After the application has been read and the claimed invention understood, a prior art search for the claimed invention is made. With the results of the prior art search, including any references provided by the applicant, the patent application should be reviewed and analyzed in conjunction with the state of the prior art to determine whether the claims define a useful, novel, nonobvious, and enabled invention that has been clearly described in the specification. The goal of examination is to clearly articulate any rejection early in the prosecution process so that the applicant has the opportunity to provide evidence of patentability and otherwise reply completely at the earliest opportunity. The examiner then reviews all the evidence, including arguments and evidence responsive to any rejection, before issuing the next Office action. Where the examiner determines that information reasonably necessary for the examination should be required from the applicant under 37 CFR 1.105, such a requirement should generally be made either prior to or with the first Office action on the merits and should follow the procedures in MPEP § 704.10 et seq.
Although this part of the Manual explains the procedure in rejecting claims, the examiner should never overlook the importance of his or her role in allowing claims which properly define the invention.
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The standards of patentability applied in the examination of claims must be the same throughout the Office. In every art, whether it be considered "complex," "newly developed," "crowded," or "competitive," all of the requirements for patentability (e.g., patent eligible, useful, novel, nonobvious, enabled, and clearly described as provided in 35 U.S.C. 101, 102, 103 and 112 ) must be met before a claim is allowed. The mere fact that a claim recites in detail all of the features of an invention (i.e., is a "picture" claim) is never, in itself, justification for the allowance of such a claim.
An application should not be allowed, unless and until issues pertinent to patentability have been raised and resolved in the course of examination and prosecution, since otherwise the resultant patent would not justify the statutory presumption of validity (35 U.S.C. 282 ), nor would it "strictly adhere" to the requirements laid down by Congress in the 1952 Act as interpreted by the Supreme Court. The standard to be applied in all cases is the "preponderance of the evidence" test. In other words, an examiner should reject a claim if, in view of the prior art and evidence of record, it is more likely than not that the claim is unpatentable.
When an application discloses patentable subject matter and it is apparent from the claims and the applicant’s arguments that the claims are intended to be directed to such patentable subject matter, but the claims in their present form cannot be allowed because of defects in form or omission of a limitation, the examiner should not stop with a bare objection or rejection of the claims. The examiner’s action should be constructive in nature and when possible should offer a definite suggestion for correction.
If the examiner is satisfied after the search has been completed that patentable subject matter has been disclosed and the record indicates that the applicant intends to claim such subject matter, he or she may note in the Office action that certain aspects or features of the patentable invention have not been claimed and that if properly claimed such claims may be given favorable consideration.
After reply by applicant or patent owner (§ 1.111 or § 1.945 ) to a non-final action and any comments by an inter partes reexamination requester (§ 1.947 ), the application or the patent under reexamination will be reconsidered and again examined. The applicant, or in the case of a reexamination proceeding the patent owner and any third party requester, will be notified if claims are rejected, objections or requirements made, or decisions favorable to patentability are made, in the same manner as after the first examination (§ 1.104 ). Applicant or patent owner may reply to such Office action in the same manner provided in § 1.111 or § 1.945, with or without amendment, unless such Office action indicates that it is made final (§ 1.113 ) or an appeal (§ 41.31 of this title) has been taken (§ 1.116 ), or in an inter partes reexamination, that it is an action closing prosecution (§ 1.949 ) or a right of appeal notice (§ 1.953 ).
37 CFR 1.112 provides for the reconsideration and continued examination of an application after reply by the applicant, and for the reconsideration and continued examination of a reexamination proceeding after a response by the patent owner. If claims are rejected, or objections or requirements are made, the applicant or patent owner will be notified in the same manner as notification was provided after the first examination. Applicant or patent owner may reply to such Office action (with or without amendment) in the same manner provided in 37 CFR 1.111, or 37 CFR 1.945 for an inter partes reexamination, unless such Office action indicates that it is made final (37 CFR 1.113 ), or an appeal under 37 CFR 41.31 has been taken (37 CFR 1.116 ), or such Office action indicates in an inter partes reexamination that it is an action closing prosecution (37 CFR 1.949 ) or a right of appeal notice (37 CFR 1.953 ). Once an appeal has been taken in an application or in an ex parte reexamination proceeding, any amendment (filed prior to an appeal brief) is subject to the provisions of 37 CFR 1.116(b) and (c), even if the appeal is in reply to a non-final Office action. See 37 CFR 41.33(b) for amendments filed with or after the filing of an appeal brief.
See MPEP Chapter 1100 for rejection of claims in an application for a Statutory Invention Registration.
The refusal to grant claims because the subject matter as claimed is considered unpatentable is called a "rejection." The term "rejected" must be applied to such claims in the examiner’s action. If the form of the claim (as distinguished from its substance) is improper, an "objection" is made. An example of a matter of form as to which objection is made is dependency of a claim on a rejected claim, if the dependent claim is otherwise allowable. See MPEP § 608.01(n). The practical difference between a rejection and an objection is that a rejection, involving the merits of the claim, is subject to review by the Patent Trial and Appeal Board, while an objection, if persisted, may be reviewed only by way of petition to the Director of the USPTO.
Similarly, the Board will not hear or decide issues pertaining to objections and formal matters which are not properly before the Board. These formal matters should not be combined in appeals to the Board.
[Editor Note: Information pertaining to the choice of best art, reliance on abstracts and foreign language documents, and the distinction between 35 U.S.C. 102 and 103 has been moved to MPEP § 2120. Information pertaining to determining the effective filing date of a claimed invention has been moved to MPEP § 2139.01 for applications subject to pre-AIA 35 U.S.C. 102 and MPEP § 2152.01 for applications subject to AIA 35 U.S.C. 102. Information pertaining to the rejection of claims corresponding to patent claims has been moved to MPEP § 706.06.]
By far the most frequent ground of rejection is on the ground of unpatentability in view of the prior art, that is, that the claimed subject matter is either not novel under 35 U.S.C. 102, or else it is obvious under 35 U.S.C. 103. The language to be used in rejecting claims should be unequivocal. See MPEP § 707.07(d).
For general information on rejections based on prior art, see MPEP § 2120 et seq. For information specific to rejections based on pre-AIA 35 U.S.C. 102, see MPEP §§ 2132 - 2139.03. For information specific to rejections under AIA 35 U.S.C. 102, see MPEP §§ 2151 -2156.
[Editor Note: Information pertaining to rejections under 35 U.S.C. 102(a)(1) or (a)(2) and pre-AIA 35 U.S.C. 102(a), (b), or (e) based on a printed publication or patent has been moved to MPEP § 2120.01.]
[Editor Note: Information pertaining to determining whether to apply 35 U.S.C. 102(a)(1) or 102(a)(2) has been moved to MPEP § 2152.05.]
[Editor Note: Information pertaining to whether to apply pre-AIA 35 U.S.C.102(a), (b), or (e) has been moved to MPEP § 2139.02.]
[Editor Note: Information pertaining to overcoming a 35 U.S.C. 102 rejection based on a printed publication or patent has been moved to MPEP § 2120.01.]
[Editor Note: Information pertaining to overcoming a 35 U.S.C. 102(a)(1) or 102(a)(2) rejection based on a printed publication or patent has been moved to MPEP § 2152.06.]
[Editor Note: Information pertaining to overcoming a rejection based on a printed publication or patent has been moved to MPEP § 2132.01 for rejections under pre-AIA 35 U.S.C. 102(a), MPEP § 2133.02(a) for rejections under pre-AIA 35 U.S.C. 102(b), and MPEP §§ 2136.05 - 2136.05(b) for rejections under pre-AIA 35 U.S.C. 102(e).]
[Editor Note: Information pertaining to rejections under 35 U.S.C. 102(a)(1) and pre-AIA 35 U.S.C. 102(a) or (b) based on knowledge by others or public use or sale has been moved to MPEP § 2120.02.]
[Editor Note: Information pertaining to rejections under 35 U.S.C. 102(a)(1) based on public use has been moved to MPEP § 2152.02(c), and information pertaining to rejections under 35 U.S.C. 102(a)(1) based on sales or offers for sale has been moved to MPEP § 2152.02(d).]
[Editor Note: Information pertaining to whether to make a rejection under pre-AIA 35 U.S.C. 102(a) or (b) when the claimed invention was known, in public use, or on sale, has been moved to MPEP § 2139.02. For additional information relating to such rejections see MPEP § 2132 for a discussion of rejections under pre-AIA 35 U.S.C. 102(a) and MPEP § 2133.03 et seq. for a discussion of case law treating the "public use" and "on sale" statutory bars of pre-AIA 35 U.S.C. 102(b).]
[Editor Note: Information pertaining to rejections under pre-AIA 35 U.S.C. 102(c) has been moved to MPEP § 2134.]
[Editor Note: Information pertaining to rejections under pre-AIA 35 U.S.C. 102(d) has been moved to MPEP § 2135.]
[Editor Note: Information pertaining to rejections under pre-AIA 35 U.S.C. 102(e) has been moved to MPEP § 2136.]
[Editor Note: Examination guidelines for applying references under pre-AIA 35 U.S.C. 102(e) have been moved to MPEP § 2136.]
[Editor Note: Information pertaining to provisional rejections based on a copending U.S. application has been moved to MPEP § 2154.01(d) for rejections under AIA 35 U.S.C. 102(a)(2) and to MPEP § 2136.01 for rejections under pre-AIA 35 U.S.C. 102(e).]
[Editor Note: Information pertaining to rejections under pre-AIA 35 U.S.C. 102(f) has been moved to MPEP § 2137.]
[Editor Note: Information pertaining to rejections under pre-AIA 35 U.S.C. 102(g) has been moved to MPEP § 2138.]
[Editor Note: Form paragraphs for use in rejections under AIA 35 U.S.C. 102 have been moved to MPEP § 2152.07, and form paragraphs for use in rejections under pre-AIA 35 U.S.C. 102 have been moved to MPEP § 2139.03.]
[Editor Note: Information pertaining to the contents of a 35 U.S.C. 103 rejection has been moved to MPEP § 2142.]
[Editor Note: Information pertaining to provisional obviousness rejections using provisional prior art under pre-AIA 35 U.S.C. 102(e) has been moved to MPEP § 2146.03(a), and information pertaining to the requirements to claim the benefit of a prior filed application under 35 U.S.C. 120 has been moved to MPEP § 2109, subsection VI.]
[Editor Note: Information pertaining to the applicability of pre-AIA 35 U.S.C. 103(c) to obviousness rejections using prior art under only pre-AIA 35 U.S.C. 102(e), (f), or (g) has been moved to MPEP § 2146.]
[Editor Note: Information pertaining to prior art disqualification under pre-AIA 35 U.S.C. 103(c) has been moved to MPEP § 2146.01.]
[Editor Note: Information pertaining to establishing common ownership or joint research agreement under pre-AIA 35 U.S.C. 103(c) has been moved to MPEP § 2146.02.]
[Editor Note: Information pertaining to examination procedure with respect to pre-AIA 35 U.S.C. 103(c) has been moved to MPEP § 2146.03.]
[Editor Note: Form paragraphs for making rejections under pre-AIA 35 U.S.C. 103(a) have been moved to MPEP § 2148 and form paragraphs for making rejections under AIA 35 U.S.C. 103 have been moved to MPEP § 2158.01. In addition, form paragraph 7.06.01 has been moved to MPEP § 2124.01.]
[Editor Note: Information pertaining to biotechnology process applications and pre-AIA 35 U.S.C. 103(b) has been moved to MPEP § 2147.]
Under the principles of compact prosecution, each claim should be reviewed for compliance with every statutory requirement for patentability in the initial review of the application, even if one or more claims are found to be deficient with respect to some statutory requirement. Deficiencies should be explained clearly, particularly when they serve as a basis for a rejection. Whenever practicable, USPTO personnel should indicate how rejections may be overcome and how problems may be resolved. Where a rejection not based on prior art is proper (lack of adequate written description, enablement, or utility, etc.) such rejection should be stated with a full development of the reasons rather than by a mere conclusion.
Rejections based on nonstatutory subject matter are explained in MPEP §§ 2105 and 2106 - 2106.07(c). Rejections based on lack of utility are explained in MPEP §§ 2107 - 2107.03. Rejections based on subject matter barred by the Atomic Energy Act are explained in MPEP § 2104.01. Rejections based on subject matter that is directed to tax strategies are explained in MPEP § 2124.01, and rejections based on subject matter that is directed to a human organism are explained in MPEP § 2105. Rejections based on duplicate claims are addressed in MPEP § 608.01(m), and double patenting rejections are addressed in MPEP § 804. See MPEP §§ 608.04 and 2163.06 for rejections based on new matter. Foreign filing without a license is discussed in MPEP § 140. Disclaimer and rejections after interference are explained in MPEP Chapter 2300, res judicata is discussed in MPEP § 2190, rejections in reissue applications are explained in MPEP Chapter 1400, and improper Markush groupings are explained in MPEP § 2117. Rejections based on 35 U.S.C. 112 are discussed in MPEP §§ 2161 - 2174 and 2185.
[Editor Note: The overview of the requirements of 35 U.S.C. 101 has been moved to MPEP § 2104. Form paragraphs for use in rejections based on lack of subject matter eligibility have been moved to MPEP § 2106.07(a)(1), the form paragraph for use in rejecting a claim as being directed to a human organism has been moved to MPEP § 2105, form paragraphs for use in rejections based on lack of utility have been moved to MPEP § 2107.02, subsection IV, and form paragraphs for use in rejecting claims based on improper inventorship in applications subject to AIA 35 U.S.C. 102 have been moved to MPEP § 2157.]
[Editor Note: Information pertaining to patents barred by the Atomic Energy Act has been moved to MPEP § 2104.01.]
[Editor Note: Form paragraphs for use in rejections made under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, have been moved to MPEP § 2166.]
[Editor Note: Form paragraphs for use in rejections made under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, have been moved to MPEP § 2175.]
[Editor Note: Form paragraphs for use in rejections made under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, have been moved to MPEP § 2187.]
[Editor Note: Information pertaining to duplicate claims has been moved to MPEP § 608.01(m).]
[Editor Note: Information pertaining to objection to an amendment that adds new matter to the specification has been moved to MPEP § 608.04(a).]
[Editor Note: Information pertaining to foreign filing without a foreign filing license has been moved to MPEP § 140, subsection III.]
[Editor Note: Information pertaining to rejections based on disclaimer has been moved to MPEP § 2304.04(c).]
[Editor Note: For rejections following an interference, see MPEP Chapter 2300. Effective September 16, 2012, former 37 CFR. 1.292 authorizing petitions seeking institution of public use proceedings was removed from title 37. For information regarding rejections after the institution of public use proceedings, see MPEP § 706.03(v) of the August 2012 revision of the MPEP available from www.uspto.gov/web/offices/pac/mpep/old/ mpep_E8R9.htm.]
[Editor Note: Information pertaining to rejections based on res judicata has been moved to MPEP § 2190, subsection II.]
[Editor Note: The examination of reissue applications is covered in MPEP Chapter 1400. See especially MPEP § 1412.03 for rejection of improperly broadened reissue claims, MPEP § 1444 for rejection of claims as being based on a defective reissue oath or declaration, and
