MPEP § 2132 — MPEP § 2132
Current through: 2022-07-01

2132-Pre-AIA 35 U.S.C. 102(a) 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2100 

 Section 2132 
 

 
 
 
 
 
 2132 Pre-AIA 35 U.S.C. 102(a) [R-10.2019]

 [Editor Note: This MPEP section is not 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 §
 2150 et seq. for examination of applications subject to those
 provisions. See MPEP § 2152 et seq. for a detailed
 discussion of AIA 35 U.S.C. 102(a) and (b) .] 

 
 Pre-AIA 35 U.S.C. 102 
 Conditions for patentability; novelty and loss of right to patent. 

 A person shall be entitled to a patent unless -

 
 (a) the invention was known or used by others in this country, or
 patented or described in a printed publication in this or a foreign country,
 before the invention thereof by the applicant for a patent.
 

 
 *****

 
 I. “KNOWN OR USED” 
 

 A. “Known or Used” Means Publicly Known or Used “The statutory language ‘known or used by others in this country’
 [ pre-AIA 35
 U.S.C. 102(a) ], means knowledge or use which is accessible to
 the public.” Carella v. Starlight Archery, 804 F.2d 135, 231 USPQ 644 (Fed. Cir. 1986).
 The knowledge or use is accessible to the public if there has been no deliberate
 attempt to keep it secret. W. L. Gore & Assoc .
 v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983).
 

 See MPEP § 2128 - § 2128.02 for case law concerning
 public accessibility of publications. 
 

 B. Another’s Sale of a Product Made by a Secret Process Can Be a Pre-AIA 35
 U.S.C. 102(a) Public Use if the Process Can Be Determined by Examining the
 Product “The nonsecret use of a claimed process in the usual course of
 producing articles for commercial purposes is a public use.” But a secret use of the
 process coupled with the sale of the product does not result in a public use of the
 process unless the public could learn the claimed process by examining the product.
 Therefore, secret use of a process by another, even if the product is commercially
 sold, cannot result in a rejection under pre-AIA 35 U.S.C. 102(a) if an
 examination of the product would not reveal the process. Id. 

 II. “IN THIS COUNTRY” Only Knowledge or Use in the U.S. Can Be Used in a Pre-AIA 35 U.S.C.
 102(a) Rejection The knowledge or use relied on in a pre-AIA 35 U.S.C.
 102(a) rejection must be knowledge or use “in this country.”
 Prior knowledge or use which is not present in the United States, even if widespread
 in a foreign country, cannot be the basis of a rejection under pre-AIA 35 U.S.C.
 102(a) . In re Ekenstam, 256 F.2d 321, 118 USPQ 349 (CCPA 1958). Note that the
 changes made to pre-AIA 35 U.S.C. 104 by NAFTA (Public Law 103-182) and
 Uruguay Round Agreements Act (Public Law 103-465) do not modify the meaning of “in
 this country” as used in pre-AIA 35 U.S.C. 102(a) and thus
 “in this country” means in the United States only and does not include other WTO or
 NAFTA member countries for purposes of pre-AIA 35 U.S.C. 102(a) 
 rejections. 
 

 III. “BY OTHERS” “Others” Means Any Combination of Authors or Inventors Different From the
 Inventive Entity The term “others” in pre-AIA 35 U.S.C. 102(a) refers
 to any entity which is different from the inventive entity. The entity need only
 differ by one person to be “by others.” This holds true for all types of references
 eligible as prior art under pre-AIA 35 U.S.C. 102(a) 
 including publications as well as public knowledge and use. Any other interpretation
 of pre-AIA 35
 U.S.C. 102(a) “would negate the one year [grace] period
 afforded under §
 102(b) .” In re Katz, 687 F.2d 450, 215 USPQ
 14 (CCPA 1982).
 

 IV. “PATENTED IN THIS OR A FOREIGN COUNTRY” See MPEP
 § 2126 for information on the use of secret patents as prior
 art.
 

 
 2132.01 Overcoming a Pre-AIA 35 U.S.C. 102(a) Rejection based on a
 Printed Publication or Patent [R-10.2019]
 

 [Editor Note: This MPEP section is not 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 §
 2150 et seq. for examination of applications subject to
 those provisions. See MPEP § 2152 et seq. for a detailed
 discussion of AIA 35 U.S.C. 102(a) and
 (b) . 

 “Derivation” or “derived” as used in the
 discussion below is in the context of pre-AIA law. “Derivation proceedings” as
 created in the AIA are discussed in MPEP §
 2310 et seq.] 

 In all applications, an applicant may overcome a
 pre-AIA 35 U.S.C.
 102 rejection by persuasively arguing that the claims are
 patentably distinguishable from the prior art, or by amending the claims to patentably
 distinguish over the prior art. Additional ways to overcome a rejection based on
 pre-AIA 35 U.S.C.
 102 prior art depend on the applicable paragraph of
 pre-AIA 35 U.S.C.
 102 . See MPEP § 2133.02(a) for overcoming a
 rejection under pre-AIA 35 U.S.C. 102(b) and
 MPEP §
 2136.05 et seq. for overcoming a rejection under pre-AIA 35 U.S.C.
 102(e) . 
 

 A rejection based on pre-AIA 35 U.S.C. 102(a) can be
 overcome by:
 

 
 (A) Persuasively arguing that the claims are patentably
 distinguishable from the prior art;
 

 (B) Amending the claims to patentably distinguish over the prior
 art;
 

 (C) Filing an affidavit or declaration under 37 CFR 1.131(a)
 showing prior invention, if the reference is not a U.S. patent
 or a U.S. patent application publication claiming interfering subject matter as
 defined in 37
 CFR 41.203(a) (subject matter of a claim of one party that
 would, if prior art, have anticipated or rendered obvious the subject matter of a
 claim of the opposing party and vice versa). See MPEP § 715 for
 information on the requirements of 37 CFR 1.131(a) affidavits.
 When the claims of the reference U.S. patent or U.S. patent application
 publication and the application are directed to the same invention or are obvious
 variants, an affidavit or declaration under 37 CFR
 1.131(a) is not appropriate to overcome the rejection;
 

 (D) Filing an affidavit or declaration under 37 CFR 1.132 
 showing that the reference invention is not by “another,” i.e., showing a
 reference’s disclosure was derived from the inventor’s or at least one joint
 inventor’s own work. See MPEP §§ 715.01(a) ,
 715.01(c) , and 716.10 ;
 

 (E) Submitting and perfecting a claim to priority under
 35 U.S.C.
 119(a) - (d) . See MPEP §
 216 ; 
 

 (F) Submitting and perfecting a benefit claim under 35 U.S.C.
 119(e) or 120 . See MPEP §
 211 et seq. for detailed information
 pertaining to benefit claims.
 

 I. SHOWING REFERENCE’S DISCLOSURE WAS DERIVED FROM INVENTOR’S OR AT LEAST ONE
 JOINT INVENTOR’S OWN WORK A prima facie case is made out under
 pre-AIA 35
 U.S.C. 102(a) if, within 1 year of the filing date, the
 invention, or an obvious variant thereof, is described in a “printed publication”
 whose authorship differs in any way from the inventive entity unless it is stated
 within the publication itself that the publication is describing the inventor's or at
 least one joint inventor's work. In re Katz, 687 F.2d 450,
 215 USPQ 14 (CCPA 1982). See MPEP § 2128 for case law on what
 constitutes a “printed publication.” Note that when the reference is a U.S. patent,
 U.S. patent application publication, or certain international application publication
 published within the year prior to the application filing date, a pre-AIA 35 U.S.C.
 102(e) rejection should be made. See MPEP § 2136 -
 §
 2136.05 for case law dealing with pre-AIA 35 U.S.C.
 102(e) .
 

 An inventor's or at least one joint inventor's disclosure of his or
 her own work within the year before the application filing date cannot be used
 against the application as prior art under pre-AIA 35 U.S.C. 102(a) .
 In re Katz, 687 F.2d 450, 215 USPQ 14 (CCPA 1982) (discussed
 below). Therefore, where the inventor or at least one joint inventor is one of the
 co-authors of a publication cited against the application, the publication may be
 removed as a reference by the filing of affidavits made out by the other authors
 establishing that the relevant portions of the publication originated with, or were
 obtained from, the inventor or at least one joint inventor. Such affidavits are
 called disclaiming affidavits. Ex parte Hirschler, 110 USPQ 384
 (Bd. App. 1952). The rejection can also be overcome by submission of a specific
 declaration by the inventor or at least one joint inventor establishing that the
 article is describing the inventor's own work. In re Katz, 687
 F.2d 450, 215 USPQ 14 (CCPA 1982). However, an affidavit or declaration under
 37 CFR
 1.132 that is only a naked assertion of inventorship and that
 fails to provide any context, explanation or evidence to support that assertion is
 insufficient to show that the relied-upon subject matter was the inventor’s own work.
 See EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc., 859
 F.3d 1341, 123 USPQ2d 1146 (Fed. Cir. 2017) (finding that a declaration submitted by
 inventor Campbell insufficient to establish that he and Guth (now deceased) were the
 inventors of the subject matter disclosed in a patent naming Campbell, Guth,
 Danziger, and Padron as inventors because “[n]othing in the declaration itself, or in
 addition to the declaration, provides any context, explanation, or evidence to lend
 credence to the inventor's bare assertion” and more than twenty years had passed
 since the alleged events occurred. Id. at 1345; 123 USPQ2d at
 1149). However, if there is evidence that the co-author has refused to disclaim
 inventorship and believes himself or herself to be an inventor, the inventor's
 affidavit or declaration will not be enough to establish that the inventor or the at
 least one joint inventor is the sole inventor of the subject matter in the article
 and the rejection will stand. Ex parte Kroger, 219 USPQ 370 (Bd.
 App. 1982) (discussed below). It is also possible to overcome the rejection by adding
 the coauthors as joint inventors to the application if the requirements of
 35 U.S.C.
 116 , third paragraph, are met. In re
 Searles, 422 F.2d 431, 164 USPQ 623 (CCPA 1970).
 

 In In re Katz, 687 F.2d 450, 215 USPQ 14 (CCPA
 1982), Katz stated in a declaration that the coauthors of the publication, Chiorazzi
 and Eshhar, “were students working under the direction and supervision of the
 inventor, Dr. David H. Katz.” The court held that this declaration, in combination
 with the fact that the publication was a research paper, was enough to establish Katz
 as the sole inventor and that the work described in the publication was his own. In
 research papers, students involved only with assay and testing are normally listed as
 coauthors but are not considered joint inventors.
 

 In Ex parte Kroger, 219 USPQ 370 (Bd. App. 1982),
 Kroger, Knaster and others were listed as authors on an article on photovoltaic power
 generation. The article was used to reject the claims of an application listing
 Kroger and Rod as joint inventors. Kroger and Rod submitted affidavits declaring
 themselves to be the joint inventors. The affidavits also stated that Knaster merely
 carried out assignments and worked under the supervision and direction of Kroger. The
 Board stated that if this were the only evidence in the case, it would be
 established, under In re Katz, that Kroger and Rod were the only
 joint inventors. However, in this case, there was evidence that Knaster had refused
 to sign an affidavit disclaiming inventorship and Knaster had introduced evidence
 into the case in the form of a letter to the USPTO in which he alleged that he was a
 joint inventor. The Board held that the evidence had not been fully developed enough
 to overcome the rejection. Note that the rejection had been made under
 pre-AIA 35
 U.S.C. 102(f) but the Board treated the issue the same as if it
 had arisen under pre-AIA 35 U.S.C. 102(a) . See also case law dealing with
 overcoming pre-AIA
 35 U.S.C. 102(e) rejections as presented in
 MPEP §
 2136.05 . Many of the issues are the same.
 

 II. A 37 CFR 1.131 AFFIDAVIT CAN BE USED TO OVERCOME A PRE-AIA 35 U.S.C. 102(a)
 REJECTION When the reference is not a statutory bar under pre-AIA 35 U.S.C. 102(b), (c), or
 (d) , applicant can overcome the rejection by swearing back of
 the reference through the submission of an affidavit under 37 CFR
 1.131 . In re Foster, 343 F.2d 980, 145 USPQ
 166 (CCPA 1965). If the reference is disclosing the inventor's or at least one joint
 inventor's own work as derived from the inventor or joint inventor, either a
 37 CFR
 1.131 affidavit to antedate the reference or a
 37 CFR
 1.132 affidavit to show derivation of the reference subject
 matter from the inventor or joint inventor and invention by the inventor or joint
 inventor may be submitted. In re Facius, 408 F.2d 1396, 161 USPQ
 294 (CCPA 1969). See MPEP § 715 for more information on when an affidavit under
 37 CFR
 1.131 can be used to overcome a reference and what evidence is
 required.
 

 

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 2101-2102-[Reserved] 

 2103-Patent Examination Process 

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

 
 

 2105-Patent Eligible Subject Matter — Living Subject Matter 

 2106-Patent Subject Matter Eligibility 
 2106.01-[Reserved] 

 2106.02-[Reserved] 

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

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

 2106.04(a)(2)-Abstract Idea Groupings 

 2106.04(a)(3)-Tentative Abstract Ideas 

 
 

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

 2106.04(c)-The Markedly Different Characteristics Analysis 

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

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

 
 

 
 

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

 2106.05(b)-Particular Machine 

 2106.05(c)-Particular Transformation 

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

 2106.05(e)-Other Meaningful Limitations 

 2106.05(f)-Mere Instructions To Apply An Exception 

 2106.05(g)-Insignificant Extra-Solution Activity 

 2106.05(h)-Field of Use and Technological Environment 

 
 

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

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

 
 

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

 
 

 2106.07(b)-Evaluating Applicant’s Response 

 2106.07(c)-Clarifying the Record 

 
 

 
 

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

 2107.02-Procedural Considerations Related to Rejections for Lack of Utility 

 2107.03-Special Considerations for Asserted Therapeutic or Pharmacological Utilities 

 
 

 2108-[Reserved] 

 2109-Inventorship 

 2109.01-Joint Inventorship 

 2110-[Reserved] 

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

 2111.02-Effect of Preamble 

 2111.03-Transitional Phrases 

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

 2111.05-Functional and Nonfunctional Descriptive Material 

 
 

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

 2112.02-Process Claims 

 
 

 2113-Product-by-Process Claims 

 2114-Apparatus and Article Claims — Functional Language 

 2115-Material or Article Worked Upon by Apparatus 

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

 
 

 2117-Markush Claims 

 2118-2119-[Reserved] 

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

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

 
 

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

 2121.02-Compounds and Compositions — What Constitutes Enabling Prior Art 

 2121.03-Plant Genetics — What Constitutes Enabling Prior Art 

 2121.04-Apparatus and Articles — What Constitutes Enabling Prior Art 

 
 

 2122-Discussion of Utility in the Prior Art 

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

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

 
 

 2125-Drawings as Prior Art 

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

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

 
 

 2127-Domestic and Foreign Patent Applications as Prior Art 

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

 2128.02-Date Publication Is Available as a Reference 

 
 

 2129-Admissions as Prior Art 

 2130-[Reserved] 

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

 2131.02-Genus-Species Situations 

 2131.03-Anticipation of Ranges 

 2131.04-Secondary Considerations 

 2131.05-Nonanalogous or Disparaging Prior Art 

 
 

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

 
 

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

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

 
 

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

 2133.03(b)-“On Sale” 

 2133.03(c)-The “Invention” 

 2133.03(d)-“In This Country” 

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

 2133.03(e)(2)-Intent 

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

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

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

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

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

 
 

 
 

 
 

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

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

 
 

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

 2136.02-Content of the Prior Art Available Against the Claims 

 2136.03-Critical Reference Date 

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

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

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

 
 

 
 

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

 2137.02-[Reserved] 

 
 

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

 2138.02-“The Invention Was Made in This Country” 

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

 2138.04-“Conception” 

 2138.05-“Reduction to Practice” 

 2138.06-“Reasonable Diligence” 

 
 

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

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

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

 
 

 2140-[Reserved] 

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

 
 

 2141.02-Differences Between Prior Art and Claimed Invention 

 2141.03-Level of Ordinary Skill in the Art 

 
 

 2142-Legal Concept of Prima Facie Obviousness 

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

 2143.02-Reasonable Expectation of Success Is Required 

 2143.03-All Claim Limitations Must Be Considered 

 
 

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

 2144.02-Reliance on Scientific Theory 

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

 2144.04-Legal Precedent as Source of Supporting Rationale 

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

 2144.06-Art Recognized Equivalence for the Same Purpose 

 2144.07-Art Recognized Suitability for an Intended Purpose 

 2144.08-Obviousness of Species When Prior Art Teaches Genus 

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

 
 

 2145-Consideration of Applicant’s Rebuttal Arguments and Evidence 

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

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

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

 
 

 
 

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

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

 2149-[Reserved] 

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

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

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

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

 2152.02(b)-Described in a Printed Publication 

 2152.02(c)-In Public Use 

 2152.02(d)-On Sale 

 2152.02(e)-Otherwise Available to the Public 

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

 
 

 2152.03-Admissions 

 2152.04-The Meaning of “Disclosure” 

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

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

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

 
 

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

 2153.01(b)-[Reserved] 

 
 

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

 
 

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

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

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

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

 
 

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

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

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

 
 

 
 

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

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

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

 2155.04-Enablement 

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

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

 
 

 2156-Joint Research Agreements 

 2157-Improper Naming of Inventors 

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

 
 

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

 2159.02-Applications Filed on or After March 16, 2013 

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

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

 
 

 2160-[Reserved] 

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

 
 

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

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

 2163.02-Standard for Determining Compliance With the Written Description Requirement 

 2163.03-Typical Circumstances Where Adequate Written Description Issue Arises 

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

 2163.05-Changes to the Scope of Claims 

 2163.06-Relationship of Written Description Requirement to New Matter 

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

 2163.07(b)-Incorporation by Reference 

 
 

 
 

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

 2164.01(b)-How to Make the Claimed Invention 

 2164.01(c)-How to Use the Claimed Invention 

 
 

 2164.02-Working and Prophetic Examples 

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

 2164.04-Burden on the Examiner Under the Enablement Requirement 

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

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

 
 

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

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

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

 
 

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

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

 2164.08(b)-Inoperative Subject Matter 

 2164.08(c)-Critical Feature Not Claimed 

 
 

 
 

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

 2165.02-Best Mode Requirement Compared to Enablement Requirement 

 2165.03-Requirements for Rejection for Lack of Best Mode 

 2165.04-Examples of Evidence of Concealment 

 
 

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

 2167-2170-[Reserved] 

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

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

 
 

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

 2173.02-Determining Whether Claim Language is Definite 

 2173.03-Correspondence Between Specification and Claims 

 2173.04-Breadth Is Not Indefiniteness 

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

 2173.05(b)-Relative Terminology 

 2173.05(c)-Numerical Ranges and Amounts Limitations 

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

 2173.05(e)-Lack of Antecedent Basis 

 2173.05(f)-Reference to Limitations in Another Claim 

 2173.05(g)-Functional Limitations 

 2173.05(h)-Alternative Limitations 

 2173.05(i)-Negative Limitations 

 2173.05(j)-Old Combination 

 2173.05(k)-Aggregation 

 2173.05(l)-[Reserved] 

 2173.05(m)-Prolix 

 2173.05(n)-Multiplicity 

 2173.05(o)-Double Inclusion 

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

 2173.05(q)-“Use” Claims 

 2173.05(r)-Omnibus Claim 

 2173.05(s)-Reference to Figures or Tables 

 2173.05(t)-Chemical Formula 

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

 2173.05(v)-Mere Function of Machine 

 
 

 2173.06-Practice Compact Prosecution 

 
 

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

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

 2176-2180-[Reserved] 

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

 2182-Search and Identification of the Prior Art 

 2183-Making a Prima Facie Case of Equivalence 

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

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

 2186-Relationship to the Doctrine of Equivalents 

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

 2188-2189-[Reserved] 

 2190-Prosecution Laches and Res Judicata 

 

 

 
 

 
 
 

 
 

 

 
 
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 03/09/2026 20:49:32