MPEP § 2165 — MPEP § 2165
Current through: 2022-07-01

2165-The Best Mode Requirement 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2100 

 Section 2165 
 

 
 
 
 
 
 2165 The Best Mode Requirement [R-08.2017]
 I. REQUIREMENT FOR A DISCLOSURE OF THE BEST MODE A third requirement of 35 U.S.C. 112(a) (applicable to
 applications filed on or after September 16, 2012) is that:
 

 
 The specification. . . shall set forth the best mode contemplated by
 the inventor or joint inventor of carrying out the invention.
 

 
 The third requirement of the first paragraph of
 pre-AIA 35 U.S.C.
 112 (applicable to applications filed before September 16, 2012)
 is that:
 

 
 The specification. . . shall set forth the best mode
 contemplated by the inventor of carrying out his invention.
 

 
 The best mode requirement is a safeguard against the desire on the part
 of some people to obtain patent protection without making a full disclosure as required
 by the statute. The requirement does not permit inventors to disclose only what they
 know to be their second-best embodiment, while retaining the best for themselves.
 In re Nelson, 280 F.2d 172, 126 USPQ 242 (CCPA 1960).
 

 Determining compliance with the best mode requirement requires a
 two-prong inquiry. First, it must be determined whether, at the time the application was
 filed, the inventor possessed a best mode for practicing the invention. This is a
 subjective inquiry which focuses on the inventor’s state of mind at the time of filing.
 Second, if the inventor did possess a best mode, it must be determined whether the
 written description disclosed the best mode such that a person skilled in the art could
 practice it. This is an objective inquiry, focusing on the scope of the claimed
 invention and the level of skill in the art. Eli Lilly & Co. v. Barr Labs.
 Inc., 251 F.3d 955, 963, 58 USPQ2d 1865, 1874 (Fed. Cir. 2001). All
 applicants are required to disclose for the claimed subject matter the best mode
 contemplated by the inventor even if the inventor was not the discoverer of that mode.
 Benger Labs. Ltd. v. R.K. Laros Co., 209 F. Supp. 639, 135 USPQ 11 (E.D. Pa. 1962).
 

 Failure to disclose the best mode need not rise to the level of active
 concealment or inequitable conduct in order to support a rejection. Where an inventor
 knows of a specific material or method that will make possible the successful
 reproduction of the claimed invention, but does not disclose it, the best mode
 requirement has not been satisfied. Union Carbide Corp. v. Borg-Warner, 550 F.2d 355, 193 USPQ 1 (6th Cir. 1977).
 

 II. IMPACT OF FAILURE TO DISCLOSE THE BEST MODE PURSUANT TO THE AIA Section 15 of the Leahy-Smith America Invents Act (AIA),
 Public Law 112-29, 125 Stat. 284 (September 16, 2011), did not eliminate the requirement
 in pre-AIA 35 U.S.C.
 112 , first paragraph, for a disclosure of the best mode, (see
 35 U.S.C.
 112(a) ) but effective September 16, 2011, it amended
 35 U.S.C.
 282 (the provision that sets forth defenses in a patent validity
 or infringement proceeding) to provide that the failure to disclose the best mode shall
 not be a basis on which any claim of a patent may be canceled or held invalid or
 otherwise unenforceable. As this change is applicable only in patent validity or
 infringement proceedings, it does not alter current patent examining practices as set
 forth above for evaluation of an application for compliance with the best mode
 requirement of 35
 U.S.C. 112 .
 

 Prior to September 16, 2011, for an invention claimed in
 a later-filed application to receive the benefit of the filing date of an earlier-filed
 application, 35 U.S.C.
 119(e) and 120 required that the invention
 claimed in the later-filed application be disclosed in the earlier-filed application in
 the manner provided by pre-AIA 35 U.S.C. 112 , first paragraph. Section 15 of the
 Leahy-Smith America Invents Act also amended 35 U.S.C. 119(e) and
 120 to modify this requirement such that the disclosure in the
 earlier filed application must be made in the manner provided by pre-AIA 35 U.S.C.
 112 , first paragraph, "other than the requirement to disclose the
 best mode." This change should not noticeably impact patent examining procedure.
 MPEP §
 201.08 provides that there is no need to determine whether the
 earlier-filed application contains a disclosure of the invention claimed in the later
 filed application in compliance with pre-AIA 35 U.S.C. 112 , first
 paragraph, unless the filing date of the earlier-filed application is actually necessary
 (e.g., to overcome a reference). Examiners should consult with their supervisors if it
 appears that an earlier-filed application does not disclose the best mode for carrying
 out a claimed invention and the filing date of the earlier-filed application is actually
 necessary. 35 U.S.C.
 119(e) and 120 were further amended effective
 for applications filed on or after September 16, 2012 to refer to 35 U.S.C.
 112(a) rather than pre-AIA 35 U.S.C. 112 , first
 paragraph.
 

 
 2165.01 Considerations Relevant to Best Mode [R-07.2022]
 I. DETERMINE WHAT IS THE INVENTION Determine what the invention is — the invention is defined in the
 claims. The specification need not set forth details not relating to the essence of
 the invention. In re Bosy, 360 F.2d 972, 149 USPQ 789 (CCPA 1966). See also
 Northern Telecom Ltd. v. Samsung Elec. Co., 215 F.3d 1281, 55
 USPQ2d 1065 (Fed. Cir. 2000) (Unclaimed matter that is unrelated to the operation of
 the claimed invention does not trigger the best mode requirement); Eli Lilly
 & Co. v. Barr Lab. Inc., 251 F.3d 955, 966, 58 USPQ2d 1865, 1877
 (Fed. Cir. 2001) (“[P]atentee’s failure to disclose an unclaimed preferred mode for
 accomplishing a routine detail does not violate the best mode requirement because one
 skilled in the art is aware of alternative means for accomplishing the routine detail
 that would still produce the best mode of the claimed invention.”).
 

 II. SPECIFIC EXAMPLE IS NOT REQUIRED There is no statutory requirement for the disclosure of a specific
 example — a patent specification is not intended nor required to be a production
 specification. In re Gay, 309 F.2d 768, 135 USPQ 311 (CCPA
 1962).
 

 The absence of a specific working example is not necessarily
 evidence that the best mode has not been disclosed, nor is the presence of one
 evidence that it has. Best mode may be represented by a preferred range of conditions
 or group of reactants. In re Honn, 364 F.2d 454, 150 USPQ 652
 (CCPA 1966).
 

 III. DESIGNATION AS BEST MODE IS NOT REQUIRED There is no requirement in the statute that inventors point out
 which of their embodiments they consider to be their best; that the disclosure
 includes the best mode contemplated by the inventor is enough to satisfy the statute.
 Ernsthausen v. Nakayama, 1 USPQ2d 1539 (Bd. Pat. App. & Inter. 1985).
 

 IV. UPDATING BEST MODE IS NOT REQUIRED There is no requirement to update in the context of a foreign
 priority application under 35 U.S.C. 119 , Standard
 Oil Co. v. Montedison, S.p.A., 494 F.Supp. 370, 206 USPQ 676 (D.Del. 1980)
 (better catalyst developed between Italian priority and U.S. filing dates).
 Furthermore, it is not necessary to update the best mode in applications claiming the
 benefit of an earlier filing date under 35 U.S.C. 119(e) or
 
 120 , which indicate that the disclosure in the earlier filed
 application must be made in the manner provided by 35 U.S.C.
 112(a) or pre-AIA 35 U.S.C. 112 , first
 paragraph, "other than the requirement to disclose the best mode." See
 MPEP §
 2165 , subsection II. 
 

 V. DEFECT IN BEST MODE CANNOT BE CURED BY NEW MATTER If the best mode contemplated by the inventor at the time of filing
 the application is not disclosed, such a defect cannot be cured by submitting an
 amendment seeking to put into the specification something required to be there when
 the patent application was originally filed. In re Hay, 534 F.2d 917, 189 USPQ 790 (CCPA 1976).
 

 Any proposed amendment of this type (adding a specific mode of
 practicing the invention not described in the application as filed) should be treated
 as new matter. New matter under 35 U.S.C. 132 and
 251 should be objected to and coupled with a requirement to
 cancel the new matter.
 

 

 
 2165.02 Best Mode Requirement Compared to Enablement
 Requirement [R-07.2022]
 

 The best mode requirement is a separate and distinct requirement from
 the enablement requirement of 35 U.S.C. 112(a) or the first
 paragraph of pre-AIA
 35 U.S.C. 112 . In re Newton, 414 F.2d 1400, 163 USPQ 34 (CCPA 1969).
 

 The best mode provision of 35 U.S.C. 112 is not directed to a
 situation where the application fails to set forth any mode — such failure is equivalent
 to nonenablement. In re Glass, 492 F.2d 1228, 181 USPQ 31 (CCPA 1974).
 

 The enablement requirement looks to placing the subject matter of the
 claims generally in the possession of the public. "If, however, the applicant [inventor]
 develops specific instrumentalities or techniques which are recognized by the [inventor]
 at the time of filing as the best way of carrying out the invention, then the best mode
 requirement imposes an obligation to disclose that information to the public as well."
 Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 1532, 3 USPQ 2d 1737, 1742 (Fed. Cir.
 1987), cert. denied, 484 U.S. 954 (1987).
 

 

 
 2165.03 Requirements for Rejection for Lack of Best Mode [R-11.2013]
 I. ASSUME BEST MODE IS DISCLOSED UNLESS THERE IS EVIDENCE TO THE CONTRARY The examiner should assume that the best mode is disclosed in the
 application, unless evidence is presented that is inconsistent with that assumption.
 It is extremely rare that a best mode rejection properly would be made in ex
 parte prosecution. The information that is necessary to form the basis
 for a rejection based on the failure to set forth the best mode is rarely accessible
 to the examiner, but is generally uncovered during inter partes 
 proceedings.
 

 II. EXAMINER MUST DETERMINE WHETHER THE INVENTOR KNEW THAT ONE MODE WAS BETTER
 THAN ANOTHER, AND IF SO, WHETHER THE DISCLOSURE IS ADEQUATE TO ENABLE ONE OF
 ORDINARY SKILL IN THE ART TO PRACTICE THE BEST MODE According to the approach used by the court in Chemcast
 Corp. v. Arco Indus., 913 F.2d 923, 16 USPQ2d 1033 (Fed. Cir. 1990), a
 proper best mode analysis has two components:
 

 
 (A) Determine whether, at the time the application was filed, the
 inventor knew of a mode of practicing the claimed invention that the inventor
 considered to be better than any other.
 
 

 

 The first component is a subjective inquiry because it focuses
 on the inventor’s state of mind at the time the application was filed. Unless
 the examiner has evidence that the inventors had information in their
 possession
 

 
 (1) at the time the application was filed

 (2) that a mode was considered to be better than any others
 by the inventors,
 

 
 

 
 there is no reason to address the second component and there is no
 proper basis for a best mode rejection. If the facts satisfy the first component,
 then, and only then, is the following second component analyzed:
 

 
 (B) Compare what was known in (A) with what was disclosed - is the
 disclosure adequate to enable one skilled in the art to practice the best
 mode?
 

 
 Assessing the adequacy of the disclosure in this regard is largely
 an objective inquiry that depends on the level of skill in the art. Is the
 information contained in the specification disclosure sufficient to enable a person
 skilled in the relevant art to make and use the best mode?
 

 A best mode rejection is proper only when the first inquiry can be
 answered in the affirmative, and the second inquiry answered in the negative with
 reasons to support the conclusion that the specification is nonenabling with respect
 to the best mode.
 

 

 
 2165.04 Examples of Evidence of Concealment [R-07.2022]

 In determining the adequacy of a best mode disclosure, only evidence of
 concealment (accidental or intentional) is to be considered. That evidence must tend to
 show that the quality of an inventor’s best mode disclosure is so
 poor as to effectively result in concealment. 
 

 I. EXAMPLES — BEST MODE REQUIREMENT SATISFIED In one case, even though the inventor had more information in his
 possession concerning the contemplated best mode than was disclosed (a known computer
 program) the specification was held to delineate the best mode in a manner sufficient
 to require only the application of routine skill to produce a workable digital
 computer program. In re Sherwood, 613 F.2d 809, 204 USPQ 537 (CCPA 1980).
 

 In another case, the claimed subject matter was a time controlled
 thermostat, but the application did not disclose the specific Quartzmatic motor which
 was used in a commercial embodiment. The court concluded that failure to disclose the
 commercial motor did not amount to concealment since similar clock motors were widely
 available and widely advertised. There was no evidence that the specific Quartzmatic
 motor was superior except possibly in price. Honeywell v. Diamond, 499 F.Supp 924, 208 USPQ 452 (D.D.C. 1980).
 

 There was held to be no violation of the best mode requirement even
 though the inventor did not disclose the only mode of calculating the stretch rate
 for plastic rods that he used because that mode would have been employed by those of
 ordinary skill in the art at the time the application was filed. W.L. Gore
 & Assoc., Inc. v. Garlock Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983).
 

 There was no best mode violation where the patentee failed to
 disclose in the specification “[k]nown ways to perform a known operation” to practice
 the claimed invention. “Known ways of performing a known operation cannot be deemed
 intentionally concealed absent evidence of intent to deliberately withhold that
 information.” High Concrete Structures Inc. v. New Enter. Stone & Lime
 Co., 377 F.3d 1379, 1384, 71 USPQ2d 1948, 1951 (Fed. Cir. 2004). The
 unintentional failure to disclose in the specification the use of a crane to support
 the patented frame in order to carry out the method of loading and tilting the frame
 was held not to defeat the best mode requirement because one of ordinary skill in the
 art would understand and use a crane to move heavy loads. Id. “The
 best mode requirement of [35 U.S.C.] § 112 is not violated
 by unintentional omission of information that would be readily known to persons in
 the field of the invention.” Id. 

 There was no best mode violation where there was no evidence that
 the monoclonal antibodies used by the inventors differed from those obtainable
 according to the processes described in the specification. It was not disputed that
 the inventors obtained the antibodies used in the invention by following the
 procedures in the specification, that these were the inventors’ preferred procedures,
 and that the data reported in the specification was for the antibody that the
 inventors had actually used. Scripps Clinic and Research Found. v. Genentech, Inc., 927 F.2d 1565, 18 USPQ 2d 1001 (Fed. Cir.
 1991).
 

 Where an organism was created by the insertion of genetic material
 into a cell obtained from generally available sources, all that was required to
 satisfy the best mode requirement was an adequate description of the means for
 carrying out the invention, not deposit of the cells. As to the observation that no
 scientist could ever duplicate exactly the cell used by applicants, the court
 observed that the issue is whether the disclosure is adequate, not that an exact
 duplication is necessary. Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 18 USPQ 2d 1016 (Fed. Cir.
 1991).
 

 There was held to be no violation of the best mode requirement where
 the Solicitor argued that concealment could be inferred from the disclosure in a
 specification that each analog is “surprisingly and unexpectedly more useful than one
 of the corresponding prostaglandins . . . for at least one of the pharmacological
 purposes.” It was argued that appellant must have had test results to substantiate
 this statement and this data should have been disclosed. The court concluded that no
 withholding could be inferred from general statements of increased selectivity and
 narrower spectrum of potency for these novel analogs, conclusions which could be
 drawn from the elementary pharmacological testing of the analogs. In
 re Bundy, 642 F.2d 430, 435, 209 USPQ 48, 52 (CCPA 1981).
 

 II. EXAMPLES — BEST MODE REQUIREMENT NOT SATISFIED The best mode requirement was held to be violated where inventors of
 a laser failed to disclose details of their preferred TiCuSil brazing method which
 were not contained in the prior art and were contrary to criteria for the use of
 TiCuSil as contained in the literature. Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 3 USPQ 2d 1737 (Fed. Cir.
 1987).
 

 The best mode requirement was violated because an inventor failed to
 disclose whether to use a specific surface treatment that he knew was necessary to
 the satisfactory performance of his invention, even though how to perform the
 treatment itself was known in the art. The argument that the best mode requirement
 may be met solely by reference to what was known in the prior art was rejected as
 incorrect. Dana Corp. v. IPC Ltd. P'ship, 860 F.2d 415, 8 USPQ2d 1692 (Fed. Cir. 1988).
 
 

 

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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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