v. Amneal Pharm.,
 LLC , 895 F.3d 1347,127 USPQ2d 1485 (Fed. Cir. 2018), and
 MPEP §
 2128.01 , subsection IV.); subject matter in a laid-open
 patent application or patent (see, e.g., In re Wyer, 655 F.2d 221,
 210 USPQ 790 (CCPA 1981); see also Bruckelmyer v. Ground Heaters,
 Inc., 445 F.3d 1374, 78 USPQ2d 1684 (Fed. Cir. 2006)); a document
 electronically posted on the Internet (see, e.g., Voter Verified, Inc. v.
 Premier Election Solutions, Inc., 698 F.3d 1374, 104 USPQ2d 1553 (Fed.
 Cir. 2012), In re Lister, 583 F.3d 1307, 92 USPQ2d 1225 (Fed. Cir.
 2009), SRI Int'l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186,
 85 USPQ2d 1489 (Fed. Cir. 2008), and MPEP § 2128 ); or a commercial
 transaction that does not constitute a sale under the Uniform Commercial Code (see,
 e.g., Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041, 59
 USPQ2d 1121 (Fed. Cir. 2001) and MPEP § 2133.03(e)(1) ). Even if a
 document or other disclosure is not a printed publication, or a transaction is not a
 sale, either may be prior art under the “otherwise available to the public” provision
 of AIA 35
 U.S.C. 102(a)(1) , provided that the claimed invention is made
 sufficiently available to the public. 
 

 

 
 2152.02(f) No Requirement of “By Others” [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 .]
 

 A key difference between pre-AIA 35 U.S.C.
 102(a) and AIA 35 U.S.C. 102(a)(1) is the
 requirement in pre-AIA 35 U.S.C. 102(a) that the prior art relied on was “by
 others.” Under AIA 35 U.S.C. 102(a)(1) , there is
 no requirement that the prior art relied upon be by others. Thus, any prior art which
 falls under AIA 35 U.S.C. 102(a)(1) need not
 be by another to constitute potentially available prior art. However, disclosures of
 the subject matter made one year or less before the effective filing date of the
 claimed invention by the inventor or a joint inventor or another who obtained the
 subject matter directly or indirectly from the inventor or a joint inventor may fall
 within an exception under AIA 35 U.S.C. 102(b)(1) to
 AIA 35
 U.S.C. 102(a)(1) .
 

 

 

 
 2152.03 Admissions [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 .] 

 The Office will continue to treat admissions by the
 applicant as prior art under the AIA. A statement by an applicant in the specification
 or made during prosecution identifying the work of another as “prior art” is an
 admission which can be relied upon for both anticipation and obviousness determinations,
 regardless of whether the admitted prior art would otherwise qualify as prior art under
 AIA 35
 U.S.C. 102 . See Riverwood Int'l Corp. v. R.A. Jones &
 Co., 324 F.3d 1346, 1354, 66 USPQ2d 1331, 1337 (Fed. Cir. 2003);
 Constant v. Advanced Micro-Devices Inc., 848 F.2d 1560, 1570, 7
 USPQ2d 1057, 1063 (Fed. Cir. 1988). For a discussion of admissions as prior art, see
 generally MPEP §
 2129 .
 

 

 
 2152.04 The Meaning of “Disclosure” [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 .]
 

 The AIA does not define the term “disclosure,” and
 AIA 35
 U.S.C. 102(a) does not use the term “disclosure.”
 AIA 35
 U.S.C. 102(b)(1) and (b)(2) , however, each state
 conditions under which a “disclosure” that otherwise falls within AIA 35 U.S.C.
 102(a)(1) or 102(a)(2) is not prior art under
 AIA 35
 U.S.C. 102(a)(1) or 102(a)(2) . Thus, the Office is
 treating the term “disclosure” as a generic expression intended to encompass the
 documents and activities enumerated in AIA 35 U.S.C. 102(a) (i.e., being
 patented, described in a printed publication, in public use, on sale, or otherwise
 available to the public, or being described in a U.S. patent, U.S. patent application
 publication, or WIPO published application).
 

 

 
 2152.05 Determining Whether To Apply 35 U.S.C.
 102(a)(1) or 102(a)(2) [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 and
 MPEP
 § 2139.02 for examination of applications subject to
 pre-AIA 35
 U.S.C. 102 .] 

 I. 35 U.S.C. 102(a)(1) First, the examiner should consider whether the
 reference qualifies as prior art under 35 U.S.C. 102(a)(1) . Next the
 examiner must determine if any exceptions in 35 U.S.C.
 102(b)(1) apply. 
 

 Patents claiming or describing the claimed inventions,
 descriptions of the claimed invention in a printed publication, public use of the
 claimed invention, placing the claimed invention on sale, and otherwise making the
 claimed invention available to the public qualify as prior art under
 35
 U.S.C. 102(a)(1) if the reference predates the effective filing
 date of the claim. The sale or use of the invention need not occur in the United
 States to qualify. See MPEP § 2152 .
 

 A disclosure in a potential prior art reference within
 the one-year grace period is excepted as prior art under 35 U.S.C.
 102(b)(1)(A) if the disclosure was the inventor’s or at least
 one joint inventor’s own work that was publicly disclosed by the inventor, a joint
 inventor, or another who obtained the subject matter directly or indirectly from the
 inventor or joint inventor. 35 U.S.C. 102(b)(1)(A) provides
 that a disclosure which would otherwise qualify as prior art under 35 U.S.C.
 102(a)(1) is not prior art if the disclosure was made: (1) one
 year or less before the effective filing date of the claimed invention; and (2) by
 the inventor or a joint inventor, or by another who obtained the subject matter
 directly or indirectly from the inventor or joint inventor. See MPEP §
 2153.01(a) .
 

 Disclosures in potential prior art references within
 the one-year grace period are also excepted as prior art under 35 U.S.C.
 102(b)(1)(B) if the reference discloses subject matter that was
 previously publicly disclosed by the inventor, a joint inventor, or another who
 obtained the subject matter directly or indirectly from the inventor or joint
 inventor. Specifically, 35 U.S.C. 102(b)(1)(B) provides
 that a disclosure which would otherwise qualify as prior art under 35 U.S.C.
 102(a)(1) (patent, printed publication, public use, sale, or
 other means of public availability) is excepted as prior art if: (1) the disclosure
 was made one year or less before the effective filing date of the claimed invention;
 and (2) the subject matter disclosed had been previously publicly disclosed by the
 inventor, a joint inventor, or another who obtained the subject matter directly or
 indirectly from the inventor or joint inventor. See MPEP §§
 2153.02 and 717.01(b)(2) .
 

 II. 35 U.S.C. 102(a)(2) First, the examiner should consider whether the
 reference qualifies as prior art under 35 U.S.C. 102(a)(2) . Next the
 examiner must determine if any exceptions in 35 U.S.C.
 102(b)(2) apply. 
 

 U.S. patents, U.S. patent applications published under
 35 U.S.C.
 122(b) , and international patent applications designating the
 United States that are published under the Patent Cooperation Treaty to another are
 prior art under 35 U.S.C. 102(a)(2) if the
 effectively filed date of the disclosure of the reference is before the effective
 filing date of the claimed invention, unless an exception under 35 U.S.C.
 102(b)(2) applies. Even if the issue or publication date of the
 reference is not before the effective filing date of the claimed invention, such that
 the reference does not qualify as 102(a)(1) prior art, the
 reference may still be applicable as prior art under 35 U.S.C.
 102(a)(2) if it was “effectively filed” before the effective
 filing date of the claimed invention with respect to the subject matter relied upon
 to reject the claim. MPEP § 2152.01 discusses the
 “effective filing date” of a claimed invention. 35 U.S.C.
 102(d) sets forth the criteria to determine when subject matter
 described in a U.S. patent, U.S. patent application publication, or WIPO published
 application was “effectively filed” for purposes of 35 U.S.C.
 102(a)(2) . See MPEP §
 2154 .
 

 Disclosures in potential prior art references are not
 prior art under 35 U.S.C. 102(a)(2) if one of the
 three exception provisions of 35 U.S.C. 102(b)(2) applies.
 35
 U.S.C. 102(b)(2)(A) limits the use of an inventor’s or at least
 one joint inventor’s own work as prior art when the inventor’s or at least one joint
 inventor’s own work is disclosed in a U.S. patent, U.S. patent application
 publication, or WIPO published application by another who obtained the subject matter
 directly or indirectly from the inventor or joint inventor. 35 U.S.C.
 102(b)(2)(B) excepts as prior art subject matter that was
 effectively filed by another after the subject matter had been publicly disclosed by
 the inventor, a joint inventor, or another who obtained the subject matter directly
 or indirectly from the inventor or joint inventor. 35 U.S.C.
 102(b)(2)(C) excepts subject matter disclosed in a U.S. patent,
 U.S. patent application publication, or WIPO published application from constituting
 prior art under 35 U.S.C. 102(a)(2) if the
 subject matter disclosed and the claimed invention, not later than the effective
 filing date of the claimed invention, “were owned by the same person or subject to an
 obligation of assignment to the same person.” 35 U.S.C.
 102(b)(2)(C) resembles pre-AIA 35 U.S.C. 103(c) in that
 both concern common ownership, and both offer an avenue by which an applicant may
 avoid certain disclosures that are commonly owned or deemed commonly owned. However,
 there are significant differences between 35 U.S.C.
 102(b)(2)(C) and pre-AIA 35 U.S.C. 103(c) . See
 MPEP
 § 2154.02(b) .
 

 

 
 2152.06 Overcoming a 35 U.S.C. 102(a)(1) or 102(a)(2)
 Rejection [R-07.2022]
 

 [Editor Note: This MPEP section is only applicable to applications
 subject to examination under the first inventor to file provisions of the AIA as
 explained in 35 U.S.C. 100 (note) and
 MPEP
 § 2159 . See MPEP §
 2139 et seq. for examination of applications subject to
 pre-AIA 35
 U.S.C. 102 .] 

 In addition to persuasively arguing that the claims are
 patentably distinguishable over the prior art or amending the claims to overcome the
 prior art rejection, a rejection under 35 U.S.C. 102(a)(1) or
 102(a)(2) can be overcome by:
 

 
 (A) Submitting a benefit claim under 35 U.S.C.
 120 within the time period set in 37 CFR
 1.78 by providing the required reference to a prior
 application in a corrected application data sheet under 37 CFR 1.76 
 and by establishing that the prior application satisfies the enablement and
 written description requirements of 35 U.S.C. 112(a) , or filing a
 grantable petition to accept an unintentionally delayed benefit claim under
 37 CFR
 1.78 . See MPEP §
 211 et seq. ; or
 

 (B) Submitting a benefit claim under 35 U.S.C.
 119(e) within the time period set in 37 CFR
 1.78 by providing the required reference to a prior
 provisional application in a corrected application data sheet under
 37 CFR 1.76
 and by establishing that the prior application satisfies the
 enablement and written description requirements of 35 U.S.C.
 112(a) or filing a grantable petition to accept an
 unintentionally delayed benefit claim under 37 CFR
 1.78 . See MPEP §
 211 et seq. ; or
 

 (C) Submitting a claim to priority under
 35 U.S.C.
 119(a) - (d) within the time period set
 in 37 CFR
 1.55 by identifying a prior foreign application in a
 corrected application data sheet under 37 CFR 1.76 and by
 establishing that the prior foreign application satisfies the enablement and
 written description requirements of 35 U.S.C. 112(a) or filing a
 grantable petition to accept a delayed priority claim under 37 CFR
 1.55 . See MPEP §§
 213 - 216 . The foreign priority filing date must antedate the
 reference and be perfected. The filing date of the priority document is not
 perfected unless applicant has filed a certified priority document in the
 application (and an English language translation, if the document is not in
 English) (see 37 CFR 1.55(g) ); or
 

 (D) Filing an affidavit or declaration under
 37 CFR
 1.130 to establish that an applied disclosure that was not
 made under 35 U.S.C. 102(a)(1) more than
 one year before the effective filing date of the claimed invention is not prior
 art under 35 U.S.C. 102(a) due to an
 exception listed in 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 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 joint inventor (1) before the date the intervening
 disclosure was made on which the rejection is based, or (2) before the date the
 subject matter in the U.S. patent, U.S. patent application publication, or WIPO
 published application on which the rejection is based was effectively filed. See
 MPEP §§ 717 and 2155 ; or
 

 (E) Establishing common ownership or establishing
 evidence of a Joint Research Agreement to overcome a 35 U.S.C.
 102(a)(2) rejection or a 35 U.S.C.
 103 rejection based on prior art under 35 U.S.C.
 102(a)(2) by establishing entitlement to the
 35
 U.S.C. 102(b)(2)(C) exception. See MPEP §§
 717.02 and 2154.02(c) .
 

 
 Note that all of the ways of overcoming a
 35 U.S.C.
 102(a)(1) or 102(a)(2) rejection mentioned in
 this subsection may also be used to overcome a rejection under 35 U.S.C. 103 that is
 based on 35
 U.S.C. 102(a)(1) or 102(a)(2) prior art. 
 

 

 
 2152.07 Form Paragraphs for Use in Rejections Under AIA
 35 U.S.C. 102 [R-07.2022]
 

 The following form paragraphs should be used in making
 the appropriate rejections. Note that the particular part of the reference relied upon
 to support the rejection should be identified. 
 

 ¶ 7.06 Notice re prior art available under both pre-AIA and
 AIA
 

 In the event the determination of the status of the application as subject
 to AIA 35 U.S.C.
 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 
 and 103 )
 is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA) for
 the rejection will not be considered a new ground of rejection if the prior art relied upon,
 and the rationale supporting the rejection, would be the same under either status.
 

 Examiner Note:
 
 1. This form paragraph must be used in all Office
 Actions when a prior art rejection is made in an application with an actual filing
 date on or after March 16, 2013, that claims priority to, or the benefit of, an
 application filed before March 16, 2013.
 

 2. This form paragraph should only be used ONCE in an
 Office action. 
 
 
 

 ¶ 7.07.aia Statement of Statutory Basis, 35 U.S.C. 102

 The following is a quotation of the appropriate paragraphs
 of 35 U.S.C.
 102 that form the basis for the rejections under this section made in
 this Office action:
 

 A person shall be entitled to a patent
 unless—
 

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

 2. Form paragraphs 7.07.aia , 7.08.aia , 7.12.aia and
 7.14.aia
 are to be used ONLY ONCE in a given Office
 action.
 

 3. For applications claiming priority to, or the
 benefit of, an application filed before March 16, 2013, this form paragraph must be
 preceded by form paragraph 7.06 .
 
 
 

 ¶ 7.08.aia 102(a)(1), Activity Before the Effective Filing Date of
 Claimed Invention
 

 (a)(1) the claimed invention was patented, described in a printed
 publication, or in public use, on sale, or otherwise available to the public before the
 effective filing date of the claimed invention. 
 

 Examiner Note:
 
 1. This form paragraph should only be used in an
 application filed on or after March 16, 2013, where the claims are being examined under
 35
 U.S.C. 102 / 103 as amended by the Leahy-Smith
 America Invents Act. 
 

 2. This form paragraph must be preceded by form paragraphs
 7.03.aia 
 and 7.07.aia .
 
 
 

 ¶ 7.12.aia 102(a)(2), U.S. Patent, U.S. Patent Application Publication or
 WIPO Published Application That Names Another Inventor and Has an Earlier Effectively Filed
 Date
 

 (a)(2) the claimed invention was described in a patent issued under
 section 151 , or in an application for patent published or deemed published
 under section 
 122(b) , in which the patent or application, as the case may be, names
 another inventor and was effectively filed before the effective filing date of the claimed
 invention. 
 

 Examiner Note:
 
 1. This form paragraph should only be used in an application filed
 on or after March 16, 2013, where the claims are being examined under 35 U.S.C.
 102 / 103 as amended by the Leahy-Smith
 America Invents Act.
 

 2. This form paragraph must be preceded by form paragraphs
 7.03.aia 
 and 7.07.aia 
 and may be preceded by 7.08.aia .
 

 3. This form paragraph should only be used if the reference is one
 of the following: 
 a U.S. patent granted under 35 U.S.C. 151 
 having an effectively filed date earlier than the application;
 

 a U.S. Patent Application Publication published under
 35 U.S.C.
 122(b) having an effectively filed date earlier than the
 application; or
 

 a WIPO publication of an international application (PCT) or
 international design application that designates the United States where the WIPO
 publication has an effectively filed date earlier than the application.
 
 
 
 
 If any of these three types of prior art documents under
 35 U.S.C.
 102(a)(2) was published before the effective filing date of the claims
 under examination, then the prior art document is also applicable under 35 U.S.C.
 102(a)(1) .
 

 

 ¶ 7.14.aia Pre-AIA 102(g), Priority of Invention

 (g)(1) during the course of an interference conducted under
 section 135 or section 291 , another inventor involved therein
 establishes, to the extent permitted in section 104 , that before such person’s invention
 thereof the invention was made by such other inventor and not abandoned, suppressed, or
 concealed, or (2) before such person’s invention thereof, the invention was made in this
 country by another inventor who had not abandoned, suppressed, or concealed it. In determining
 priority of invention under this subsection, there shall be considered not only the respective
 dates of conception and reduction to practice of the invention, but also the reasonable
 diligence of one who was first to conceive and last to reduce to practice, from a time prior
 to conception by the other.
 

 A rejection on this statutory basis ( 35 U.S.C. 102(g) 
 as in force on March 15, 2013) is appropriate in an application or patent that is examined
 under the first to file provisions of the AIA if it also contains or contained at any time (1)
 a claim to an invention having an effective filing date as defined in 35 U.S.C.
 100(i) that is before March 16, 2013 or (2) a specific reference under
 35 U.S.C.
 120 , 121 , or 365(c) to any patent or
 application that contains or contained at any time such a claim.
 

 Examiner Note:

 This form paragraph must be preceded by form paragraph
 7.07.aia .
 

 

 ¶ 7.15.aia Rejection, 35 U.S.C. 102(a)(1)/102(a)(2)

 Claim(s) [1] is/are rejected under 35 U.S.C. 102 [2] as being [3] by [4] . 
 

 Examiner Note:
 
 1. This form paragraph should only be used in an
 application filed on or after March 16, 2013, where the claims are being examined under
 35
 U.S.C. 102 / 103 as amended by the Leahy-Smith
 America Invents Act. This form paragraph must be preceded by form paragraph
 7.03.aia .
 

 2. In bracket 1, insert the claim numbers which are
 under rejection.
 

 3. In bracket 2, insert either “(a)(1)” or “(a)(2)” or both. If paragraph
 (a)(2) of 35 U.S.C. 102 is applicable, use
 form paragraph 7.15.01.aia , 7.15.02.aia or
 7.15.03.aia where applicable.
 

 4. In bracket 3, insert either --clearly anticipated--
 or --anticipated-- with an explanation at the end of the paragraph. 
 

 5. In bracket 4, insert the prior art relied
 upon.
 

 6. This rejection must be preceded
 either by form paragraph 7.07.aia and form paragraphs
 7.08.aia ,
 and 7.12.aia 
 as appropriate, or by form paragraph 7.103 .
 

 7. For applications claiming priority to, or the
 benefit of, an application filed before March 16, 2013, this form paragraph must be
 preceded by form paragraph 7.06 .
 
 
 

 ¶ 7.15.01.aia Provisional Rejection, 35 U.S.C. 102(a)(2) - Common Assignee,
 Common Applicant, or At Least One Common (Joint) Inventor
 

 Claim(s) [1] is/are provisionally rejected under
 35 U.S.C.
 102(a)(2) as being anticipated by copending Application No.
 [2] which has a common [3] with the instant application.
 

 The copending application would constitute prior art under
 35 U.S.C.
 102(a)(2) if published under 35 U.S.C. 122(b) or patented under
 35 U.S.C.
 151 . This provisional rejection under 35 U.S.C.
 102(a)(2) is based upon a presumption of future publication or patenting
 of the copending application. [4] .
 

 This provisional rejection under 35 U.S.C.
 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the
 subject matter disclosed in the copending application was obtained directly or indirectly from
 the inventor or a joint inventor of this application and is thus not prior art in accordance
 with 35 U.S.C.
 102(b)(2)(A) ; (2) a showing under 37 CFR 1.130(b) of a prior public
 disclosure under 35 U.S.C. 102(b)(2)(B) ; or (3) a statement pursuant to
 35 U.S.C.
 102(b)(2)(C) establishing that, not later than the effective filing date
 of the claimed invention, the subject matter disclosed in the copending application and the
 claimed invention were either owned by the same person or subject to an obligation of
 assignment to the same person or subject to a joint research agreement. 
 

 This rejection may not be overcome by the filing of a terminal
 disclaimer. See In re Bartfeld , 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir.
 1991).
 

 Examiner Note:
 
 1. This form paragraph should only be used in an application filed
 on or after March 16, 2013, where the claims are being examined under 35 U.S.C.
 102 / 103 as amended by the Leahy-Smith
 America Invents Act. This form paragraph must be preceded by form paragraph
 7.03.aia .
 
 

 2. This form paragraph is used to provisionally reject over a
 copending application that discloses the claimed invention and would constitute prior
 art under 35
 U.S.C. 102(a)(2) if published under 35 U.S.C. 122 or
 patented. The copending application must have either a common assignee, common applicant
 ( 35 U.S.C.
 118 ) or at least one common (joint) inventor.
 

 3. 35 U.S.C.
 102(a)(2) may be applied if the reference names another inventor
 (i.e., a different inventive entity) and is one of the following: 
 a U.S. patent granted under 35 U.S.C. 151 
 that has an effectively filed date earlier than the application;
 

 a U.S. Patent Application Publication published under
 35 U.S.C.
 122(b) that has an effectively filed date earlier than the
 effective filing date of the claimed invention; or
 

 a WIPO publication of an international application (PCT) or
 international design application that designates the United States where the WIPO
 publication has an effectively filed date earlier than the effective filing date of
 the claimed invention. 
 If any of the three types of prior art documents under
 35
 U.S.C. 102(a)(2) issued or was published before the effective
 filing date of the claimed invention under examination, then the prior art document
 is also applicable under 35 U.S.C. 102(a)(1) . 
 

 
 
 

 4. If the claims would have been obvious over the invention
 disclosed in the other copending application, use form paragraph
 7.21.01.aia .
 

 5. In bracket 1, insert claim number(s) under rejection.

 6. In bracket 2, insert the application number.

 7. In bracket 3, insert --assignee--, --applicant--, or --joint
 inventor--.
 

 8. In bracket 4, provide an appropriate explanation of the
 examiner’s position on anticipation.
 

 9. Under 35 U.S.C. 101 , two patents are not
 permitted to issue on identical subject matter. Any claims in the instant application
 directed to the same invention claimed in the reference should be provisionally rejected
 using form paragraphs 8.30
 and 8.32 . Additionally, the applicant should be required to
 amend or cancel claims such that the applied reference and the instant application no
 longer contain claims directed to the same invention using form paragraph
 8.27.aia .
 

 10. Any claims in the instant application that are directed to
 subject matter that is not patentably distinct from an invention claimed in the
 reference should be rejected (or provisionally rejected if the reference has not yet
 issued as a patent) on the grounds of nonstatutory double patenting using form paragraph
 8.33 and at
 least one of form paragraphs 8.34 - 8.39 .
 

 11. For applications claiming priority to, or the benefit of, an
 application filed before March 16, 2013, this form paragraph must be preceded by form
 paragraph 7.06 .
 
 
 

 ¶ 7.15.02.aia Rejection, 35 U.S.C. 102(a)(2), Common Assignee, Applicant, or
 Joint Inventor(s)
 

 Claim(s) [1] is/are rejected under 35 U.S.C.
 102(a)(2) as being [2] by [3] .
 

 The applied reference has a common [4] with the instant
 application. Based upon the earlier effectively filed date of the reference, it constitutes
 prior art under 35
 U.S.C. 102(a)(2) . This rejection under 35 U.S.C.
 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the
 subject matter disclosed in the reference was obtained directly or indirectly from the
 inventor or a joint inventor of this application and is thus not prior art in accordance with
 35 U.S.C.
 102(b)(2)(A) ; (2) a showing under 37 CFR 1.130(b) of a prior public
 disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or
 (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that,
 not later than the effective filing date of the claimed invention, the subject matter
 disclosed in the reference and the claimed invention were either owned by the same person or
 subject to an obligation of assignment to the same person or subject to a joint research
 agreement. 
 

 Examiner Note:
 
 1. This form paragraph should only be used in an
 application filed on or after March 16, 2013, where the claims are being examined under
 35
 U.S.C. 102 / 103 as amended by the Leahy-Smith
 America Invents Act. This form paragraph must be preceded by form paragraph
 7.03.aia .
 

 2. This form paragraph is used to reject claims as anticipated over
 a U.S. patent, U.S. patent application publication, or WIPO publication with an earlier
 prior art date under 35 U.S.C. 102(a)(2) . These
 references must have either a common assignee, a common applicant ( 35 U.S.C. 118 ),
 or at least one common (joint) inventor.
 

 3. 35 U.S.C. 102(a)(2) may be applied
 if the reference names another inventor (i.e., a different inventive entity) and is one
 of the following: 
 a U.S. patent granted under 35 U.S.C.
 151 that has an effectively filed date earlier than the
 effective filing date of the claimed invention;
 

 a U.S. Patent Application Publication published
 under 35
 U.S.C. 122(b) that has an effectively filed date earlier than
 the effective filing date of the claimed invention; or
 

 a WIPO publication of an international application
 (PCT) or international design application that designates the United States where the
 WIPO publication has an effectively filed date earlier than the effective filing date
 of the claimed invention. 
 
 
 If any of the three types of prior art documents
 under 35 U.S.C. 102(a)(2) was published before the effective filing
 date of the claimed invention under examination, then the prior art document is also
 applicable under 35 U.S.C. 102(a)(1) .
 
 

 

 4. In bracket 1, insert the claim numbers which are
 under rejection.
 

 5. In bracket 2, insert either --clearly anticipated--
 or --anticipated-- with an explanation at the end of the paragraph. 
 

 6. In bracket 3, insert the prior art relied
 upon.
 

 7. In bracket 4, insert --assignee--, --applicant--, or
 --joint inventor--.
 

 8. This form paragraph must be preceded by form
 paragraph 7.12.aia .
 

 9. Under 35 U.S.C. 101 , two patents are not
 permitted to issue on identical subject matter. Any claims in the instant application
 directed to the same invention claimed in the reference should be rejected (or
 provisionally rejected if the reference has not yet issued as a patent) on the grounds
 of statutory double patenting using form paragraphs 8.30 - 8.32 . Additionally, the applicant should
 be required to amend or cancel claims such that the reference and the instant
 application no longer contain claims directed to the same invention using form paragraph
 8.27.aia .
 

 10. Any claims in the instant application that are directed to
 subject matter that is not patentably distinct from an invention claimed in the
 reference should be rejected (or provisionally rejected if the reference has not yet
 issued as a patent) on the grounds of nonstatutory double patenting using form paragraph
 8.33 and at
 least one of form paragraphs 8.34 - 8.39 .
 

 11. For applications claiming priority to, or the benefit of, an
 application filed before March 16, 2013, this form paragraph must be preceded by form
 paragraph 7.06 .
 
 
 

 ¶ 7.15.03.aia Rejection, 35 U.S.C. 102(a)(2), No Common Assignee or
 Inventor(s)
 

 Claim(s) [1] is/are rejected under 35 U.S.C.
 102(a)(2) as being [2] by [3] .
 

 Examiner Note:
 
 1. This form paragraph should only be used in an
 application filed on or after March 16, 2013, where the claims are being examined under
 35
 U.S.C. 102 / 103 as amended by the Leahy-Smith
 America Invents Act. This form paragraph must be preceded by form paragraph
 7.03.aia .
 

 2. This form paragraph is used to reject a claim over a U.S.
 patent, U.S. patent application publication or WIPO patent application publication with
 an earlier prior art date under 35 U.S.C. 102(a)(2) . The reference
 is not required to have a common assignee or inventor.
 

 3. 35 U.S.C. 102(a)(2) may be applied
 if the reference is one of the following: 
 a U.S. patent granted under 35 U.S.C. 151 
 that has an effectively filed date earlier than the effective filing date of the
 claimed invention;
 

 a U.S. Patent Application Publication published under
 35 U.S.C.
 122(b) that has an effectively filed date earlier than the
 effective filing date of the claimed invention; or
 

 a WIPO publication of an international application where the
 WIPO publication has an effectively filed date earlier than the effective filing date
 of the claimed invention. 
 
 
 If any of the three types of prior art documents under
 35 U.S.C.
 102(a)(2) was published before the effective filing date of the
 claimed invention under examination, then the prior art document is also applicable
 under 35
 U.S.C. 102(a)(1) . 
 

 

 4. In bracket 1, insert the claim numbers which are
 under rejection.
 

 5. In bracket 2, insert either --clearly anticipated--
 or --anticipated-- with an explanation at the end of the paragraph. 
 

 6. In bracket 3, insert the prior art relied
 upon.
 

 7. This form paragraph must be preceded by form
 paragraph 7.12.aia .
 
 
 

 ¶ 7.16.aia Rejection, 35 U.S.C. 102(a)(1), Public Use, On Sale, or
 Otherwise Publicly Available
 

 Claim [1] rejected under 35 U.S.C.
 102(a)(1) based upon a public use or sale or other public availability
 of the invention. [2] 

 Examiner Note:
 
 1. This form paragraph should only be used in an
 application filed on or after March 16, 2013, where the claims are being examined under
 35
 U.S.C. 102 / 103 as amended by the Leahy-Smith
 America Invents Act. This form paragraph must be preceded by form paragraph
 7.03.aia . 
 

 2. This form paragraph must be preceded either by form paragraphs
 7.07.aia 
 and 7.08.aia 
 or by form paragraph 7.103 .
 

 3. In bracket 1, insert the claim numbers which are
 under rejection.
 

 4. A full explanation of the evidence establishing a
 public use or sale or other public availability must be provided in bracket
 2.
 
 
 

 ¶ 7.17.aia 102(a)(1) Rejection Using Prior Art Excepted under
 102(b)(2)(C)
 

 Applicant has provided evidence in this file showing that the claimed
 invention and the subject matter disclosed in the prior art reference were owned by, or
 subject to an obligation of assignment to, the same entity as [1] not later than
 the effective filing date of the claimed invention, or the subject matter disclosed in the
 prior art reference was developed and the claimed invention was made by, or on behalf of one
 or more parties to a joint research agreement in effect not later than the effective filing
 date of the claimed invention. However, although reference [2] has been excepted
 as prior art under 35 U.S.C. 102(a)(2) , it is still applicable as prior art under
 35 U.S.C.
 102(a)(1) that cannot be excepted under 35 U.S.C.
 102(b)(2)(C) .
 

 Applicant may rely on the exception under
 35
 U.S.C. 102(b)(1)(A) to overcome this rejection under 35 U.S.C.
 102(a)(1) by a showing under 37 CFR 1.130(a) that the subject matter
 disclosed in the reference was obtained directly or indirectly from the inventor or a joint
 inventor of this application, and is therefore not prior art under 35 U.S.C.
 102(a)(1) . Alternatively, applicant may rely on the exception under
 35
 U.S.C. 102(b)(1)(B) by providing evidence of a prior public disclosure
 via an affidavit or declaration under 37 CFR 1.130(b) .
 

 Examiner Note:
 
 1. This form paragraph should only be used in an
 application filed on or after March 16, 2013, where the claims are being examined under
 35
 U.S.C. 102 / 103 as amended by the Leahy-Smith
 America Invents Act. This form paragraph must be preceded by form paragraph
 7.03.aia .
 

 2. This form paragraph must be included following form paragraph
 7.20.aia 
 or 7.15.aia 
 where the anticipation rejection is based on a reference that has been excepted under
 35 U.S.C.
 102(b)(2)(C) but still qualifies as prior art under
 35 U.S.C.
 102(a)(1) .
 

 3. In bracket 1, identify the common
 assignee.
 

 4. In bracket 2, identify the reference which has been
 excepted.
 
 
 

 ¶ 7.18.aia Rejection, Pre-AIA 35 U.S.C. 102(g)

 Claim [1] rejected under pre-AIA 35 U.S.C. 102
 (g) as being [2] by [3] . 
 

 Examiner Note:
 
 1. This form paragraph should only be used for an
 application or a patent that is being examined under 35 U.S.C.
 102 / 103 as amended by the Leahy-Smith
 America Invents Act (must be preceded by form paragraph 7.03.aia ) and
 MUST contain or have contained a claim to an invention having
 an effective filing date as defined in 35 U.S.C.
 100(i) that is before March 16, 2013 or a specific reference under
 35 U.S.C.
 120 , 121 , or 365(c) to any
 patent or application that contains or contained such a claim.
 

 2. In bracket 1, insert the claim numbers which are
 under rejection.
 

 3. In bracket 2, insert either --clearly anticipated--
 or --anticipated-- with an explanation at the end of the paragraph.
 

 4. In bracket 3, insert the prior art relied
 upon.
 

 5. This rejection must be preceded
 either by form paragraph 7.14.aia , or 
 by form paragraph 7.103 .
 
 
 

 

 [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 20:50:41