Adding data (MPEP 2100) from USPTO

data/2100/s2101-2102.html.txt

@@ -0,0 +1,9 @@
+[
+# 2101-2102 [Reserved]
+
+
+
+[[top]](#top)
+
+
+]

data/2100/s2103.html.txt

@@ -0,0 +1,402 @@
+[
+# 2103 Patent Examination Process [R-10.2019]
+
+**I.** **DETERMINE WHAT INVENTION IS SOUGHT TO BE PATENTED**It is essential that patent applicants obtain a prompt yet
+ complete examination of their applications. Under the principles of compact prosecution,
+ each claim should be reviewed for compliance with every statutory requirement for
+ patentability in the initial review of the application, even if one or more claims are
+ found to be deficient with respect to some statutory requirement. Thus, examiners should
+ state all reasons and bases for rejecting claims in the first Office action.
+ Deficiencies should be explained clearly, particularly when they serve as a basis for a
+ rejection. Whenever practicable, examiners and patent reexamination specialists should
+ indicate how rejections may be overcome and how problems may be resolved. Where a
+ rejection not based on prior art is proper (lack of adequate written description,
+ enablement, or utility, etc.) such rejection should be stated with a full development of
+ the reasons rather than by a mere conclusion. A failure to follow this approach can lead
+ to unnecessary delays in the prosecution of the application.
+ 
+
+
+The examination of reissue applications is covered in
+ **[MPEP Chapter
+ 1400](mpep-1400.html#d0e134581)**, reexamination proceedings are covered in
+ **[MPEP Chapters
+ 2200](mpep-2200.html#d0e220689)** (*ex parte*) and **[2600](mpep-2600.html#d0e249708)** (*inter
+ partes*), and supplemental examination is covered in **[MPEP Chapter
+ 2800](mpep-2800.html#ch2800_d1fea8_279ab_9)**. 
+ 
+
+
+Prior to focusing on specific statutory requirements,
+ examiners must begin examination by determining what, precisely, the inventor or joint
+ inventor has invented and is seeking to patent, and how the claims relate to and define
+ that invention. Examiners will review the complete specification, including the detailed
+ description of the invention, any specific embodiments that have been disclosed, the
+ claims and any specific, substantial, and credible utilities that have been asserted for
+ the invention. 
+ 
+
+
+After obtaining an understanding of what applicant
+ invented, the examiner will conduct a search of the prior art and determine whether the
+ invention as claimed complies with all statutory requirements. 
+ 
+
+***A.*** ***Identify and Understand Any Utility for the Invention***The claimed invention as a whole must be useful. The
+ purpose of this requirement is to limit patent protection to inventions that possess
+ a certain level of "real world" value, as opposed to subject matter that represents
+ nothing more than an idea or concept, or is simply a starting point for future
+ investigation or research *(Brenner v. Manson,* 383 U.S. 519,
+ 528-36, 148 USPQ 689, 693-96 (1966); *In re Fisher,* 421 F.3d 1365,
+ 76 USPQ2d 1225 (Fed. Cir. 2005); *In re Ziegler,* 992 F.2d 1197,
+ 1200-03, 26 USPQ2d 1600, 1603-06 (Fed. Cir. 1993)).
+ 
+
+
+Examiners should review the application to identify any
+ asserted utility. The applicant is in the best position to explain why an invention
+ is believed useful. Accordingly, a complete disclosure should contain some indication
+ of the practical application for the claimed invention, i.e., why the applicant
+ believes the claimed invention is useful. Such a statement will usually explain the
+ purpose of the invention or how the invention may be used (e.g., a compound is
+ believed to be useful in the treatment of a particular disorder). Note that the
+ concept of a "practical application" in the evaluation of utility is different from
+ the concept of whether a judicial exception is integrated into a "practical
+ application" in the evaluation of subject matter eligibility. Regardless of the form
+ of statement of utility, it must enable one ordinarily skilled in the art to
+ understand why the applicant believes the claimed invention is useful. See
+ **[MPEP §
+ 2106](s2106.html#d0e197244)** for subject matter eligibility guidelines and
+ **[MPEP §
+ 2107](s2107.html#d0e198469)** for utility examination guidelines. An applicant may
+ assert more than one utility and practical application, but only one is necessary.
+ Alternatively, an applicant may rely on the contemporaneous art to provide that the
+ claimed invention has a well-established utility.
+ 
+
+***B.*** ***Review the Detailed Disclosure and Specific Embodiments of the Invention
+ To Understand What the Applicant Has Invented***The written description will provide the clearest
+ explanation of the applicant’s invention, by exemplifying the invention, explaining
+ how it relates to the prior art and explaining the relative significance of various
+ features of the invention. Accordingly, examiners should continue their evaluation
+ by
+ 
+
+
+* (A) determining the function of the invention,
+ that is, what the invention does when used as disclosed (e.g., the
+ functionality of a programmed computer); and
+* (B) determining the features necessary to
+ accomplish at least one asserted practical application.
+
+
+Patent applicants can assist the USPTO by preparing
+ applications that clearly set forth these aspects of an invention.
+ 
+
+***C.*** ***Review the Claims***The claims define the property rights provided by a
+ patent, and thus require careful scrutiny. The goal of claim analysis is to identify
+ the boundaries of the protection sought by the applicant and to understand how the
+ claims relate to and define what the applicant has indicated is the invention.
+ Examiners must first determine the scope of a claim by thoroughly analyzing the
+ language of the claim before determining if the claim complies with each statutory
+ requirement for patentability. See *In re Hiniker Co.,* 150 F.3d
+ 1362, 1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998) ("[T]he name of the game is the
+ claim."). 
+ 
+
+
+Examiners should begin claim analysis by identifying
+ and evaluating each claim limitation. For processes, the claim limitations will
+ define steps or acts to be performed. For products, the claim limitations will define
+ discrete physical structures or materials. Product claims are claims that are
+ directed to either machines, manufactures or compositions of matter. 
+ 
+
+
+Examiners should then correlate each claim limitation
+ to all portions of the disclosure that describe the claim limitation. This is to be
+ done in all cases, regardless of whether the claimed invention is defined using
+ means- (or step-) plus- function language. The correlation step will ensure that
+ examiners correctly interpret each claim limitation in light of the specification. 
+ 
+
+
+The subject matter of a properly construed claim is
+ defined by the terms that limit the scope of the claim when given their broadest
+ reasonable interpretation. It is this subject matter that must be examined. As a
+ general matter, grammar and the plain meaning of terms as understood by one having
+ ordinary skill in the art used in a claim will dictate whether, and to what extent,
+ the language limits the claim scope. See **[MPEP § 2111.01](s2111.html#d0e200409)** for more information
+ on the plain meaning of claim language. Language that suggests or makes a feature or
+ step optional but does not require that feature or step does not limit the scope of a
+ claim under the broadest reasonable claim interpretation. The following types of
+ claim language may raise a question as to its limiting effect:
+ 
+
+
+* (A) statements of intended use or field of use,
+ including statements of purpose or intended use in the preamble,
+* (B) "adapted to" or "adapted for" clauses,
+* (C) "wherein" or "whereby" clauses,
+* (D) contingent limitations,
+* (E) printed matter, or
+* (F) terms with associated functional
+ language.
+
+
+This list of examples is not intended to be exhaustive.
+ The determination of whether particular language is a limitation in a claim depends
+ on the specific facts of the case. See, e.g., *Griffin v. Bertina,*
+ 285 F.3d 1029, 1034, 62 USPQ2d 1431 (Fed. Cir. 2002)(finding that a "wherein" clause
+ limited a process claim where the clause gave "meaning and purpose to the
+ manipulative steps"). For more information about these types of claim language and
+ how to determine whether they have a limiting effect on claim scope, see
+ **[MPEP §§
+ 2111.02](s2111.html#d0e200689)** through **[2111.05](s2111.html#ch2100_d1b148_1ea0c_2c0)**.
+ 
+
+
+ Examiners are to give claims their broadest
+ reasonable interpretation in light of the supporting disclosure. See
+ **[MPEP §
+ 2111](s2111.html#d0e200352)**. Disclosure may be express, implicit, or inherent.
+ Examiners are to give claimed means- (or step-) plus- function limitations their
+ broadest reasonable interpretation consistent with all corresponding structures (or
+ materials or acts) described in the specification and their equivalents. See
+ *In re Aoyama,* 656 F.3d 1293, 1297, 99 USPQ2d 1936, 1939 (Fed.
+ Cir. 2011). Further guidance in interpreting the scope of equivalents is provided in
+ **[MPEP §§
+ 2181](s2181.html#d0e219279)** through  **[2186](s2186.html#d0e220631)**. 
+ 
+
+
+While it is appropriate to use the specification to
+ determine what applicant intends a term to mean, a positive limitation from the
+ specification cannot be read into a claim that does not itself impose that
+ limitation. See **[MPEP §
+ 2111.01](s2111.html#d0e200409)**, subsection II. As explained in
+ **[MPEP §
+ 2111](s2111.html#d0e200352)**, giving a claim its broadest reasonable interpretation
+ during prosecution will reduce the possibility that the claim, when issued, will be
+ interpreted more broadly than is justified.
+ 
+
+
+Finally, when evaluating the scope of a claim, every
+ limitation in the claim must be considered. Examiners may not dissect a claimed
+ invention into discrete elements and then evaluate the elements in isolation.
+ Instead, the claim as a whole must be considered. See, e.g., *Diamond v.
+ Diehr,* 450 U.S. 175, 188-89, 209 USPQ 1, 9 (1981) ("In determining the
+ eligibility of respondents’ claimed process for patent protection under
+ **[§
+ 101](mpep-9015-appx-l.html#d0e302376)**, their claims must be considered as a whole. It is
+ inappropriate to dissect the claims into old and new elements and then to ignore the
+ presence of the old elements in the analysis. This is particularly true in a process
+ claim because a new combination of steps in a process may be patentable even though
+ all the constituents of the combination were well known and in common use before the
+ combination was made."). 
+ 
+
+**II.** **CONDUCT A THOROUGH SEARCH OF THE PRIOR ART**Prior to evaluating the claimed invention for
+ patentability, examiners are expected to conduct a thorough search of the prior art. See
+ **[MPEP §§
+ 904](s904.html#d0e115569)** through  **[904.03](s904.html#d0e115840)** for more information about how
+ to conduct a search. In many cases, the result of such a search will contribute to
+ examiners understanding of the invention. Both claimed and unclaimed aspects of the
+ invention described in the specification should be searched if there is a reasonable
+ expectation that the unclaimed aspects may be later claimed. A search must take into
+ account any structure or material described in the specification and its equivalents
+ which correspond to the claimed means- (or step-) plus- function limitation, in
+ accordance with **[35 U.S.C. 112(f)](mpep-9015-appx-l.html#al_d1d85b_2ae7b_ec)** and
+ **[MPEP §
+ 2181](s2181.html#d0e219279)** through **[MPEP § 2186](s2186.html#d0e220631)**.
+ 
+
+**III.** **DETERMINE WHETHER THE CLAIMED INVENTION COMPLIES WITH 35 U.S.C. 101*** 
+
+***A.*** ***Consider the Breadth of 35 U.S.C. 101 Under Controlling Law*****[Section
+ 101](mpep-9015-appx-l.html#d0e302376)** of title 35, United States Code, provides:
+ 
+
+
+
+> 
+> Whoever invents or discovers any new and useful
+>  process, machine, manufacture, or composition of matter, or any new and useful
+>  improvement thereof, may obtain a patent therefor, subject to the conditions and
+>  requirements of this title.
+>  
+> 
+> 
+> 
+
+
+**[35 U.S.C.
+ 101](mpep-9015-appx-l.html#d0e302376)** has been interpreted as imposing four requirements: (i)
+ only one patent may be obtained for an invention; (ii) the inventor(s) must be
+ identified in an application filed on or after September 16, 2012 or must be the
+ applicant in applications filed before September 16, 2012; (iii) the claimed
+ invention must be eligible for patenting; and, (iv) the claimed invention must be
+ useful (have utility). 
+ 
+
+
+See **[MPEP §
+ 2104](s2104.html#ch2100_d1b13f_1b012_1f4)** for a discussion of the four requirements,
+ **[MPEP §
+ 2106](s2106.html#d0e197244)** for a discussion of eligibility, and
+ **[MPEP §
+ 2107](s2107.html#d0e198469)** for the utility examination guidelines.
+ 
+
+
+The patent eligibility inquiry under **[35 U.S.C. 101](mpep-9015-appx-l.html#d0e302376)**
+ is a threshold inquiry. Even if a claimed invention qualifies as eligible subject
+ matter under **[35
+ U.S.C. 101](mpep-9015-appx-l.html#d0e302376)**, it must also satisfy the other conditions and
+ requirements of the patent laws, including the requirements for novelty
+ (**[35 U.S.C.
+ 102](mpep-9015-appx-l.html#d0e302383)**), nonobviousness (**[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)**), and adequate
+ description and definite claiming (**[35 U.S.C. 112](mpep-9015-appx-l.html#d0e302824)**). *Bilski
+ v. Kappos,* 561 U.S. 593, 602, 95 USPQ2d 1001, 1006 (2010). Therefore,
+ examiners should avoid focusing on only issues of patent-eligibility under
+ **[35 U.S.C.
+ 101](mpep-9015-appx-l.html#d0e302376)** to the detriment of considering an application for
+ compliance with the requirements of **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**, **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)**,
+ and **[35 U.S.C.
+ 112](mpep-9015-appx-l.html#d0e302824)**, and should avoid treating an application solely on the
+ basis of patent-eligibility under **[35 U.S.C. 101](mpep-9015-appx-l.html#d0e302376)** except in the most
+ extreme cases. 
+ 
+
+**IV.** **EVALUATE APPLICATION FOR COMPLIANCE WITH 35 U.S.C. 112*** 
+
+***A.*** ***Determine Whether the Claimed Invention Complies with 35 U.S.C. 112(b)
+ or Pre-AIA 35 U.S.C. 112, Second Paragraph Requirements*** **[35 U.S.C.
+ 112(b)](mpep-9015-appx-l.html#al_d1d85b_2ae65_215)** contains two separate and distinct requirements: (A)
+ that the claim(s) set forth the subject matter the inventor or a joint inventor
+ regards as the invention, and (B) that the claim(s) particularly point out and
+ distinctly claim the invention. An application will be deficient under the first
+ requirement of **[35 U.S.C. 112(b)](mpep-9015-appx-l.html#al_d1d85b_2ae65_215)** when evidence
+ outside the application as filed, e.g., admissions, shows that the inventor or a
+ joint inventor regards the invention to be different from what is claimed (see
+ **[MPEP §
+ 2171](s2171.html#d0e217389)** - **[MPEP § 2172.01](s2172.html#d0e217526)**). 
+ 
+
+
+An application fails to comply with the second
+ requirement of **[35 U.S.C. 112(b)](mpep-9015-appx-l.html#al_d1d85b_2ae65_215)** when the claims
+ do not set out and define the invention with a reasonable degree of precision and
+ particularity. In this regard, the definiteness of the language must be analyzed, not
+ in a vacuum, but always in light of the teachings of the disclosure as it would be
+ interpreted by one of ordinary skill in the art. Applicant’s claims, interpreted in
+ light of the disclosure, must reasonably apprise a person of ordinary skill in the
+ art of the invention. 
+ 
+
+
+The scope of a limitation that invokes
+ **[35
+ U.S.C. 112(f)](mpep-9015-appx-l.html#al_d1d85b_2ae7b_ec)** is defined as the corresponding structure or
+ material set forth by the inventor in the written description and equivalents thereof
+ that perform the claimed function. See **[MPEP § 2181](s2181.html#d0e219279)** through
+ **[MPEP §
+ 2186](s2186.html#d0e220631)**. See **[MPEP § 2173](s2173.html#d0e217564)***et seq.* for a discussion of a variety of issues pertaining to the
+ **[35
+ U.S.C. 112(b)](mpep-9015-appx-l.html#al_d1d85b_2ae65_215)** requirement that the claims particularly point
+ out and distinctly claim the invention. 
+ 
+
+***B.*** ***Determine Whether the Claimed Invention Complies with 35 U.S.C. 112(a)
+ or 35 U.S.C. 112, First Paragraph Requirements*****[35 U.S.C.
+ 112(a)](mpep-9015-appx-l.html#al_d1d85b_2ae60_3d5)** contains three separate and distinct requirements:
+ 
+
+
+* (A) adequate written description,
+* (B) enablement, and
+* (C) best mode.
+
+**1.** **Adequate Written Description**For the written description requirement, an
+ applicant’s specification must reasonably convey to those skilled in the art that
+ the applicant was in possession of the claimed invention as of the date of
+ invention. See **[MPEP
+ § 2163](s2163.html#d0e213583)** for further guidance with respect to the
+ evaluation of a patent application for compliance with the written description
+ requirement.
+ 
+
+**2.** **Enabling Disclosure**An applicant’s specification must enable a person
+ skilled in the art to make and use the claimed invention without undue
+ experimentation. The fact that experimentation is complex, however, will not make
+ it undue if a person of skill in the art routinely engages in such
+ experimentation. 
+ 
+
+
+See **[MPEP § 2164](s2164.html#d0e215224)***et seq.* for detailed guidance with regard to the enablement
+ requirement of **[35 U.S.C. 112(a)](mpep-9015-appx-l.html#al_d1d85b_2ae60_3d5)**.
+ 
+
+**3.** **Best Mode**Determining compliance with the best mode
+ requirement requires a two-prong inquiry:
+ 
+
+
+* (1) at the time the application was filed, did
+ the inventor possess a best mode for practicing the invention; and
+* (2) if the inventor did possess a best mode,
+ does the written description disclose the best mode in such a manner that a
+ person of ordinary skill in the art could practice the best mode.
+
+
+See **[MPEP § 2165](s2165.html#d0e216924)***et seq.* for additional guidance. Deficiencies related to
+ disclosure of the best mode for carrying out the claimed invention are not usually
+ encountered during examination of an application because evidence to support such
+ a deficiency is seldom in the record. *Fonar Corp. v. General Elec.
+ Co.,* 107 F.3d 1543, 1548-49, 41 USPQ2d 1801, 1804-05 (Fed. Cir.
+ 1997). 
+ 
+
+**V.** **DETERMINE WHETHER THE CLAIMED INVENTION COMPLIES WITH 35 U.S.C. 102 AND
+ 103**Reviewing a claimed invention for compliance with
+ **[35 U.S.C.
+ 102](mpep-9015-appx-l.html#d0e302383)** and **[35 U.S.C.103](mpep-9015-appx-l.html#d0e302450)** begins with a
+ comparison of the claimed subject matter to what is known in the prior art. See
+ **[MPEP §§
+ 2131](s2131.html#d0e202959)** -  **[2146](s2146.html#d0e213206)** and **[MPEP §§
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** - **[2159](s2159.html#ch2100_d20034_1dc34_1dd)** for specific guidance on
+ patentability determinations under **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** and **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)**. If
+ no differences are found between the claimed invention and the prior art, then the
+ claimed invention lacks novelty and is to be rejected by USPTO personnel under
+ **[35 U.S.C.
+ 102](mpep-9015-appx-l.html#d0e302383)**. Once differences are identified between the claimed invention
+ and the prior art, those differences must be assessed and resolved in light of the
+ knowledge possessed by a person of ordinary skill in the art. Against this backdrop, one
+ must determine whether the invention would have been obvious to one of ordinary skill in
+ the art. If not, the claimed invention satisfies **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)**.
+ 
+
+**VI.** **CLEARLY COMMUNICATE FINDINGS, CONCLUSIONS AND THEIR BASES**Once examiners have completed the above analyses of the
+ claimed invention under all the statutory provisions, including **[35 U.S.C. 101](mpep-9015-appx-l.html#d0e302376)**,
+ **[35 U.S.C.
+ 112](mpep-9015-appx-l.html#d0e302824)**, **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**, and **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)**,
+ they should review all the proposed rejections and their bases to confirm that a
+ *prima facie* case of unpatentability exists. Only then should any
+ rejection be imposed in an Office action. The Office action should clearly communicate
+ the findings, conclusions and reasons which support them.
+ 
+
+
+EXAMINERS SHOULD USE THE APPLICABLE FORM PARAGRAPHS IN
+ OFFICE ACTIONS TO STATE THE BASIS FOR ANY OBJECTIONS OR REJECTIONS TO REDUCE THE CHANCE
+ OF A MISUNDERSTANDING AS TO THE GROUNDS OF OBJECTION OR REJECTION. 
+ 
+
+
+[[top]](#top)
+
+
+]

data/2100/s2104.html.txt

@@ -0,0 +1,249 @@
+[
+# 2104 Requirements of 35 U.S.C. 101 [R-10.2019]
+
+
+Patents are not granted for all new and useful inventions and discoveries.
+ For example, the subject matter of the invention or discovery must come within the
+ boundaries set forth by **[35 U.S.C. 101](mpep-9015-appx-l.html#d0e302376)**, which permits a patent to be granted only for "any
+ new and useful process, machine, manufacture, or composition of matter, or any new and
+ useful improvement thereof."
+ 
+
+
+
+#### *35 U.S.C. 101   
+ Inventions patentable*
+
+
+Whoever invents or discovers any new and useful process, machine,
+ manufacture, or composition of matter, or any new and useful improvement thereof, may
+ obtain a patent therefor, subject to the conditions and requirements of this title.
+ 
+
+
+
+**[35 U.S.C.
+ 101](mpep-9015-appx-l.html#d0e302376)** has been interpreted as imposing four requirements, which are
+ described below. 
+ 
+
+**I.** **DOUBLE PATENTING PROHIBITED** **[35 U.S.C. 101](mpep-9015-appx-l.html#d0e302376)** requires that whoever
+ invents or discovers an eligible invention may obtain only ONE patent therefor. Thus it
+ prevents two patents issuing on the same invention to the same applicant. The "same
+ invention" means that identical subject matter is being claimed. This requirement forms
+ the basis for statutory double patenting rejections. If more than one patent is sought,
+ a patent applicant will receive a statutory double patenting rejection for claims
+ included in more than one application that are directed to the same invention. 
+ 
+
+
+See **[MPEP § 804](s804.html#d0e98894)** for a full discussion of the
+ prohibition against double patenting. Use form paragraphs **[8.30](#fp8.30)**,
+ **[8.31](#fp8.31)** and **[8.32](#fp8.32)** for
+ statutory double patenting rejections. 
+ 
+
+**II.** **NAMING OF INVENTOR**The inventor(s) must be the applicant in an application
+ filed before September 16, 2012, (except as otherwise provided in **[pre-AIA 37 CFR
+ 1.41(b)](mpep-9020-appx-r.html#d0e317757)**) and the inventor or each joint inventor must be
+ identified in an application filed on or after September 16, 2012. See
+ **[MPEP §
+ 2109](s2109.html#ch2100_d2c183_22374_28b)** for a detailed discussion of inventorship and
+ **[MPEP §
+ 602.01(c)](s602.html#d0e4830ss602)***et seq.* for details regarding correction of inventorship.
+ 
+
+
+In the rare situation where it is clear the application
+ does not name the correct inventorship and the applicant has not filed a request to
+ correct inventorship under **[37 CFR 1.48](mpep-9020-appx-r.html#d0e317930)**, the examiner should
+ reject the claims under **[35 U.S.C. 101](mpep-9015-appx-l.html#d0e302376)** and **[115](mpep-9015-appx-l.html#d0e302875912)** for
+ applications subject to **[AIA 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)** (see
+ **[MPEP §
+ 2157](s2157.html#ch2100_d20034_1bb92_e7)**) or under **[pre-AIA 35 U.S.C. 102(f)](mpep-9015-appx-l.html#d0e302420)** for
+ applications subject to **[pre-AIA 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** (see
+ **[MPEP §
+ 2137](s2137.html#d0e206570)**).
+ 
+
+**III.** **SUBJECT MATTER
+ ELIGIBILITY**A claimed invention must be eligible for patenting. As
+ explained in **[MPEP §
+ 2106](s2106.html#d0e197244)**, there are two criteria for determining subject matter
+ eligibility: (a) first, a claimed invention must fall within one of the four statutory
+ categories of invention set forth in **[35 U.S.C. 101](mpep-9015-appx-l.html#d0e302376)**, i.e., process,
+ machine, manufacture, or composition of matter; and (b) second, a claimed invention must
+ be directed to patent-eligible subject matter and not a judicial exception (unless the
+ claim as a whole includes additional limitations amounting to significantly more than
+ the exception). The judicial exceptions are subject matter which courts have found to be
+ outside of, or exceptions to, the four statutory categories of invention, and are
+ limited to abstract ideas, laws of nature and natural phenomena (including products of
+ nature). *Alice Corp. Pty. Ltd. v. CLS Bank Int'l,* 573 U.S. 208, 216,
+ 110 USPQ2d 1976, 1980 (2014) (citing *Association for Molecular Pathology v.
+ Myriad Genetics, Inc.,* 569 U.S. 66, 70, 106 USPQ2d 1972, 1979 (2013)). See
+ also *Bilski v. Kappos,* 561 U.S. 593, 601, 95 USPQ2d 1001, 1005-06
+ (2010) (citing *Diamond v. Chakrabarty,* 447 U.S. 303, 309, 206 USPQ
+ 193, 197 (1980)).
+ 
+
+
+See **[MPEP § 2106](s2106.html#d0e197244)** for a discussion of subject
+ matter eligibility in general, and the analytical framework that is to be used during
+ examination for evaluating whether a claim is drawn to patent-eligible subject matter,
+ **[MPEP §
+ 2106.03](s2106.html#ch2100_d29a1b_139b2_397)** for a discussion of the statutory categories of
+ invention, **[MPEP § 2106.04](s2106.html#ch2100_d29a1b_139db_e0)** for a discussion of the judicial exceptions,
+ and **[MPEP §
+ 2106.05](s2106.html#ch2100_d29a1b_13c11_1cb)** for a discussion of how to evaluate claims directed to
+ a judicial exception for eligibility. See **[MPEP §
+ 2106.07(a)(1)](s2106.html#ch2100_d2c183_20b8d_1b9)** for form paragraphs for use in rejections under
+ **[35 U.S.C.
+ 101](mpep-9015-appx-l.html#d0e302376)** based on a lack of subject matter eligibility. See also
+ **[MPEP §
+ 2105](s2105.html#d0e197008)** for more information about claiming living subject
+ matter, as well as the Leahy-Smith America Invents Act (AIA)'s prohibition against
+ claiming human organisms.
+ 
+
+
+Eligible subject matter is further limited by the Atomic
+ Energy Act explained in **[MPEP § 2104.01](s2104.html#ch2100_d2c188_18a96_2d4)**, which prohibits patents
+ granted on any invention or discovery that is useful solely in the utilization of
+ special nuclear material or atomic energy in an atomic weapon.
+ 
+
+**IV.** **UTILITY**A claimed invention must be useful or have a utility that
+ is specific, substantial and credible.
+ 
+
+
+A rejection on the ground of lack of utility is appropriate when (1) it
+ is not apparent why the invention is "useful" because applicant has failed to identify
+ any specific and substantial utility and there is no well established utility, or (2) an
+ assertion of specific and substantial utility for the invention is not credible. Such a
+ rejection can include the more specific grounds of inoperativeness, such as inventions
+ involving perpetual motion. A rejection under **[35 U.S.C. 101](mpep-9015-appx-l.html#d0e302376)** for lack of utility
+ should not be based on grounds that the invention is frivolous,
+ fraudulent or against public policy. See *Juicy Whip Inc. v. Orange Bang
+ Inc.,* 185 F.3d 1364, 1367-68, 51 USPQ2d 1700, 1702-03 (Fed. Cir. 1999)
+ ("[Y]ears ago courts invalidated patents on gambling devices on the ground that they
+ were immoral…, but that is no longer the law…Congress never intended that the patent
+ laws should displace the police powers of the States, meaning by that term those powers
+ by which the health, good order, peace and general welfare of the community are
+ promoted…we find no basis in section 101 to hold that inventions can be ruled
+ unpatentable for lack of utility simply because they have the capacity to fool some
+ members of the public.").
+ 
+
+
+ The statutory basis for this rejection is
+ **[35 U.S.C.
+ 101](mpep-9015-appx-l.html#d0e302376)**. See **[MPEP § 2107](s2107.html#d0e198469)** for guidelines governing
+ rejections for lack of utility. See **[MPEP §§ 2107.01](s2107.html#d0e198682)** - **[2107.03](s2107.html#d0e200058)** for legal
+ precedent governing the utility requirement. See **[MPEP § 2107.02](s2107.html#d0e199419)**, subsection IV, for form
+ paragraphs to be used to reject claims under **[35 U.S.C. 101](mpep-9015-appx-l.html#d0e302376)** for failure to satisfy
+ the utility requirement.
+ 
+
+
+
+# 2104.01 Barred by Atomic Energy Act [R-10.2019]
+
+
+A limitation on what can be patented is imposed by the Atomic Energy Act
+ of 1954. Section 151(a) (42 U.S.C. 2181(a)) thereof reads in part as follows:
+ 
+
+
+No patent shall hereafter be granted for any invention or discovery
+ which is useful solely in the utilization of special nuclear material or atomic energy
+ in an atomic weapon. 
+ 
+
+
+The terms "atomic energy" and "special nuclear material" are defined in
+ Section 11 of the Act (42 U.S.C. 2014).
+ 
+
+
+Sections 151(c) and 151(d) (42 U.S.C. 2181(c) and (d)) set up categories
+ of pending applications relating to atomic energy that must be brought to the attention
+ of the Department of Energy. Under **[37 CFR 1.14(d)](mpep-9020-appx-r.html#d0e314245)**, applications for
+ patents which disclose or which appear to disclose, or which purport to disclose,
+ inventions or discoveries relating to atomic energy are reported to the Department of
+ Energy and the Department will be given access to such applications, but such reporting
+ does not constitute a determination that the subject matter of each application so
+ reported is in fact useful or an invention or discovery or that such application in fact
+ discloses subject matter in categories specified by the Atomic Energy Act.
+ 
+
+
+All applications received in the U.S. Patent and Trademark Office are
+ screened by Technology Center (TC) work group 3640 personnel, under **[37 CFR 1.14(d)](mpep-9020-appx-r.html#d0e314245)**, in
+ order for the Director to fulfill his or her responsibilities under section 151(d) (42
+ U.S.C. 2181(d)) of the Atomic Energy Act. Papers subsequently added must be inspected
+ promptly by the examiner when received to determine whether the application has been
+ amended to relate to atomic energy and those so related must be promptly forwarded to
+ Licensing and Review in TC work group 3640.
+ 
+
+
+All rejections based upon sections 151(a) (42 U.S.C. 2181(a)), 152 (42
+ U.S.C. 2182), and 155 (42 U.S.C. 2185) of the Atomic Energy Act must be made only by TC
+ work group 3640 personnel.
+ 
+
+
+
+[[top]](#top)
+
+
+, 
+# 2104.01 Barred by Atomic Energy Act [R-10.2019]
+
+
+A limitation on what can be patented is imposed by the Atomic Energy Act
+ of 1954. Section 151(a) (42 U.S.C. 2181(a)) thereof reads in part as follows:
+ 
+
+
+No patent shall hereafter be granted for any invention or discovery
+ which is useful solely in the utilization of special nuclear material or atomic energy
+ in an atomic weapon. 
+ 
+
+
+The terms "atomic energy" and "special nuclear material" are defined in
+ Section 11 of the Act (42 U.S.C. 2014).
+ 
+
+
+Sections 151(c) and 151(d) (42 U.S.C. 2181(c) and (d)) set up categories
+ of pending applications relating to atomic energy that must be brought to the attention
+ of the Department of Energy. Under **[37 CFR 1.14(d)](mpep-9020-appx-r.html#d0e314245)**, applications for
+ patents which disclose or which appear to disclose, or which purport to disclose,
+ inventions or discoveries relating to atomic energy are reported to the Department of
+ Energy and the Department will be given access to such applications, but such reporting
+ does not constitute a determination that the subject matter of each application so
+ reported is in fact useful or an invention or discovery or that such application in fact
+ discloses subject matter in categories specified by the Atomic Energy Act.
+ 
+
+
+All applications received in the U.S. Patent and Trademark Office are
+ screened by Technology Center (TC) work group 3640 personnel, under **[37 CFR 1.14(d)](mpep-9020-appx-r.html#d0e314245)**, in
+ order for the Director to fulfill his or her responsibilities under section 151(d) (42
+ U.S.C. 2181(d)) of the Atomic Energy Act. Papers subsequently added must be inspected
+ promptly by the examiner when received to determine whether the application has been
+ amended to relate to atomic energy and those so related must be promptly forwarded to
+ Licensing and Review in TC work group 3640.
+ 
+
+
+All rejections based upon sections 151(a) (42 U.S.C. 2181(a)), 152 (42
+ U.S.C. 2182), and 155 (42 U.S.C. 2185) of the Atomic Energy Act must be made only by TC
+ work group 3640 personnel.
+ 
+
+
+]

data/2100/s2105.html.txt

@@ -0,0 +1,207 @@
+[
+# 2105 Patent Eligible Subject Matter — Living Subject Matter [R-10.2019]
+
+**I.** **INTRODUCTION**Prior to 1980, it was widely believed that living subject matter was
+ not eligible for patenting, either because such subject matter did not fall within a
+ statutory category, or because it was a judicial exception to patent eligibility.
+ However, the decision of the Supreme Court in *Diamond v. Chakrabarty,*
+ 447 U.S. 303, 206 USPQ 193 (1980), made it clear that the question of whether an
+ invention embraces living matter is irrelevant to the issue of patent eligibility. Note,
+ however, that Congress has excluded claims directed to or encompassing a human organism
+ from eligibility. See The Leahy-Smith America Invents Act (AIA), Pub. L. 112-29, sec.
+ 33(a), 125 Stat. 284 (September 16, 2011).
+ 
+
+**II.** **LIVING SUBJECT MATTER MAY BE PATENT ELIGIBLE*** 
+
+***A.*** ***Living Subject Matter May Be Directed To A Statutory Category*** In *Chakrabarty,* the Supreme Court held that a
+ claim to a genetically engineered bacterium was directed to at least one of the four
+ statutory categories, because the bacterium was a "manufacture" and/or a "composition
+ of matter." In its opinion, the Court stated that "Congress plainly contemplated that
+ the patent laws would be given wide scope" because it chose to draft
+ **[35 U.S.C.
+ 101](mpep-9015-appx-l.html#d0e302376)** using "such expansive terms as ‘manufacture’ and
+ ‘composition of matter,’ modified by the comprehensive ‘any.’" 447 U.S. at 308, 206
+ USPQ at 197. The Court also determined that the distinction between living and
+ inanimate things was not relevant for subject matter eligibility. 447 U.S. at 313,
+ 206 USPQ at 199. Thus, the Court held that living subject matter with markedly
+ different characteristics from any found in nature, such as the claimed bacterium
+ produced by genetic engineering, is not excluded from patent protection by
+ **[35 U.S.C.
+ 101](mpep-9015-appx-l.html#d0e302376)**. 447 U.S. at 310, 206 USPQ at 197.
+ 
+
+
+Following the reasoning in
+ *Chakrabarty,* the Board of Patent Appeals and Interferences
+ determined that animals are patentable subject matter under **[35 U.S.C. 101](mpep-9015-appx-l.html#d0e302376)**.
+ In *Ex parte Allen,* 2 USPQ2d 1425 (Bd. Pat. App. & Inter.
+ 1987), the Board decided that a non-naturally occurring polyploid Pacific coast
+ oyster could have been the proper subject of a patent under **[35 U.S.C. 101](mpep-9015-appx-l.html#d0e302376)**
+ if all the criteria for patentability were satisfied. Shortly after the
+ *Allen* decision, the Commissioner of Patents and Trademarks
+ issued a notice (Animals - Patentability, 1077 O.G. 24, April 21, 1987) stating that
+ the Patent and Trademark Office "now considers nonnaturally occurring, non-human
+ multicellular living organisms, including animals, to be patentable subject matter
+ within the scope of **[35 U.S.C. 101](mpep-9015-appx-l.html#d0e302376)**.
+ 
+
+
+With respect to plant subject matter, the Supreme
+ Court held that patentable subject matter under **[35 U.S.C. 101](mpep-9015-appx-l.html#d0e302376)** includes newly
+ developed plant breeds, even though plant protection is also available under the
+ Plant Patent Act (**[35 U.S.C. 161](mpep-9015-appx-l.html#d0e304416)** - **[164](mpep-9015-appx-l.html#d0e304454)**) and the Plant Variety
+ Protection Act (7 U.S.C. 2321 *et. seq.*). *J.E.M. Ag
+ Supply, Inc. v. Pioneer Hi-Bred Int’ l, Inc.,* 534 U.S. 124, 143-46, 60
+ USPQ2d 1865, 1874 (2001) (The scope of coverage of **[35 U.S.C. 101](mpep-9015-appx-l.html#d0e302376)**
+ is not limited by the Plant Patent Act or the Plant Variety Protection Act; each
+ statute can be regarded as effective because of its different requirements and
+ protections).
+ 
+
+
+See **[MPEP §
+ 2106.03](s2106.html#ch2100_d29a1b_139b2_397)** for a discussion of the categories of statutory
+ subject matter. 
+ 
+
+***B.******Living Subject Matter May Be Eligible for Patent Protection***The Supreme Court in *Chakrabarty*
+ held a claim to a genetically engineered bacterium eligible, because the claimed
+ bacterium was not a "product of nature" exception. As the Court explained, the
+ modified bacterium was patentable because the patent claim was not to a "hitherto
+ unknown natural phenomenon," but instead had "markedly different characteristics from
+ any found in nature," due to the additional plasmids and resultant capacity for
+ degrading oil. 447 U.S. at 309-10, 206 USPQ at 197.
+ 
+
+
+Subsequent judicial decisions have made clear that the Supreme
+ Court’s decision in *Chakrabarty* is "central" to the eligibility
+ inquiry with respect to nature-based products. See, *e.g., Association for
+ Molecular Pathology v. Myriad Genetics, Inc.,* 569 U.S. 576, 590, 106
+ USPQ2d 1972, 1979 (2013). For example, the Federal Circuit has indicated that
+ "discoveries that possess ‘markedly different characteristics from any found in
+ nature,’ … are eligible for patent protection." *In re Roslin Institute
+ (Edinburgh),* 750 F.3d 1333, 1336, 110 USPQ2d 1668, 1671 (Fed. Cir. 2014)
+ (quoting *Chakrabarty,* 447 U.S. at 310, 206 USPQ2d at 197). In
+ *Roslin,* the claimed invention was a live-born clone of a
+ pre-existing, non-embryonic, donor mammal selected from cattle, sheep, pigs, and
+ goats. An embodiment of the claimed invention was the famous Dolly the Sheep, which
+ the court stated was "the first mammal ever cloned from an adult somatic cell."
+ Despite acknowledging that the method used to create the claimed clones "constituted
+ a breakthrough in scientific discovery", the court relied on
+ *Chakrabarty* in holding the claims ineligible because "Dolly
+ herself is an exact genetic replica of another sheep and does not possess ‘markedly
+ different characteristics from any [farm animals] found in nature.’"
+ *Roslin,* 750 F.3d at 1337, 110 USPQ2d at 1671.
+ 
+
+
+See **[MPEP §
+ 2106.04](s2106.html#ch2100_d29a1b_139db_e0)** for a discussion of the judicial exceptions in
+ general, **[MPEP § 2106.04(b)](s2106.html#ch2100_d29a1b_13b6b_4c)**, subsection II, for a discussion of
+ products of nature, and **[MPEP § 2106.04(c)](s2106.html#ch2100_d29a1b_13bc1_b1)** for a discussion
+ of the markedly different characteristics analysis that examiners should use to
+ determine whether a nature-based product such as living subject matter is eligible
+ for patent protection. 
+ 
+
+**III.** **HUMAN ORGANISMS ARE NONSTATUTORY SUBJECT MATTER**Congress has excluded claims directed to or encompassing
+ a human organism from patentability. The Leahy-Smith America Invents Act (AIA), Public
+ Law 112-29, **[sec. 33(a)](mpep-9015-appx-l.html#aiasec33limitonissuance)**, 125 Stat. 284,
+ states:
+ 
+
+
+
+> 
+>  Notwithstanding any other provision of law, no patent
+>  may issue on a claim directed to or encompassing a human organism.
+>  
+> 
+> 
+> 
+
+
+The legislative history of the AIA includes the following
+ statement, which sheds light on the meaning of this provision:
+ 
+
+
+
+> 
+> [T]he U.S. Patent Office has already issued patents on
+>  genes, stems cells, animals with human genes, and a host of non-biologic products
+>  used by humans, but it has not issued patents on claims directed to human organisms,
+>  including human embryos and fetuses. My amendment would not affect the former, but
+>  would simply affirm the latter.
+>  
+> 
+> 
+> 
+
+
+157 Cong. Rec. E1177-04 (testimony of Representative Dave
+ Weldon previously presented in connection with the Consolidated Appropriations Act,
+ 2004, Public Law 108-199, 634, 118 Stat. 3, 101, and later resubmitted with regard to
+ the AIA; see 149 Cong. Rec. E2417-01). Thus, **[section 33(a) of the
+ AIA](mpep-9015-appx-l.html#aiasec33limitonissuance)** codifies existing Office policy that human organisms are not
+ patent-eligible subject matter. 
+ 
+
+
+If the broadest reasonable interpretation of the claimed invention as a
+ whole encompasses a human organism, then a rejection under **[35 U.S.C. 101](mpep-9015-appx-l.html#d0e302376)** and
+ **[AIA
+ sec. 33(a)](mpep-9015-appx-l.html#aiasec33limitonissuance)** must be made indicating that the claimed invention is
+ directed to a human organism and is therefore nonstatutory subject matter. Furthermore,
+ the claimed invention must be examined with regard to all issues pertinent to
+ patentability, and any applicable rejections under **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**, **[103](mpep-9015-appx-l.html#d0e302450)**, or
+ **[112](mpep-9015-appx-l.html#d0e302824)** must also be made. 
+ 
+
+
+Use form paragraph **[7.04.03](#fp7.04.03)** to reject a claim under
+ **[35 U.S.C.
+ 101](mpep-9015-appx-l.html#d0e302376)** and **[AIA sec. 33(a)](mpep-9015-appx-l.html#aiasec33limitonissuance)**.
+ 
+
+
+# ¶ 7.04.03 Human Organism
+
+
+Section 33(a) of the America Invents Act reads as
+ follows
+ 
+
+
+Notwithstanding any other provision of law, no patent may
+ issue on a claim directed to or encompassing a human organism.
+ 
+
+
+Claim **[1]** rejected under **[35 U.S.C. 101](mpep-9015-appx-l.html#d0e302376)** and
+ section 33(a) of the America Invents Act as being directed to or encompassing a human
+ organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987)
+ (indicating that human organisms are excluded from the scope of patentable subject matter
+ under **[35 U.S.C.
+ 101](mpep-9015-appx-l.html#d0e302376)**). **[2]**
+
+
+### Examiner Note:
+
+ * 1. This paragraph must be preceded by form paragraph
+ **[7.04.01](#fp7.04.01)**
+ which quotes **[35
+ U.S.C. 101](mpep-9015-appx-l.html#d0e302376)**.
+* 2. In bracket 1, pluralize "Claim" if necessary, insert
+ claim number(s), and insert "is" or "are" as appropriate.
+* 3. In bracket 2, explain why the claim is interpreted
+ to read on a human organism.
+
+
+
+[[top]](#top)
+
+
+]

data/2100/s2108.html.txt

@@ -0,0 +1,9 @@
+[
+# 2108 [Reserved]
+
+
+
+[[top]](#top)
+
+
+]

data/2100/s2109.01.html.txt

@@ -0,0 +1,146 @@
+[
+# 2109.01 Joint Inventorship [R-10.2019]
+
+
+
+#### *35 U.S.C. 116   
+ Inventors.*
+
+
+*[Editor Note: Applicable to proceedings commenced on or after Sept. 16, 2012.
+ See **[35 U.S.C. 116
+ (pre‑AIA)](mpep-9015-appx-l.html#d0e302886)** for the law otherwise applicable.]*
+
+
+* (a) JOINT INVENTIONS.—When an invention is made by two
+ or more persons jointly, they shall apply for patent jointly and each make the
+ required oath, except as otherwise provided in this title. Inventors may apply for
+ a patent jointly even though (1) they did not physically work together or at the
+ same time, (2) each did not make the same type or amount of contribution, or (3)
+ each did not make a contribution to the subject matter of every claim of the
+ patent.
+* (b) OMITTED INVENTOR.—If a joint inventor refuses to join in
+ an application for patent or cannot be found or reached after diligent effort, the
+ application may be made by the other inventor on behalf of himself and the omitted
+ inventor. The Director, on proof of the pertinent facts and after such notice to
+ the omitted inventor as he prescribes, may grant a patent to the inventor making
+ the application, subject to the same rights which the omitted inventor would have
+ had if he had been joined. The omitted inventor may subsequently join in the
+ application.
+* (c) CORRECTION OF ERRORS IN APPLICATION.—Whenever through
+ error a person is named in an application for patent as the inventor, or through
+ an error an inventor is not named in an application, the Director may permit the
+ application to be amended accordingly, under such terms as he prescribes.
+
+
+
+
+#### *35 U.S.C. 116 (pre‑AIA)  
+ Inventors.*
+
+
+*[Editor Note: **Not applicable** to proceedings commenced on or after
+ September 16, 2012. See **[35 U.S.C. 116](mpep-9015-appx-l.html#d0e302886912)** for the law
+ otherwise applicable.]*
+
+
+When an invention is made by two or more persons jointly, they
+ shall apply for patent jointly and each make the required oath, except as otherwise
+ provided in this title. Inventors may apply for a patent jointly even though (1) they
+ did not physically work together or at the same time, (2) each did not make the same
+ type or amount of contribution, or (3) each did not make a contribution to the subject
+ matter of every claim of the patent.
+ 
+
+
+If a joint inventor refuses to join in an application for patent or
+ cannot be found or reached after diligent effort, the application may be made by the
+ other inventor on behalf of himself and the omitted inventor. The Director, on proof of
+ the pertinent facts and after such notice to the omitted inventor as he prescribes, may
+ grant a patent to the inventor making the application, subject to the same rights which
+ the omitted inventor would have had if he had been joined. The omitted inventor may
+ subsequently join in the application.
+ 
+
+
+Whenever through error a person is named in an application for
+ patent as the inventor, or through an error an inventor is not named in an application,
+ and such error arose without any deceptive intention on his part, the Director may
+ permit the application to be amended accordingly, under such terms as he prescribes.
+ 
+
+
+
+A person who shares in the conception of a claimed
+ invention is a joint inventor of that invention. *In re VerHoef,* 888 F.3d
+ 1362, 1366-67, 126 F.2d 1561, 1564-65 (Fed. Cir. 2018)(person who contributed the idea of a
+ figure eight loop in the claimed dog harness, which figure eight loop is an essential
+ feature of the invention not insignificant in quality or well-known in the art, should have
+ been named as a joint inventor). 
+ 
+
+
+"Inventors may apply for a patent jointly even though (1) they did not
+ physically work together or at the same time, (2) each did not make the same type or amount
+ of contribution, or (3) each did not make a contribution to the subject matter of every
+ claim of the patent." **[35
+ U.S.C. 116](mpep-9015-appx-l.html#d0e302886)**. 
+ 
+
+
+It is not necessary that joint inventors physically work
+ together on a project, and it is permissible for one inventor to "take a step at one time,
+ the other an approach at different times." (*Monsanto Co. v. Kamp,* 269 F.
+ Supp. 818, 824, 154 USPQ 259, 262 (D.D.C. 1967)). However, "the statute neither states nor
+ implies that two inventors can be ‘joint inventors’ if they have had no contact whatsoever
+ and are completely unaware of each other's work." What is required is some "quantum of
+ collaboration or connection." In other words, "[f]or persons to be joint inventors under
+ **[Section
+ 116](mpep-9015-appx-l.html#d0e302886)**, there must be some element of joint behavior, such as
+ collaboration or working under common direction, one inventor seeing a relevant report and
+ building upon it or hearing another’s suggestion at a meeting." *Kimberly-Clark
+ Corp.**v.**Procter & Gamble Distrib. Co.,* 973 F.2d 911, 916-17, 23 USPQ2d 1921,
+ 1925-26 (Fed. Cir. 1992); *Moler v. Purdy,* 131 USPQ 276, 279 (Bd. Pat.
+ Inter. 1960) ("it is not necessary that the inventive concept come to both [joint
+ inventors] at the same time").
+ 
+
+
+While each joint inventor must generally contribute to the
+ conception of the invention, each joint inventor does not have to "make the same type or
+ amount of contribution" to the invention. "The fact that each of the inventors play a
+ different role and that the contribution of one may not be as great as that of another does
+ not detract from the fact that the invention is joint, if each makes some original
+ contribution, though partial, to the final solution of the problem." *Monsanto Co.
+ v. Kamp,* 269 F. Supp. at 824, 154 USPQ at 262. 
+ 
+
+
+A joint inventor or coinventor need not make a contribution
+ to every claim of a patent; a contribution to one claim is enough. "The contributor of any
+ disclosed means of a means-plus-function claim element is a joint inventor as to that
+ claim, unless one asserting sole inventorship can show that the contribution of that means
+ was simply a reduction to practice of the sole inventor’s broader concept."
+ *Ethicon Inc. v. United States Surgical Corp.,* 135 F.3d 1456, 1460-63,
+ 45 USPQ2d 1545, 1548-1551 (Fed. Cir. 1998) (The electronics technician who contributed to
+ one of the two alternative structures in the specification to define "the means for
+ detaining" in a claim limitation was held to be a joint inventor.). In addition, there is
+ no requirement that all the inventors be joint inventors of the subject matter of any one
+ claim.
+ 
+
+
+See **[MPEP § 602.09](s602.html#ch600_d1ff6a_1ba4a_ff)** regarding inquiries about
+ the inventorship of each claimed invention and regarding correction of inventorship when an
+ application is amended such that one (or more) of the named joint inventors is no longer a
+ joint inventor of the subject matter of any claim remaining in the application. See
+ **[MPEP §
+ 602.01(c)](s602.html#d0e4830ss602)***et seq.* for additional information pertaining to the correction of
+ inventorship.
+ 
+
+
+[[top]](#top)
+
+
+]

data/2100/s2109.html.txt

@@ -0,0 +1,184 @@
+[
+# 2109 Inventorship [R-10.2019]
+
+
+The requirement that the applicant for a patent in an application filed
+ before September 16, 2012 be the inventor(s) (except as otherwise provided in
+ **[pre-AIA 37 CFR
+ 1.41](mpep-9020-appx-r.html#d0e317666)**), and that the inventor or each joint inventor be identified in
+ applications filed on or after September 16, 2012, are characteristics of U.S. patent law
+ not generally shared by other countries. Consequently, foreign applicants may misunderstand
+ U.S. law regarding naming of the actual inventors causing an error in the inventorship of a
+ U.S. application that may claim priority to a previous foreign application under
+ **[35 U.S.C.
+ 119](mpep-9015-appx-l.html#d0e302921)**. A request under **[37 CFR 1.48](mpep-9020-appx-r.html#d0e317930)** is required to correct any
+ error in the inventorship in the U.S. application as filed. See **[MPEP § 602.01(c)](s602.html#d0e4830ss602)***et seq.* Foreign applicants may need to be reminded of the requirement
+ for the same inventor or at least one common joint inventor between a U.S. application and
+ a **[35 U.S.C.
+ 119](mpep-9015-appx-l.html#d0e302921)** priority application. See **[MPEP §
+ 213.02](s213.html#ch200_d1ff72_1b289_213)**, subsection II. 
+ 
+
+
+If a determination is made that the inventive entity named in a U.S.
+ application is not correct, such as when a request under **[37 CFR 1.48(a)](mpep-9020-appx-r.html#d0e317930)** is not
+ granted or is not entered for technical reasons, but the admission therein regarding the
+ error in inventorship is uncontroverted, a rejection should be made on this basis. See
+ **[MPEP §
+ 2157](s2157.html#ch2100_d20034_1bb92_e7)** for rejections under **[35 U.S.C. 101](mpep-9015-appx-l.html#d0e302376)** and **[35 U.S.C. 115](mpep-9015-appx-l.html#d0e302875912)**, and
+ **[MPEP §
+ 2137](s2137.html#d0e206570)** for rejections under **[pre-AIA 35 U.S.C. 102(f)](mpep-9015-appx-l.html#d0e302383)** (for
+ applications subject to **[pre-AIA 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**), for failure to set forth the correct
+ inventorship.
+ 
+
+**I.** **NAMING INVENTORSHIP**The inventor, or each individual who is a joint inventor
+ of a claimed invention, in an application for patent (other than a provisional
+ application) must execute an oath or declaration directed to the application, except as
+ provided for in **[37
+ CFR 1.64](mpep-9020-appx-r.html#aia_d0e319924)**. See **[MPEP § 602.01](s602.html#ch600_d1ff64_24f27_297)** for detailed
+ information pertaining to naming the inventor. See **[MPEP §
+ 602.01(a)](s602.html#ch600_d1ff64_29e5e_a0)** for the requirements of an inventor’s oath or
+ declaration in an application filed on or after September 16, 2012. See
+ **[MPEP §
+ 602.01(b)](s602.html#ch600_d1ffbe_2a437_2a7)** for the requirements of an original oath or
+ declaration in an application filed before September 16, 2012.
+ 
+
+
+For applications filed before September 16, 2012, **[pre-AIA 37 CFR
+ 1.41(a)(1)](mpep-9020-appx-r.html#d0e317678)** defines the inventorship of a nonprovisional
+ application as that inventorship set forth in the oath or declaration filed to comply
+ with the requirements of **[pre-AIA 37 CFR 1.63](mpep-9020-appx-r.html#d0e319759)**, except as
+ otherwise provided. Thus the party or parties executing an oath or declaration under
+ **[pre-AIA 37 CFR
+ 1.63](mpep-9020-appx-r.html#d0e319759)** are presumed to be the inventors. *Driscoll v.
+ Cebalo,* 5 USPQ2d 1477, 1481 (Bd. Pat. Inter. 1982); *In re
+ DeBaun,* 687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA 1982) (The inventor of
+ an element, *per se,* and the inventor of that element as used in a
+ combination may differ. "The existence of combination claims does not evidence
+ inventorship by the patentee of the individual elements or subcombinations thereof if
+ the latter are not separately claimed apart from the combination." (quoting *In
+ re Facius,* 408 F.2d 1396, 1406, 161 USPQ 294, 301 (CCPA 1969) (emphasis in
+ original)); *Brader v. Schaeffer,* 193 USPQ 627, 631 (Bd. Pat. Inter.
+ 1976) (in regard to an inventorship correction: "[a]s between inventors their word is
+ normally taken as to who are the actual inventors" when there is no disagreement). 
+ 
+
+**II.** **AN INVENTOR MUST CONTRIBUTE TO THE CONCEPTION OF THE INVENTION**The definition for inventorship can be simply stated: "The threshold
+ question in determining inventorship is who conceived the invention. Unless a person
+ contributes to the conception of the invention, he is not an inventor. … Insofar as
+ defining an inventor is concerned, reduction to practice, *per se,* is
+ irrelevant [except for simultaneous conception and reduction to practice, *Fiers
+ v. Revel,* 984 F.2d 1164, 1168, 25 USPQ2d 1601, 1604-05 (Fed. Cir. 1993)].
+ One must contribute to the conception to be an inventor." *In re
+ Hardee,* 223 USPQ 1122, 1123 (Comm’r Pat. 1984). ). A person who shares in
+ the conception of a claimed invention is a joint inventor of that invention. *In
+ re VerHoef,* 888 F.3d 1362, 1366-67, 126 F.2d 1561, 1564-65 (Fed. Cir.
+ 2018). See also *Board of Education ex rel. Board of Trustees of Florida State
+ Univ. v. American Bioscience Inc.,* 333 F.3d 1330, 1340, 67 USPQ2d 1252,
+ 1259 (Fed. Cir. 2003) ("Invention requires conception." With regard to the inventorship
+ of chemical compounds, an inventor must have a conception of the specific compounds
+ being claimed. "[G]eneral knowledge regarding the anticipated biological properties of
+ groups of complex chemical compounds is insufficient to confer inventorship status with
+ respect to specifically claimed compounds."); *Ex parte Smernoff,* 215
+ USPQ 545, 547 (Bd. App. 1982) ("one who suggests an idea of a result to be accomplished,
+ rather than the means of accomplishing it, is not an coinventor"). See
+ **[MPEP
+ § 2138.04](s2138.html#d0e207607)** - **[§ 2138.05](s2138.html#d0e207753)** for a discussion of what
+ evidence is required to establish conception or reduction to practice. 
+ 
+
+**III.** **THE INVENTOR IS NOT REQUIRED TO REDUCE THE INVENTION TO PRACTICE**Difficulties arise in separating members of a team effort, where each
+ member of the team has contributed something, into those members that actually
+ contributed to the conception of the invention, such as the physical structure or
+ operative steps, from those members that merely acted under the direction and
+ supervision of the conceivers. *Fritsch v. Lin,* 21 USPQ2d 1737, 1739
+ (Bd. Pat. App. & Inter. 1991) (The inventor "took no part in developing the
+ procedures…for expressing the EPO gene in mammalian host cells and isolating the
+ resulting EPO product." However, "it is not essential for the inventor to be personally
+ involved in carrying out process steps…where implementation of those steps does not
+ require the exercise of inventive skill."); *In re DeBaun,* 687 F.2d
+ 459, 463, 214 USPQ 933, 936 (CCPA 1982) ("there is no requirement that the inventor be
+ the one to reduce the invention to practice so long as the reduction to practice was
+ done on his behalf").
+ 
+
+
+See also *Mattor**v.**Coolegem,* 530 F.2d 1391, 1395, 189 USPQ 201, 204 (CCPA 1976) (one
+ following oral instructions is viewed as merely a technician); *Tucker v.
+ Naito,* 188 USPQ 260, 263 (Bd. Pat. Inter. 1975) (inventors need not
+ "personally construct and test their invention"); *Davis**v.**Carrier,* 81 F.2d 250, 252, 28 USPQ 227, 229 (CCPA 1936)
+ (noninventor’s work was merely that of a skilled mechanic carrying out the details of a
+ plan devised by another). 
+ 
+
+**IV.** **JOINT INVENTORSHIP**Pursuant to **[35 U.S.C. 116](mpep-9015-appx-l.html#d0e302886912)**, "[w]hen an invention
+ is made by two or more persons jointly, they shall apply for patent jointly and each
+ make the required oath, except as otherwise provided in this title. Inventors may apply
+ for a patent jointly even though (1) they did not physically work together or at the
+ same time, (2) each did not make the same type or amount of contribution, or (3) each
+ did not make a contribution to the subject matter of every claim of the patent." 
+ 
+
+
+The inventive entity for a particular application is
+ based on some contribution to at least one of the claims made by each of the named joint
+ inventors. See **[MPEP § 2109.01](s2109.01.html#ch2100_d2c1f8_278a7_1e6)** for a detailed
+ discussion of the requirements for joint inventorship. See **[MPEP §
+ 602.09](s602.html#ch600_d1ff6a_1ba4a_ff)** regarding inquiries about the inventorship of each
+ claimed invention and regarding correction of inventorship when an application is
+ amended such that one (or more) of the named joint inventors is no longer a joint
+ inventor of the subject matter of any claim remaining in the application. 
+ 
+
+**V.** **INVENTORSHIP "BY ANOTHER"**Inventorship is generally "by another" where there are different
+ inventive entities and there is at least one inventor that is not in common. For
+ information relating to inventorship by "another" involving different inventive entities
+ with at least one inventor in common, see **[MPEP §
+ 2153.01(a)](s2153.html#ch2100_d20033_24e66_2ac)** for applications subject to examination under the
+ first inventor to file (FITF) provisions of the AIA, and **[MPEP § 2136.04](s2136.html#d0e206254)** for
+ applications subject to examination under pre-AIA law.
+ 
+
+**VI.** **EXAMINATION OF CONTINUING APPLICATION COMMONLY OWNED WITH ABANDONED PARENT
+ APPLICATION TO WHICH BENEFIT IS CLAIMED UNDER 35 U.S.C. 120**An application claiming the benefit of a prior filed copending national
+ or international application under **[35 U.S.C. 120](mpep-9015-appx-l.html#d0e303023313)** must name as an
+ inventor at least one inventor named in the prior filed application. The prior filed
+ application must also disclose the named inventor’s invention claimed in at least one
+ claim of the later filed application in the manner provided by **[35 U.S.C.
+ 112(a)](mpep-9015-appx-l.html#al_d1d85b_2ae60_3d5)** for applications filed on or after September 16, 2012, or
+ **[35 U.S.C.
+ 112](mpep-9015-appx-l.html#d0e302824)**, first paragraph for applications filed prior to September 16,
+ 2012. This practice contrasts with the practice in effect prior to November 8, 1984 (the
+ date of enactment of Public Law 98-622) where the inventorship entity in each of the
+ applications was required to be the same for benefit under **[35 U.S.C.
+ 120](mpep-9015-appx-l.html#d0e303023313)**.
+ 
+
+
+So long as the applications have at least one inventor in common and the
+ other requirements are met, the Office will permit a claim for **[35 U.S.C. 120](mpep-9015-appx-l.html#d0e303023313)**
+ benefit without any additional submissions or notifications from applicants regarding
+ inventorship differences.
+ 
+
+
+In addition to the normal examination conducted by the examiner, the
+ examiner must examine the earlier filed application to determine if the earlier and
+ later applications have at least one inventor in common and that the other
+ **[35 U.S.C.
+ 120](mpep-9015-appx-l.html#d0e303023313)** and **[37 CFR 1.78](mpep-9020-appx-r.html#aia_d0e320662)** requirements are met.
+ See **[MPEP §
+ 211](s211.html#ch200_d1ff71_1bd25_18b)***et seq.* The claim for **[35 U.S.C. 120](mpep-9015-appx-l.html#d0e303023313)** benefit will be
+ permitted without examination of the earlier application for disclosure and support of
+ at least one claim of the later filed application under **[35 U.S.C.
+ 112](mpep-9015-appx-l.html#al_d1d85b_2ae60_3d5)** unless it becomes necessary to do so, for example, because of
+ an intervening reference.
+ 
+
+
+[[top]](#top)
+
+
+]

data/2100/s2110.html.txt

@@ -0,0 +1,9 @@
+[
+# 2110 [Reserved]
+
+
+
+[[top]](#top)
+
+
+]

data/2100/s2112.html.txt

@@ -0,0 +1,620 @@
+[
+# 2112 Requirements of Rejection Based on Inherency; Burden of Proof [R-10.2019]
+
+
+*[Editor Note: This MPEP section is **applicable** to applications subject
+ to the first inventor to file (FITF) provisions of the AIA except that the relevant date
+ is the "effective filing date" of the claimed invention instead of the "time of the
+ invention," which is only applicable to applications subject to **[pre-AIA 35 U.S.C.
+ 102](mpep-9015-appx-l.html#d0e302383)**. See **[35 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)** and
+ **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq.]*
+
+
+The express, implicit, and inherent disclosures of a prior art reference
+ may be relied upon in the rejection of claims under **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** or **[103](mpep-9015-appx-l.html#d0e302450)**. "The inherent
+ teaching of a prior art reference, a question of fact, arises both in the context of
+ anticipation and obviousness." *In re Napier,* 55 F.3d 610, 613, 34 USPQ2d
+ 1782, 1784 (Fed. Cir. 1995) (affirmed a **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)** rejection based in part
+ on inherent disclosure in one of the references). See also *In re
+ Grasselli,* 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983).
+ 
+
+**I.** **SOMETHING WHICH IS OLD DOES NOT BECOME PATENTABLE UPON THE DISCOVERY OF A NEW
+ PROPERTY**"[T]he discovery of a previously unappreciated property of a prior art
+ composition, or of a scientific explanation for the prior art’s functioning, does not
+ render the old composition patentably new to the discoverer." *Atlas Powder Co.
+ v. IRECO Inc.,* 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999).
+ Thus the claiming of a new use, new function or unknown property which is inherently
+ present in the prior art does not necessarily make the claim patentable. *In re
+ Best,* 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In *In re
+ Crish,* 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004), the
+ court held that the claimed promoter sequence obtained by sequencing a prior art plasmid
+ that was not previously sequenced was anticipated by the prior art plasmid which
+ necessarily possessed the same DNA sequence as the claimed oligonucleotides*.* The court stated that "just as the discovery of properties of a known material
+ does not make it novel, the identification and characterization of a prior art material
+ also does not make it novel." *Id.* See also **[MPEP § 2112.01](s2112.html#d0e201273)** with
+ regard to inherency and product-by-process claims and **[MPEP § 2141.02](s2141.html#d0e209106)** with
+ regard to inherency and rejections under **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)**.
+ 
+
+**II.** **INHERENT FEATURE NEED NOT BE RECOGNIZED AT THE TIME OF THE INVENTION**There is no requirement that a person of ordinary skill in the art
+ would have recognized the inherent disclosure *at the time of
+ invention,* but only that the subject matter is in fact inherent in the
+ prior art reference. *Schering Corp. v. Geneva Pharm. Inc.,* 339 F.3d
+ 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003) (rejecting the contention that
+ inherent anticipation requires recognition by a person of ordinary skill in the art
+ before the critical date and allowing expert testimony with respect to post-critical
+ date clinical trials to show inherency); see also *Toro Co. v. Deere &
+ Co.,* 355 F.3d 1313, 1320, 69 USPQ2d 1584, 1590 (Fed. Cir. 2004) ("[T]he
+ fact that a characteristic is a necessary feature or result of a prior-art embodiment
+ (that is itself sufficiently described and enabled) is enough for inherent anticipation,
+ even if that fact was unknown at the time of the prior invention."); *Abbott
+ Labs v. Geneva Pharms., Inc.,* 182 F.3d 1315, 1319, 51 USPQ2d 1307, 1310
+ (Fed.Cir.1999) ("If a product that is offered for sale inherently possesses each of the
+ limitations of the claims, then the invention is on sale, whether or not the parties to
+ the transaction recognize that the product possesses the claimed
+ characteristics."); *Atlas Powder Co. v. IRECO, Inc.,* 190 F.3d
+ 1342, 1348-49, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999) ("Because ‘sufficient aeration’ was
+ inherent in the prior art, it is irrelevant that the prior art did not recognize the key
+ aspect of [the] invention.... An inherent structure, composition, or function is not
+ necessarily known."); *SmithKline Beecham Corp. v. Apotex Corp.,* 403
+ F.3d 1331, 1343-44, 74 USPQ2d 1398, 1406-07 (Fed. Cir. 2005) (holding that a prior art
+ patent to an anhydrous form of a compound "inherently" anticipated the claimed
+ hemihydrate form of the compound because practicing the process in the prior art to
+ manufacture the anhydrous compound "inherently results in at least trace amounts of" the
+ claimed hemihydrate even if the prior art did not discuss or recognize the hemihydrate);
+ *In re Omeprazole Patent Litigation,* 483 F.3d 1364, 1373, 82 USPQ2d
+ 1643, 1650 (Fed. Cir. 2007) (The court noted that although the inventors may not have
+ recognized that a characteristic of the ingredients in the prior art method resulted in
+ an in situ formation of a separating layer, the *in situ* formation was
+ nevertheless inherent. "The record shows formation of the *in situ*
+ separating layer in the prior art even though that process was not recognized at the
+ time. The new realization alone does not render that necessary [sic] prior art
+ patentable.").
+ 
+
+**III.** **A REJECTION UNDER 35 U.S.C. 102 AND 103 CAN BE MADE WHEN THE PRIOR ART PRODUCT
+ SEEMS TO BE IDENTICAL EXCEPT THAT THE PRIOR ART IS SILENT AS TO AN INHERENT
+ CHARACTERISTIC**Where applicant claims a composition in terms of a function, property
+ or characteristic and the composition of the prior art is the same as that of the claim
+ but the function is not explicitly disclosed by the reference, the examiner may make a
+ rejection under both **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** and **[103](mpep-9015-appx-l.html#d0e302450)**. "There is nothing inconsistent
+ in concurrent rejections for obviousness under **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)** and for anticipation
+ under **[35 U.S.C.
+ 102](mpep-9015-appx-l.html#d0e302383)**." *In re Best,* 562 F.2d 1252, 1255 n.4, 195
+ USPQ 430, 433 n.4 (CCPA 1977). This same rationale should also apply to product,
+ apparatus, and process claims claimed in terms of function, property or characteristic.
+ Therefore, a **[35 U.S.C.
+ 102](mpep-9015-appx-l.html#d0e302383)** and **[103](mpep-9015-appx-l.html#d0e302450)** rejection is appropriate for
+ these types of claims as well as for composition claims. 
+ 
+
+**IV.** **EXAMINER MUST PROVIDE RATIONALE OR EVIDENCE TO SHOW INHERENCY**The fact that a certain result or characteristic
+ may occur or be present in the prior art is not sufficient to
+ establish the inherency of that result or characteristic. *In re
+ Rijckaert,* 9 F.3d 1531, 1534, 28 USPQ2d 1955, 1957 (Fed. Cir. 1993)
+ (reversed rejection because inherency was based on what would result due to optimization
+ of conditions, not what was necessarily present in the prior art); *In re
+ Oelrich,* 666 F.2d 578, 581-82, 212 USPQ 323, 326 (CCPA 1981). Also, "[a]n
+ invitation to investigate is not an inherent disclosure" where a prior art reference
+ "discloses no more than a broad genus of potential applications of its discoveries."
+ *Metabolite Labs., Inc. v. Lab.**Corp. of Am. Holdings,* 370 F.3d 1354, 1367, 71 USPQ2d 1081,
+ 1091 (Fed. Cir. 2004) (explaining that "[a] prior art reference that discloses a genus
+ still does not inherently disclose all species within that broad category" but must be
+ examined to see if a disclosure of the claimed species has been made or whether the
+ prior art reference merely invites further experimentation to find the species).
+ 
+
+
+"In relying upon the theory of inherency, the examiner must provide a
+ basis in fact and/or technical reasoning to reasonably support the determination that
+ the allegedly inherent characteristic necessarily flows from the
+ teachings of the applied prior art." *Ex parte Levy,* 17 USPQ2d 1461,
+ 1464 (Bd. Pat. App. & Inter. 1990) (emphasis in original) (Applicant’s invention was
+ directed to a biaxially oriented, flexible dilation catheter balloon (a tube which
+ expands upon inflation) used, for example, in clearing the blood vessels of heart
+ patients). The examiner applied a U.S. patent to Schjeldahl which disclosed injection
+ molding a tubular preform and then injecting air into the preform to expand it against a
+ mold (blow molding). The reference did not directly state that the end product balloon
+ was biaxially oriented. It did disclose that the balloon was
+ "formed from a thin flexible inelastic, high tensile strength, biaxially oriented
+ synthetic plastic material." *Id.* at 1462 (emphasis in original). The
+ examiner argued that Schjeldahl’s balloon was inherently biaxially oriented. The Board
+ reversed on the basis that the examiner did not provide objective evidence or cogent
+ technical reasoning to support the conclusion of inherency.).
+ 
+
+
+In *In re Schreiber,* 128 F.3d 1473, 44 USPQ2d 1429
+ (Fed. Cir. 1997), the court affirmed a finding that a prior patent to a conical spout
+ used primarily to dispense oil from an oil can inherently performed the functions
+ recited in applicant’s claim to a conical container top for dispensing popped popcorn.
+ The examiner had asserted inherency based on the structural similarity between the
+ patented spout and applicant’s disclosed top, i.e., both structures had the same general
+ shape. The court stated:
+ 
+
+
+
+> 
+> [N]othing in Schreiber’s [applicant’s] claim suggests that
+>  Schreiber’s container is 'of a different shape’ than Harz’s [patent]. In fact, [ ] an
+>  embodiment according to Harz (Fig. 5) and the embodiment depicted in figure 1 of
+>  Schreiber’s application have the same general shape. For that reason, the examiner
+>  was justified in concluding that the opening of a conically shaped top as disclosed
+>  by Harz is inherently of a size sufficient to ‘allow [ ] several kernels of popped
+>  popcorn to pass through at the same time’ and that the taper of Harz’s conically
+>  shaped top is inherently of such a shape ‘as to by itself jam up the popped popcorn
+>  before the end of the cone and permit the dispensing of only a few kernels at a shake
+>  of a package when the top is mounted to the container.’ The examiner therefore
+>  correctly found that Harz established a prima facie case of anticipation.
+>  
+> 
+> 
+> 
+
+
+*Schreiber,* 128 F.3d at 1478, 44 USPQ2d at 1432.
+ 
+
+**V.** **ONCE A REFERENCE TEACHING PRODUCT APPEARING TO BE SUBSTANTIALLY IDENTICAL IS MADE
+ THE BASIS OF A REJECTION, AND THE EXAMINER PRESENTS EVIDENCE OR REASONING TO SHOW
+ INHERENCY, THE BURDEN OF PRODUCTION SHIFTS TO THE APPLICANT**"[T]he PTO can require an applicant to prove that the prior art
+ products do not necessarily or inherently possess the characteristics of his [or her]
+ claimed product. Whether the rejection is based on ‘inherency’ under **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**, on
+ ‘*prima facie* obviousness’ under **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)**,
+ jointly or alternatively, the burden of proof is the same." *In re Best,* 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977) (footnote and citation
+ omitted). The burden of proof is similar to that required with respect to
+ product-by-process claims. *In re Fitzgerald,* 619 F.2d 67, 70, 205
+ USPQ 594, 596 (CCPA 1980) (citing *Best,* 562 F.2d at 1255).
+ 
+
+
+In *Fitzgerald,* the claims were directed to a
+ self-locking screw-threaded fastener comprising a metallic threaded fastener having
+ patches of crystallizable thermoplastic bonded thereto. The claim further specified that
+ the thermoplastic had a reduced degree of crystallization shrinkage. The specification
+ disclosed that the locking fastener was made by heating the metal fastener to melt a
+ thermoplastic blank which is pressed against the metal. After the thermoplastic adheres
+ to the metal fastener, the end product is cooled by quenching in water. The examiner
+ made a rejection based on a U.S. patent to Barnes. Barnes taught a self-locking fastener
+ in which the patch of thermoplastic was made by depositing thermoplastic powder on a
+ metallic fastener which was then heated. The end product was cooled in ambient air, by
+ cooling air or by contacting the fastener with a water trough. The court first noted
+ that the two fasteners were identical or only slightly different from each other. "Both
+ fasteners possess the same utility, employ the same crystallizable polymer (nylon 11),
+ and have an adherent plastic patch formed by melting and then cooling the polymer."
+ *Id.* at 596 n.1, 619 F.2d at 70 n.1. The court then noted that the
+ Board had found that Barnes’ cooling rate could reasonably be expected to result in a
+ polymer possessing the claimed crystallization shrinkage rate. Applicants had not
+ rebutted this finding with evidence that the shrinkage rate was indeed different. They
+ had only argued that the crystallization shrinkage rate was dependent on the cool down
+ rate and that the cool down rate of Barnes was much slower than theirs. Because a
+ difference in the cool down rate does not necessarily result in a difference in
+ shrinkage, objective evidence was required to rebut the **[35 U.S.C.
+ 102](mpep-9015-appx-l.html#d0e302383)**/**[103](mpep-9015-appx-l.html#d0e302450)***prima facie* case.
+ 
+
+
+In *Schreiber,* 128 F.3d 1473, 1478, 44 USPQ2d 1429,
+ 1432 (Fed.Cir.1997), the court held that applicant’s declaration failed to overcome a
+ *prima facie* case of anticipation because the declaration did not
+ specify the dimensions of either the dispensing top that was tested or the popcorn that
+ was used. Applicant’s declaration merely asserted that a conical dispensing top built
+ according to a figure in the prior art patent was too small to jam and dispense popcorn
+ and thus could not inherently perform the functions recited in applicant’s claims. The
+ court pointed out the disclosure of the prior art patent was not limited to use as an
+ oil can dispenser, but rather was broader than the precise configuration shown in the
+ patent’s figure. The court also noted that the Board of Patent Appeals and Interferences
+ found as a factual matter that a scaled-up version of the top disclosed in the patent
+ would be capable of performing the functions recited in applicant’s claim.
+ 
+
+
+See **[MPEP
+ § 2113](s2113.html#d0e201450)** for more information on the analogous burden of proof
+ applied to product-by-process claims.
+ 
+
+
+
+# 2112.01 Composition, Product, and  Apparatus Claims [R-10.2019]
+
+**I.** **PRODUCT AND APPARATUS CLAIMS — WHEN THE STRUCTURE RECITED IN THE REFERENCE IS
+ SUBSTANTIALLY IDENTICAL TO THAT OF THE CLAIMS, CLAIMED PROPERTIES OR FUNCTIONS ARE
+ PRESUMED TO BE INHERENT**Where the claimed and prior art products are identical or
+ substantially identical in structure or composition, or are produced by identical or
+ substantially identical processes, a *prima facie* case of either
+ anticipation or obviousness has been established. *In re Best,* 562
+ F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for
+ believing that the products of the applicant and the prior art are the same, the
+ applicant has the burden of showing that they are not." *In re
+ Spada,* 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
+ Therefore, the *prima facie* case can be rebutted by evidence
+ showing that the prior art products do not necessarily possess
+ the characteristics of the claimed product. *In re Best,* 562 F.2d
+ at 1255, 195 USPQ at 433. See also *Titanium Metals Corp.**v. Banner,* 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Claims
+ were directed to a titanium alloy containing 0.2-0.4% Mo and 0.6-0.9% Ni having
+ corrosion resistance. A Russian article disclosed a titanium alloy containing 0.25%
+ Mo and 0.75% Ni but was silent as to corrosion resistance. The Federal Circuit held
+ that the claim was anticipated because the percentages of Mo and Ni were squarely
+ within the claimed ranges. The court went on to say that it was immaterial what
+ properties the alloys had or who discovered the properties because the composition is
+ the same and thus must necessarily exhibit the properties.).
+ 
+
+
+See also *In re Ludtke,* 441 F.2d 660, 169 USPQ 563
+ (CCPA 1971) (Claim 1 was directed to a parachute canopy having concentric
+ circumferential panels radially separated from each other by radially extending tie
+ lines. The panels were separated "such that the critical velocity of each
+ successively larger panel will be less than the critical velocity of the previous
+ panel, whereby said parachute will sequentially open and thus gradually decelerate."
+ The court found that the claim was anticipated by Menget. Menget taught a parachute
+ having three circumferential panels separated by tie lines. The court upheld the
+ rejection finding that applicant had failed to show that Menget did not possess the
+ functional characteristics of the claims.); *Northam Warren Corp.**v.**D. F. Newfield Co.,* 7 F.Supp. 773, 22 USPQ 313 (E.D.N.Y. 1934) (A
+ patent to a pencil for cleaning fingernails was held invalid because a pencil of the
+ same structure for writing was found in the prior art.).
+ 
+
+**II.** **COMPOSITION CLAIMS — IF THE COMPOSITION IS PHYSICALLY THE SAME, IT MUST HAVE
+ THE SAME PROPERTIES**"Products of identical chemical composition can not have mutually
+ exclusive properties." *In re Spada,* 911 F.2d 705, 709, 15 USPQ2d
+ 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are
+ inseparable. Therefore, if the prior art teaches the identical chemical structure,
+ the properties applicant discloses and/or claims are necessarily present.
+ *Id.* (Applicant argued that the claimed composition was a
+ pressure sensitive adhesive containing a tacky polymer while the product of the
+ reference was hard and abrasion resistant. "The Board correctly found that the
+ virtual identity of monomers and procedures sufficed to support a *prima
+ facie* case of unpatentability of Spada’s polymer latexes for lack of
+ novelty.").
+ 
+
+**III.** **PRODUCT CLAIMS – NONFUNCTIONAL PRINTED MATTER DOES NOT DISTINGUISH CLAIMED
+ PRODUCT FROM OTHERWISE IDENTICAL PRIOR ART PRODUCT**Where the only difference between a prior art product and a claimed
+ product is printed matter that is not functionally related to the product, the
+ content of the printed matter will not distinguish the claimed product from the prior
+ art. *In re Ngai,* 367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed.
+ Cir. 2004) (Claim at issue was a kit requiring instructions and a buffer agent. The
+ Federal Circuit held that the claim was anticipated by a prior art reference that
+ taught a kit that included instructions and a buffer agent, even though the content
+ of the instructions differed, explaining "[i]f we were to adopt [applicant’s]
+ position, anyone could continue patenting a product indefinitely provided that they
+ add a new instruction sheet to the product."). See also *In re
+ Gulack,* 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983)
+ (
+ "Where the printed matter is not functionally
+ related to the substrate, the printed matter will not distinguish the invention
+ from the prior art in terms of patentability….[T]he critical question is whether
+ there exists any new and unobvious functional relationship between the printed
+ matter and the substrate."
+ 
+ 
+ ); *In re Miller,*
+ 418 F.2d 1392, 1396 (CCPA 1969) (finding a new and nonobvious relationship between a
+ measuring cup and writing showing how to "half" a recipe); *In re
+ Seid,* 161 F.2d 229, 73 USPQ 431 (CCPA 1947) (matters relating to
+ ornamentation only which have no mechanical function cannot be relied upon to
+ patentably distinguish the claimed invention from the prior art); *In re
+ Xiao,* 462 Fed. App'x 947, 950-51 (Fed. Cir. 2011) (non-precedential)
+ (affirming an obviousness rejection of claims directed to a tumbler lock that used
+ letters instead of numbers and had a wild-card label instead of one of the letters);
+ *In re Bryan,* 323 Fed. App'x 898, 901 (Fed. Cir. 2009)
+ (non-precedential) (printed matter on game cards bears no new and nonobvious
+ functional relationship to game board). 
+ 
+
+
+The court has extended the rationale in the printed
+ matter cases, in which, for example, written instructions are added to a known
+ product, to method claims in which "an instruction limitation" (i.e., a limitation
+ "informing" someone about the existence of an inherent property of that method) is
+ added to a method known in the art. *King Pharmaceuticals, Inc. v. Eon
+ Labs,* Inc., 616 F.3d 1267, 1279, 95 USPQ2d 1833, 1842 (2010). Similar to
+ the inquiry for products with printed matter thereon, for such method cases the
+ relevant inquiry is whether a new and nonobvious functional relationship with the
+ known method exists. In *King Pharma,* the court found that the
+ relevant determination is whether the "instruction limitation" has a "new and
+ unobvious functional relationship" with the known method of administering the drug
+ with food. *Id.*. The court held that the relationship was
+ non-functional because "[i]nforming a patient about the benefits of a drug in no way
+ transforms the process of taking the drug with food." *Id.* That is,
+ the actual method of taking a drug with food is the same regardless of whether the
+ patient is informed of the benefits. *Id.* "In other words, the
+ ‘informing’ limitation ‘in no way depends on the method, and the method does not
+ depend on the ‘informing’ limitation.’" *Id.* (citing *In re
+ Ngai,* 367 F.3d 1336, 1339 (Fed. Cir. 2004)); see also *In re
+ Kao,* 639 F.3d 1057, 1072-73, 98 USPQ2d 1799, 1811-12 (Fed. Cir.
+ 2011).
+ 
+
+
+
+
+# 2112.02 Process Claims [R-10.2019]
+
+**I.** **PROCESS CLAIMS — PRIOR ART DEVICE ANTICIPATES A CLAIMED PROCESS IF THE DEVICE
+ CARRIES OUT THE PROCESS DURING NORMAL OPERATION**Under the principles of inherency, if a prior art device, in its
+ normal and usual operation, would necessarily perform the method claimed, then the
+ method claimed will be considered to be anticipated by the prior art device. When the
+ prior art device is the same as a device described in the specification for carrying
+ out the claimed method, it can be assumed the device will inherently perform the
+ claimed process. *In re King,* 801 F.2d 1324, 231 USPQ 136 (Fed.
+ Cir. 1986) (The claims were directed to a method of enhancing color effects produced
+ by ambient light through a process of absorption and reflection of the light off a
+ coated substrate. A prior art reference to *Donley* disclosed a
+ glass substrate coated with silver and metal oxide 200-800 angstroms thick. While
+ Donley disclosed using the coated substrate to produce architectural colors, the
+ absorption and reflection mechanisms of the claimed process were not disclosed.
+ However, King’s specification disclosed using a coated substrate of Donley’s
+ structure for use in his process. The Federal Circuit upheld the Board’s finding that
+ 
+ "Donley inherently performs the function
+ disclosed in the method claims on appeal when that device is used in ‘normal and
+ usual operation’"
+ 
+ 
+ and found that a *prima
+ facie* case of anticipation was made out. *Id.* at 138,
+ 801 F.2d at 1326. It was up to applicant to prove that Donley's structure would not
+ perform the claimed method when placed in ambient light.). See also *In re
+ Best,* 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (Applicant
+ claimed a process for preparing a hydrolytically-stable zeolitic aluminosilicate
+ which included a step of "cooling the steam zeolite ... at a rate sufficiently rapid
+ that the cooled zeolite exhibits an X-ray diffraction pattern ...." All the process
+ limitations were expressly disclosed by a U.S. patent to Hansford except the cooling
+ step. The court stated that any sample of Hansford’s zeolite would necessarily be
+ cooled to facilitate subsequent handling. Therefore, rejections under
+ **[35 U.S.C.
+ 102](mpep-9015-appx-l.html#d0e302383)** and **[103](mpep-9015-appx-l.html#d0e302450)** were properly made. Applicant
+ had failed to introduce any evidence comparing X-ray diffraction patterns showing a
+ difference in cooling rate between the claimed process and that of Hansford or any
+ data showing that the process of Hansford would result in a product with a different
+ X-ray diffraction. Either type of evidence would have rebutted the rejections under
+ **[35 U.S.C.
+ 102](mpep-9015-appx-l.html#d0e302383)**. A further analysis would be necessary to determine if the
+ process was nonobvious under **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)**.); *Ex
+ parte**Novitski,* 26 USPQ2d 1389 (Bd. Pat. App. & Inter. 1993) (The
+ Board rejected a claim directed to a method for protecting a plant from plant
+ pathogenic nematodes by inoculating the plant with a nematode inhibiting strain of
+ *P. cepacia.* A U.S. patent to *Dart* disclosed
+ inoculation using *P. cepacia* type Wisconsin 526 bacteria for
+ protecting the plant from fungal disease. Dart was silent as to nematode inhibition
+ but the Board concluded that nematode inhibition was an inherent property of the
+ bacteria. The Board noted that applicant had stated in the specification that
+ Wisconsin 526 possesses an 18% nematode inhibition rating.). 
+ 
+
+**II.** **PROCESS OF USE CLAIMS — NEW AND NONOBVIOUS USES OF OLD STRUCTURES AND
+ COMPOSITIONS MAY BE PATENTABLE**The discovery of a new use for an old structure based on unknown
+ properties of the structure might be patentable to the discoverer as a process of
+ using. *In re Hack,* 245 F.2d 246, 248, 114 USPQ 161, 163 (CCPA
+ 1957). However, when the claim recites using an old composition or structure and the
+ "use" is directed to a result or property of that composition or structure, then the
+ claim is anticipated. *In re**May,* 574 F.2d 1082, 1090, 197 USPQ 601, 607 (CCPA 1978) (Claims 1
+ and 6, directed to a method of effecting nonaddictive analgesia (pain reduction) in
+ animals, were found to be anticipated by the applied prior art which disclosed the
+ same compounds for effecting analgesia but which was silent as to addiction. The
+ court upheld the rejection and stated that the applicants had merely found a new
+ property of the compound and such a discovery did not constitute a new use. The court
+ went on to reverse the obviousness rejection of claims 2-5 and 7-10 which recited a
+ process of using a new compound. The court relied on evidence showing that the
+ nonaddictive property of the new compound was unexpected.). See also  *In re
+ Tomlinson,* 363 F.2d 928, 150 USPQ 623 (CCPA 1966) (The claim was
+ directed to a process of inhibiting light degradation of polypropylene by mixing it
+ with one of a genus of compounds, including nickel dithiocarbamate. A reference
+ taught mixing polypropylene with nickel dithiocarbamate to lower heat degradation.
+ The court held that the claims read on the obvious process of mixing polypropylene
+ with the nickel dithiocarbamate and that the preamble of the claim was merely
+ directed to the result of mixing the two materials. "While the references do not show
+ a specific recognition of that result, its discovery by appellants is tantamount only
+ to finding a property in the old composition." 363 F.2d at
+ 934, 150 USPQ at 628 (emphasis in original)). 
+ 
+
+
+
+[[top]](#top)
+
+
+, 
+# 2112.01 Composition, Product, and  Apparatus Claims [R-10.2019]
+
+**I.** **PRODUCT AND APPARATUS CLAIMS — WHEN THE STRUCTURE RECITED IN THE REFERENCE IS
+ SUBSTANTIALLY IDENTICAL TO THAT OF THE CLAIMS, CLAIMED PROPERTIES OR FUNCTIONS ARE
+ PRESUMED TO BE INHERENT**Where the claimed and prior art products are identical or
+ substantially identical in structure or composition, or are produced by identical or
+ substantially identical processes, a *prima facie* case of either
+ anticipation or obviousness has been established. *In re Best,* 562
+ F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for
+ believing that the products of the applicant and the prior art are the same, the
+ applicant has the burden of showing that they are not." *In re
+ Spada,* 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
+ Therefore, the *prima facie* case can be rebutted by evidence
+ showing that the prior art products do not necessarily possess
+ the characteristics of the claimed product. *In re Best,* 562 F.2d
+ at 1255, 195 USPQ at 433. See also *Titanium Metals Corp.**v. Banner,* 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Claims
+ were directed to a titanium alloy containing 0.2-0.4% Mo and 0.6-0.9% Ni having
+ corrosion resistance. A Russian article disclosed a titanium alloy containing 0.25%
+ Mo and 0.75% Ni but was silent as to corrosion resistance. The Federal Circuit held
+ that the claim was anticipated because the percentages of Mo and Ni were squarely
+ within the claimed ranges. The court went on to say that it was immaterial what
+ properties the alloys had or who discovered the properties because the composition is
+ the same and thus must necessarily exhibit the properties.).
+ 
+
+
+See also *In re Ludtke,* 441 F.2d 660, 169 USPQ 563
+ (CCPA 1971) (Claim 1 was directed to a parachute canopy having concentric
+ circumferential panels radially separated from each other by radially extending tie
+ lines. The panels were separated "such that the critical velocity of each
+ successively larger panel will be less than the critical velocity of the previous
+ panel, whereby said parachute will sequentially open and thus gradually decelerate."
+ The court found that the claim was anticipated by Menget. Menget taught a parachute
+ having three circumferential panels separated by tie lines. The court upheld the
+ rejection finding that applicant had failed to show that Menget did not possess the
+ functional characteristics of the claims.); *Northam Warren Corp.**v.**D. F. Newfield Co.,* 7 F.Supp. 773, 22 USPQ 313 (E.D.N.Y. 1934) (A
+ patent to a pencil for cleaning fingernails was held invalid because a pencil of the
+ same structure for writing was found in the prior art.).
+ 
+
+**II.** **COMPOSITION CLAIMS — IF THE COMPOSITION IS PHYSICALLY THE SAME, IT MUST HAVE
+ THE SAME PROPERTIES**"Products of identical chemical composition can not have mutually
+ exclusive properties." *In re Spada,* 911 F.2d 705, 709, 15 USPQ2d
+ 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are
+ inseparable. Therefore, if the prior art teaches the identical chemical structure,
+ the properties applicant discloses and/or claims are necessarily present.
+ *Id.* (Applicant argued that the claimed composition was a
+ pressure sensitive adhesive containing a tacky polymer while the product of the
+ reference was hard and abrasion resistant. "The Board correctly found that the
+ virtual identity of monomers and procedures sufficed to support a *prima
+ facie* case of unpatentability of Spada’s polymer latexes for lack of
+ novelty.").
+ 
+
+**III.** **PRODUCT CLAIMS – NONFUNCTIONAL PRINTED MATTER DOES NOT DISTINGUISH CLAIMED
+ PRODUCT FROM OTHERWISE IDENTICAL PRIOR ART PRODUCT**Where the only difference between a prior art product and a claimed
+ product is printed matter that is not functionally related to the product, the
+ content of the printed matter will not distinguish the claimed product from the prior
+ art. *In re Ngai,* 367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed.
+ Cir. 2004) (Claim at issue was a kit requiring instructions and a buffer agent. The
+ Federal Circuit held that the claim was anticipated by a prior art reference that
+ taught a kit that included instructions and a buffer agent, even though the content
+ of the instructions differed, explaining "[i]f we were to adopt [applicant’s]
+ position, anyone could continue patenting a product indefinitely provided that they
+ add a new instruction sheet to the product."). See also *In re
+ Gulack,* 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983)
+ (
+ "Where the printed matter is not functionally
+ related to the substrate, the printed matter will not distinguish the invention
+ from the prior art in terms of patentability….[T]he critical question is whether
+ there exists any new and unobvious functional relationship between the printed
+ matter and the substrate."
+ 
+ 
+ ); *In re Miller,*
+ 418 F.2d 1392, 1396 (CCPA 1969) (finding a new and nonobvious relationship between a
+ measuring cup and writing showing how to "half" a recipe); *In re
+ Seid,* 161 F.2d 229, 73 USPQ 431 (CCPA 1947) (matters relating to
+ ornamentation only which have no mechanical function cannot be relied upon to
+ patentably distinguish the claimed invention from the prior art); *In re
+ Xiao,* 462 Fed. App'x 947, 950-51 (Fed. Cir. 2011) (non-precedential)
+ (affirming an obviousness rejection of claims directed to a tumbler lock that used
+ letters instead of numbers and had a wild-card label instead of one of the letters);
+ *In re Bryan,* 323 Fed. App'x 898, 901 (Fed. Cir. 2009)
+ (non-precedential) (printed matter on game cards bears no new and nonobvious
+ functional relationship to game board). 
+ 
+
+
+The court has extended the rationale in the printed
+ matter cases, in which, for example, written instructions are added to a known
+ product, to method claims in which "an instruction limitation" (i.e., a limitation
+ "informing" someone about the existence of an inherent property of that method) is
+ added to a method known in the art. *King Pharmaceuticals, Inc. v. Eon
+ Labs,* Inc., 616 F.3d 1267, 1279, 95 USPQ2d 1833, 1842 (2010). Similar to
+ the inquiry for products with printed matter thereon, for such method cases the
+ relevant inquiry is whether a new and nonobvious functional relationship with the
+ known method exists. In *King Pharma,* the court found that the
+ relevant determination is whether the "instruction limitation" has a "new and
+ unobvious functional relationship" with the known method of administering the drug
+ with food. *Id.*. The court held that the relationship was
+ non-functional because "[i]nforming a patient about the benefits of a drug in no way
+ transforms the process of taking the drug with food." *Id.* That is,
+ the actual method of taking a drug with food is the same regardless of whether the
+ patient is informed of the benefits. *Id.* "In other words, the
+ ‘informing’ limitation ‘in no way depends on the method, and the method does not
+ depend on the ‘informing’ limitation.’" *Id.* (citing *In re
+ Ngai,* 367 F.3d 1336, 1339 (Fed. Cir. 2004)); see also *In re
+ Kao,* 639 F.3d 1057, 1072-73, 98 USPQ2d 1799, 1811-12 (Fed. Cir.
+ 2011).
+ 
+
+
+, 
+# 2112.02 Process Claims [R-10.2019]
+
+**I.** **PROCESS CLAIMS — PRIOR ART DEVICE ANTICIPATES A CLAIMED PROCESS IF THE DEVICE
+ CARRIES OUT THE PROCESS DURING NORMAL OPERATION**Under the principles of inherency, if a prior art device, in its
+ normal and usual operation, would necessarily perform the method claimed, then the
+ method claimed will be considered to be anticipated by the prior art device. When the
+ prior art device is the same as a device described in the specification for carrying
+ out the claimed method, it can be assumed the device will inherently perform the
+ claimed process. *In re King,* 801 F.2d 1324, 231 USPQ 136 (Fed.
+ Cir. 1986) (The claims were directed to a method of enhancing color effects produced
+ by ambient light through a process of absorption and reflection of the light off a
+ coated substrate. A prior art reference to *Donley* disclosed a
+ glass substrate coated with silver and metal oxide 200-800 angstroms thick. While
+ Donley disclosed using the coated substrate to produce architectural colors, the
+ absorption and reflection mechanisms of the claimed process were not disclosed.
+ However, King’s specification disclosed using a coated substrate of Donley’s
+ structure for use in his process. The Federal Circuit upheld the Board’s finding that
+ 
+ "Donley inherently performs the function
+ disclosed in the method claims on appeal when that device is used in ‘normal and
+ usual operation’"
+ 
+ 
+ and found that a *prima
+ facie* case of anticipation was made out. *Id.* at 138,
+ 801 F.2d at 1326. It was up to applicant to prove that Donley's structure would not
+ perform the claimed method when placed in ambient light.). See also *In re
+ Best,* 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (Applicant
+ claimed a process for preparing a hydrolytically-stable zeolitic aluminosilicate
+ which included a step of "cooling the steam zeolite ... at a rate sufficiently rapid
+ that the cooled zeolite exhibits an X-ray diffraction pattern ...." All the process
+ limitations were expressly disclosed by a U.S. patent to Hansford except the cooling
+ step. The court stated that any sample of Hansford’s zeolite would necessarily be
+ cooled to facilitate subsequent handling. Therefore, rejections under
+ **[35 U.S.C.
+ 102](mpep-9015-appx-l.html#d0e302383)** and **[103](mpep-9015-appx-l.html#d0e302450)** were properly made. Applicant
+ had failed to introduce any evidence comparing X-ray diffraction patterns showing a
+ difference in cooling rate between the claimed process and that of Hansford or any
+ data showing that the process of Hansford would result in a product with a different
+ X-ray diffraction. Either type of evidence would have rebutted the rejections under
+ **[35 U.S.C.
+ 102](mpep-9015-appx-l.html#d0e302383)**. A further analysis would be necessary to determine if the
+ process was nonobvious under **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)**.); *Ex
+ parte**Novitski,* 26 USPQ2d 1389 (Bd. Pat. App. & Inter. 1993) (The
+ Board rejected a claim directed to a method for protecting a plant from plant
+ pathogenic nematodes by inoculating the plant with a nematode inhibiting strain of
+ *P. cepacia.* A U.S. patent to *Dart* disclosed
+ inoculation using *P. cepacia* type Wisconsin 526 bacteria for
+ protecting the plant from fungal disease. Dart was silent as to nematode inhibition
+ but the Board concluded that nematode inhibition was an inherent property of the
+ bacteria. The Board noted that applicant had stated in the specification that
+ Wisconsin 526 possesses an 18% nematode inhibition rating.). 
+ 
+
+**II.** **PROCESS OF USE CLAIMS — NEW AND NONOBVIOUS USES OF OLD STRUCTURES AND
+ COMPOSITIONS MAY BE PATENTABLE**The discovery of a new use for an old structure based on unknown
+ properties of the structure might be patentable to the discoverer as a process of
+ using. *In re Hack,* 245 F.2d 246, 248, 114 USPQ 161, 163 (CCPA
+ 1957). However, when the claim recites using an old composition or structure and the
+ "use" is directed to a result or property of that composition or structure, then the
+ claim is anticipated. *In re**May,* 574 F.2d 1082, 1090, 197 USPQ 601, 607 (CCPA 1978) (Claims 1
+ and 6, directed to a method of effecting nonaddictive analgesia (pain reduction) in
+ animals, were found to be anticipated by the applied prior art which disclosed the
+ same compounds for effecting analgesia but which was silent as to addiction. The
+ court upheld the rejection and stated that the applicants had merely found a new
+ property of the compound and such a discovery did not constitute a new use. The court
+ went on to reverse the obviousness rejection of claims 2-5 and 7-10 which recited a
+ process of using a new compound. The court relied on evidence showing that the
+ nonaddictive property of the new compound was unexpected.). See also  *In re
+ Tomlinson,* 363 F.2d 928, 150 USPQ 623 (CCPA 1966) (The claim was
+ directed to a process of inhibiting light degradation of polypropylene by mixing it
+ with one of a genus of compounds, including nickel dithiocarbamate. A reference
+ taught mixing polypropylene with nickel dithiocarbamate to lower heat degradation.
+ The court held that the claims read on the obvious process of mixing polypropylene
+ with the nickel dithiocarbamate and that the preamble of the claim was merely
+ directed to the result of mixing the two materials. "While the references do not show
+ a specific recognition of that result, its discovery by appellants is tantamount only
+ to finding a property in the old composition." 363 F.2d at
+ 934, 150 USPQ at 628 (emphasis in original)). 
+ 
+
+
+]

data/2100/s2113.html.txt

@@ -0,0 +1,114 @@
+[
+# 2113 Product-by-Process Claims [R-10.2019]
+
+**I.** **PRODUCT-BY-PROCESS CLAIMS ARE NOT LIMITED TO THE MANIPULATIONS OF THE RECITED
+ STEPS, ONLY THE STRUCTURE IMPLIED BY THE STEPS**"[E]ven though product-by-process claims are limited by and defined by
+ the process, determination of patentability is based on the product itself. The
+ patentability of a product does not depend on its method of production. If the product
+ in the product-by-process claim is the same as or obvious from a product of the prior
+ art, the claim is unpatentable even though the prior product was made by a different
+ process."  *In re Thorpe,* 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed.
+ Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The
+ process of making the developer was allowed. The difference between the inventive
+ process and the prior art was the addition of metal oxide and carboxylic acid as
+ separate ingredients instead of adding the more expensive pre-reacted metal carboxylate.
+ The product-by-process claim was rejected because the end product, in both the prior art
+ and the allowed process, ends up containing metal carboxylate. The fact that the metal
+ carboxylate is not directly added, but is instead produced in-situ does not change the
+ end product.). Furthermore, 
+ "[b]ecause validity is determined based
+ on the requirements of patentability, a patent is invalid if a product made by the
+ process recited in a product-by-process claim is anticipated by or obvious from prior
+ art products, even if those prior art products are made by different
+ processes."
+ 
+ 
+ *Amgen Inc. v. F. Hoffman-La Roche Ltd.,* 580 F.3d 1340, 1370 n 14, 92
+ USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009). See also *Purdue Pharma v. Epic
+ Pharma,* 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016). However, in the
+ context of an infringement analysis, a product-by-process claim is only infringed by a
+ product made by the process recited in the claim. *Id.* at 1370
+ (
+ "a product in the prior art made by a different process can
+ anticipate a product-by-process claim, but an accused product made by a different
+ process cannot infringe a product-by-process claim"
+ 
+ 
+ ). 
+ 
+
+
+ The structure implied by the process steps should be considered when
+ assessing the patentability of product-by-process claims over the prior art, especially
+ where the product can only be defined by the process steps by which the product is made,
+ or where the manufacturing process steps would be expected to impart distinctive
+ structural characteristics to the final product. See, e.g., *In re
+ Garnero,* 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979) (holding
+ "interbonded by interfusion" to limit structure of the claimed composite and noting that
+ terms such as "welded," "intermixed," "ground in place," "press fitted," and "etched"
+ are capable of construction as structural limitations). See also *In re Nordt
+ Dev. Co.,* 881 F.3d 1371,1375-76, 125 USPQ2d 1817, 1820 (Fed. Cir.
+ 2018)(holding "the specification demonstrates that ‘injected molded’ connotes an
+ integral structure," and discussing several cases since *Garnero* that
+ held "limitations to convey structure even when they also describe a process of
+ manufacture"). 
+ 
+
+**II.** **ONCE A PRODUCT APPEARING TO BE SUBSTANTIALLY IDENTICAL IS FOUND AND A PRIOR ART
+ REJECTION IS MADE, THE BURDEN SHIFTS TO THE APPLICANT TO SHOW AN NONOBVIOUS
+ DIFFERENCE**"The Patent Office bears a lesser burden of proof in making out a case
+ of *prima facie* obviousness for product-by-process claims because of
+ their peculiar nature" than when a product is claimed in the conventional fashion.
+ *In re Fessmann,* 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974).
+ Once the examiner provides a rationale tending to show that the claimed product appears
+ to be the same or similar to that of the prior art, although produced by a different
+ process, the burden shifts to applicant to come forward with evidence establishing an
+ nonobvious difference between the claimed product and the prior art product. *In
+ re Marosi,* 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983) (The
+ claims were directed to a zeolite manufactured by mixing together various inorganic
+ materials in solution and heating the resultant gel to form a crystalline metal silicate
+ essentially free of alkali metal. The prior art described a process of making a zeolite
+ which, after ion exchange to remove alkali metal, appeared to be "essentially free of
+ alkali metal." The court upheld the rejection because the applicant had not come forward
+ with any evidence that the prior art was not "essentially free of alkali metal" and
+ therefore a different and nonobvious product.). 
+ 
+
+
+See also *Ex parte Gray,* 10 USPQ2d 1922 (Bd. Pat.
+ App. & Inter. 1989) (The prior art disclosed human nerve growth factor (b-NGF)
+ isolated from human placental tissue. The claim was directed to b-NGF produced through
+ genetic engineering techniques. The factor produced seemed to be substantially the same
+ whether isolated from tissue or produced through genetic engineering. While the
+ applicant questioned the purity of the prior art factor, no concrete evidence of an
+ nonobvious difference was presented. The Board stated that the dispositive issue is
+ whether the claimed factor exhibits any unexpected properties compared with the factor
+ disclosed by the prior art. The Board further stated that the applicant should have made
+ some comparison between the two factors to establish unexpected properties since the
+ materials appeared to be identical or only slightly different.).
+ 
+
+**III.** **A REJECTION BASED ALTERNATIVELY ON 35 U.S.C. 102 OR 103 FOR PRODUCT-BY-PROCESS
+ CLAIMS HAS BEEN APPROVED BY THE COURTS**"[T]he lack of physical description in a product-by-process claim makes
+ determination of the patentability of the claim more difficult, since in spite of the
+ fact that the claim may recite only process limitations, it is the patentability of the
+ product claimed and not of the recited process steps which must be established. We are
+ therefore of the opinion that when the prior art discloses a product which reasonably
+ appears to be either identical with or only slightly different than a product claimed in
+ a product-by-process claim, a rejection based alternatively on either **[section 102](mpep-9015-appx-l.html#d0e302383)** or
+ **[section
+ 103](mpep-9015-appx-l.html#d0e302450)** of the statute is eminently fair and acceptable. As a
+ practical matter, the Patent Office is not equipped to manufacture products by the
+ myriad of processes put before it and then obtain prior art products and make physical
+ comparisons therewith." *In re Brown,* 459 F.2d 531, 535, 173 USPQ 685,
+ 688 (CCPA 1972). Office personnel should note that reliance on the alternative grounds
+ of **[35 U.S.C.
+ 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)** or **[35 U.S.C. 103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** does not eliminate the
+ need to explain both the anticipation and obviousness aspects of the rejections.
+ 
+
+
+[[top]](#top)
+
+
+]

data/2100/s2114.html.txt

@@ -0,0 +1,157 @@
+[
+# 2114 Apparatus and Article Claims — Functional Language [R-07.2015]
+
+
+For a discussion of case law which provides guidance in interpreting the
+ functional portion of means-plus-function limitations see **[MPEP § 2181](s2181.html#d0e219279)** -
+ **[§
+ 2186](s2186.html#d0e220631)**.
+ 
+
+**I.** **INHERENCY AND FUNCTIONAL LIMITATIONS IN APPARATUS CLAIMS**Features of an apparatus may be recited either structurally or
+ functionally. *In re Schreiber,* 128 F.3d 1473, 1478, 44 USPQ2d 1429,
+ 1432 (Fed. Cir. 1997). See also **[MPEP § 2173.05(g)](s2173.html#d0e218409)**. If an examiner
+ concludes that a functional limitation is an inherent characteristic of the prior art,
+ then to establish a prima case of anticipation or obviousness, the examiner should
+ explain that the prior art structure inherently possesses the functionally defined
+ limitations of the claimed apparatus. *In re Schreiber,* 128 F.3d at
+ 1478, 44 USPQ2d at 1432. See also *Bettcher Industries, Inc. v. Bunzl USA,
+ Inc.,* 661 F.3d 629, 639-40,100 USPQ2d 1433, 1440 (Fed. Cir. 2011). The
+ burden then shifts to applicant to establish that the prior art does not possess the
+ characteristic relied on. *In re Schreiber,* 128 F.3d at 1478, 44
+ USPQ2d at 1432; *In re Swinehart,* 439 F.2d 210, 213, 169 USPQ 226, 228
+ (CCPA 1971) ("where the Patent Office has reason to believe that a functional limitation
+ asserted to be critical for establishing novelty in the claimed subject matter may, in
+ fact, be an inherent characteristic of the prior art, it possesses the authority to
+ require the applicant to prove that the subject matter shown to be in the prior art does
+ not possess the characteristic relied on").
+ 
+
+**II.** **MANNER OF OPERATING THE DEVICE DOES NOT DIFFERENTIATE APPARATUS CLAIM FROM THE
+ PRIOR ART**"[A]pparatus claims cover what a device *is,* not what
+ a device *does*." *Hewlett-Packard Co.**v.**Bausch & Lomb Inc.,* 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528
+ (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect
+ to the manner in which a claimed apparatus is intended to be employed does not
+ differentiate the claimed apparatus from a prior art apparatus" if the prior art
+ apparatus teaches all the structural limitations of the claim.
+ *Ex parte Masham,* 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)
+ (The preamble of claim 1 recited that the apparatus was "for mixing flowing developer
+ material" and the body of the claim recited "means for mixing ..., said mixing means
+ being stationary and completely submerged in the developer material." The claim was
+ rejected over a reference which taught all the structural limitations of the claim for
+ the intended use of mixing flowing developer. However, the mixer was only partially
+ submerged in the developer material. The Board held that the amount of submersion is
+ immaterial to the structure of the mixer and thus the claim was properly rejected.).
+ 
+ 
+
+**III.** **A PRIOR ART DEVICE CAN PERFORM ALL THE FUNCTIONS OF THE APPARATUS CLAIM AND STILL
+ NOT ANTICIPATE THE CLAIM**Even if the prior art device performs all the functions recited in the
+ claim, the prior art cannot anticipate the claim if there is any structural difference.
+ It should be noted, however, that means-plus-function limitations are met by structures
+ which are equivalent to the corresponding structures recited in the specification.
+ *In re Donaldson,* 16 F.3d 1189, 1193, 29 USPQ2d 1845, 1848 (Fed.
+ Cir. 1994). See also *In re Robertson,* 169 F.3d 743, 745, 49 USPQ2d
+ 1949, 1951 (Fed. Cir. 1999) (The claims were drawn to a disposable diaper having three
+ fastening elements. The reference disclosed two fastening elements that could perform
+ the same function as the three fastening elements in the claims. The court construed the
+ claims to require three separate elements and held that the reference did not disclose a
+ separate third fastening element, either expressly or inherently.).
+ 
+
+**IV.** **DETERMINING WHETHER A COMPUTER-IMPLEMENTED FUNCTIONAL CLAIM LIMITATION IS
+ PATENTABLE OVER THE PRIOR ART UNDER 35 U.S.C. 102 AND 103**Functional claim language that is not limited to a
+ specific structure covers all devices that are capable of performing the recited
+ function. Therefore, if the prior art discloses a device that can inherently perform the
+ claimed function, a rejection under **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** and/or
+ **[35 U.S.C.
+ 103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** may be appropriate. See *In re Translogic Technology,
+ Inc.,* 504 F.3d 1249, 1258, 84 USPQ2d 1929, 1935-1936 (Fed. Cir. 2007) (The
+ claims were drawn to multiplexer circuit. The patent at issue claimed "coupled to" and
+ "coupled to receive" between various portions of the circuitry. In reference to the
+ claim phrase "input terminals ‘coupled to receive’ first and second input variables,"
+ the court held that "the claimed circuit does not require any specific input or
+ connection … [a]s such, ‘coupled to’ and ‘coupled to receive’ are clearly different …
+ [a]s shown in [the figures of the] patent, input terminals … only need to be ‘capable of
+ receiving’ an input variable for the multiplexer circuit as claimed". Therefore, the
+ specification supported the claim construction "that ‘coupled to receive’ means ‘capable
+ of receiving.’"); *Intel Corp. v. U.S. Int'l Trade Comm’n,* 946 F.2d
+ 821, 832, 20 USPQ2d 1161, 1171 (Fed. Cir. 1991) (The court held that "programmable"
+ claim language required only that the accused product could be programmed to perform the
+ claimed functionality.);*In re Schreiber,* 128 F.3d 1473, 1478, 44
+ USPQ2d 1429, 1432 (Fed. Cir. 1997); *In re Best,* 562 F.2d 1252, 1254,
+ 195 USPQ 430, 433 (CCPA 1977); *In re Ludtke,* 441 F.2d 660, 663-64,
+ 169 USPQ 563, 566-67 (CCPA 1971); *In re Swinehart,* 439 F.2d 210,
+ 212-13, 169 USPQ 226, 228-29 (CCPA 1971) ("[I]t is elementary that the mere recitation
+ of a newly discovered function or property, inherently possessed by things in the prior
+ art, does not cause a claim drawn to those things to distinguish over the prior art").
+ See **[MPEP §
+ 2112](s2112.html#d0e201036)** for more information. 
+ 
+
+
+Conversely, computer-implemented functional claim
+ limitations may narrow the functionality of the device, by limiting the specific
+ structure capable of performing the recited function. *Nazomi Communications,
+ Inc. v. Nokia Corp.,* 739 F.3d 1339, 1345, 109 USPQ2d 1258, 1262 (Fed Cir.
+ 2014) (The claims were drawn to a CPU that can perform processing of both register-based
+ and stack-based instructions. Appellant alleged infringement of the claims based on
+ claim construction requiring only hardware capable of performing the claimed
+ functionalities. Contrasted with the finding of *Intel Corp. v. U.S. Int'l Trade
+ Comm’n,* 846 F.2d 821, 832, 20 USPQ2d 1161, 1171 (Fed. Cir. 1991), the court
+ found that "[s]ince hardware cannot meet these limitations in the absence of enabling
+ software, the claims are properly construed as claiming an apparatus comprising a
+ combination of hardware and software capable of practicing the claim limitations."). 
+ 
+
+
+Computer-implemented functional claim limitations may
+ also be broad because the term "computer" is commonly understood by one of ordinary
+ skill in the art to describe a variety of devices with varying degrees of complexity and
+ capabilities. *In re Paulsen,* 30 F.3d 1475, 1479-80, 31 USPQ2d 1671,
+ 1674 (Fed. Cir. 1994). Therefore, a claim containing the term "computer" should not be
+ construed as limited to a computer having a specific set of characteristics and
+ capabilities, unless the term is modified by other claim terms or clearly defined in the
+ specification to be different from its common meaning. *Id.* In
+ *Paulsen,* the claims, directed to a portable computer, were
+ rejected as anticipated under **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** by a reference that
+ disclosed a calculator, because the term "computer" was given the broadest reasonable
+ interpretation consistent with the specification to include a calculator, and a
+ calculator was considered to be a particular type of computer by those of ordinary skill
+ in the art. *Id.*
+
+
+When determining whether a computer-implemented
+ functional claim would have been obvious, examiners should note that broadly claiming an
+ automated means to replace a manual function to accomplish the same result does not
+ distinguish over the prior art. See *Leapfrog Enters., Inc. v. Fisher-Price,
+ Inc.,* 485 F.3d 1157, 1161, 82 USPQ2d 1687, 1691 (Fed. Cir. 2007)
+ ("Accommodating a prior art mechanical device that accomplishes [a desired] goal to
+ modern electronics would have been reasonably obvious to one of ordinary skill in
+ designing children’s learning devices. Applying modern electronics to older mechanical
+ devices has been commonplace in recent years."); *In re Venner,* 262
+ F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958); see also **[MPEP § 2144.04](s2144.html#d0e210929)**.
+ Furthermore, implementing a known function on a computer has been deemed obvious to one
+ of ordinary skill in the art if the automation of the known function on a general
+ purpose computer is nothing more than the predictable use of prior art elements
+ according to their established functions. *KSR Int’l Co. v. Teleflex
+ Inc.,* 550 U.S. 398, 417, 82 USPQ2d 1385, 1396 (2007); see also
+ **[MPEP §
+ 2143](s2143.html#d0e209516)**, Exemplary Rationales D and F. Likewise, it has been
+ found to be obvious to adapt an existing process to incorporate Internet and Web browser
+ technologies for communicating and displaying information because these technologies had
+ become commonplace for those functions. *Muniauction, Inc. v. Thomson
+ Corp.,* 532 F.3d 1318, 1326-27, 87 USPQ2d 1350, 1357 (Fed. Cir. 2008).
+ 
+
+
+ For more information on the obviousness determination,
+ see **[MPEP §
+ 2141](s2141.html#d0e208143)**. 
+ 
+
+
+[[top]](#top)
+
+
+]

data/2100/s2115.html.txt

@@ -0,0 +1,58 @@
+[
+# 2115 Material or Article Worked Upon by Apparatus [R-07.2015]
+
+**MATERIAL OR ARTICLE WORKED UPON DOES NOT LIMIT APPARATUS CLAIMS** Claim analysis is highly fact-dependent. A claim is only limited by
+ positively recited elements. Thus, "[i]nclusion of the material or article worked upon
+ by a structure being claimed does not impart patentability to the claims." *In
+ re Otto,* 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also *In
+ re Young,* 75 F.2d 996, 25 USPQ 69 (CCPA 1935).
+ 
+
+
+In *Otto,* the claims were directed to a
+ core member for hair curlers (i.e., a particular device) and a method of making the core
+ member (i.e., a particular method of making that device) and "not to a method of curling
+ hair wherein th[e] particular device is used." 312 F.2d at 940. The court held that
+ patentability of the claims cannot be based "upon a certain procedure for curling hair
+ using th[e] device and involving a number of steps in the process." The court noted that
+ "the process is irrelevant as is the recitation involving the hair being wound around
+ the core" in terms of determining patentability of the particular device.
+ *Id.* Therefore, the inclusion of the material or article worked
+ upon by a structure being claimed does not impart patentability to the claims.
+ 
+
+
+In *Young,* a claim to a machine for making concrete
+ beams included a limitation to the concrete reinforced members made by the machine as
+ well as the structural elements of the machine itself. The court held that the inclusion
+ of the article formed within the body of the claim did not, without more, make the claim
+ patentable.
+ 
+
+
+In *In re Casey,* 370 F.2d 576, 152 USPQ 235 (CCPA
+ 1967), an apparatus claim recited "[a] taping machine comprising a supporting structure,
+ a brush attached to said supporting structure, said brush being formed with projecting
+ bristles which terminate in free ends to collectively define a surface to which adhesive
+ tape will detachably adhere, and means for providing relative motion between said brush
+ and said supporting structure while said adhesive tape is adhered to said surface." An
+ obviousness rejection was made over a reference to Kienzle which taught a machine for
+ perforating sheets. The court upheld the rejection stating that "the references in claim
+ 1 to adhesive tape handling do not expressly or impliedly require any particular
+ structure in addition to that of Kienzle." *Id.* at 580-81. The
+ perforating device had the structure of the taping device as claimed, the difference was
+ in the use of the device, and "the manner or method in which such machine is to be
+ utilized is not germane to the issue of patentability of the machine itself."
+ *Id.* at 580.
+ 
+
+
+Note that this line of cases is limited to claims directed to machinery
+ which works upon an article or material in its intended use. 
+ 
+
+
+[[top]](#top)
+
+
+]

data/2100/s2116.html.txt

@@ -0,0 +1,142 @@
+[
+# 2116 [Reserved]
+
+
+
+
+# 2116.01 Novel, Nonobvious Starting Material or End Product [R-10.2019]
+
+
+All the limitations of a claim must be considered when weighing
+ the differences between the claimed invention and the prior art in determining the
+ obviousness of a process or method claim. See **[MPEP § 2143.03](s2143.html#d0e210501)**.
+ 
+
+
+*In re Ochiai,* 71 F.3d 1565, 37 USPQ2d 1127 (Fed. Cir. 1995) and
+ *In re Brouwer,* 77 F.3d 422, 37 USPQ2d 1663 (Fed. Cir. 1996)
+ addressed the issue of whether an otherwise conventional process could be patented if it
+ were limited to making or using a nonobvious product. In both cases, the Federal Circuit
+ held that the use of *per se* rules is improper in applying the test
+ for obviousness under **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)**. Rather, **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)** requires a highly
+ fact-dependent analysis involving taking the claimed subject matter as a whole and
+ comparing it to the prior art. "A process yielding a novel and nonobvious product may
+ nonetheless be obvious; conversely, a process yielding a well-known product may yet be
+ nonobvious." *TorPharm, Inc. v. Ranbaxy Pharmaceuticals, Inc.,* 336
+ F.3d 1322, 1327, 67 USPQ2d 1511, 1514 (Fed. Cir. 2003). 
+ 
+
+
+Interpreting the claimed invention as a whole requires consideration of
+ all claim limitations. Thus, proper claim construction requires treating language in a
+ process claim which recites the making or using of a nonobvious product as a material
+ limitation. The decision in *Ochiai* specifically dispelled any
+ distinction between processes of making a product and methods of using a product with
+ regard to the effect of any product limitations in either type of claim.
+ 
+
+
+As noted in *Brouwer,* 77 F.3d at 425, 37 USPQ2d at
+ 1666, the inquiry as to whether a claimed invention would have been obvious is "highly
+ fact-specific by design." Accordingly, obviousness must be assessed on a case-by-case
+ basis. The following decisions are illustrative of the lack of *per se*
+ rules in applying the test for obviousness under **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)** and of the
+ fact-intensive comparison of claimed processes with the prior art: *In re
+ Durden,* 763 F.2d 1406, 226 USPQ 359 (Fed. Cir. 1985) (The examiner rejected
+ a claim directed to a process in which patentable starting materials were reacted to
+ form patentable end products. The prior art showed the same chemical reaction mechanism
+ applied to other chemicals. The court held that the process claim was obvious over the
+ prior art.); *In re Albertson,* 332 F.2d 379, 141 USPQ 730 (CCPA 1964)
+ (Process of chemically reducing one novel, nonobvious material to obtain another novel,
+ nonobvious material was claimed. The process was held obvious because the reduction
+ reaction was old.); *In re Kanter,* 399 F.2d 249, 158 USPQ 331 (CCPA
+ 1968) (Process of siliconizing a patentable base material to obtain a patentable product
+ was claimed. Rejection based on prior art teaching the siliconizing process as applied
+ to a different base material was upheld.); Cf. *In re Pleuddemann,* 910
+ F.2d 823, 15 USPQ2d 1738 (Fed. Cir. 1990) (Methods of bonding polymer and filler using a
+ novel silane coupling agent held patentable even though methods of bonding using other
+ silane coupling agents were well known because the process could not be conducted
+ without the new agent); *In re Kuehl,* 475 F.2d 658, 177 USPQ 250 (CCPA
+ 1973) (Process of cracking hydrocarbons using novel zeolite catalyst found to be
+ patentable even though catalytic cracking process was old. "The test under 103 is
+ whether in view of the prior art the invention as a whole would have been obvious at the
+ time it was made, and the prior art here does not include the zeolite, ZK-22. The
+ obviousness of the process of cracking hydrocarbons with ZK-22 as a catalyst must be
+ determined without reference to knowledge of ZK-22 and its properties." 475 F.2d at
+ 664-665, 177 USPQ at 255.); and *In re Mancy,* 499 F.2d 1289, 182 USPQ
+ 303 (CCPA 1974) (Claim to a process for the production of a known antibiotic by
+ cultivating a novel, nonobvious microorganism was found to be patentable.). 
+ 
+
+
+
+[[top]](#top)
+
+
+, 
+# 2116.01 Novel, Nonobvious Starting Material or End Product [R-10.2019]
+
+
+All the limitations of a claim must be considered when weighing
+ the differences between the claimed invention and the prior art in determining the
+ obviousness of a process or method claim. See **[MPEP § 2143.03](s2143.html#d0e210501)**.
+ 
+
+
+*In re Ochiai,* 71 F.3d 1565, 37 USPQ2d 1127 (Fed. Cir. 1995) and
+ *In re Brouwer,* 77 F.3d 422, 37 USPQ2d 1663 (Fed. Cir. 1996)
+ addressed the issue of whether an otherwise conventional process could be patented if it
+ were limited to making or using a nonobvious product. In both cases, the Federal Circuit
+ held that the use of *per se* rules is improper in applying the test
+ for obviousness under **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)**. Rather, **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)** requires a highly
+ fact-dependent analysis involving taking the claimed subject matter as a whole and
+ comparing it to the prior art. "A process yielding a novel and nonobvious product may
+ nonetheless be obvious; conversely, a process yielding a well-known product may yet be
+ nonobvious." *TorPharm, Inc. v. Ranbaxy Pharmaceuticals, Inc.,* 336
+ F.3d 1322, 1327, 67 USPQ2d 1511, 1514 (Fed. Cir. 2003). 
+ 
+
+
+Interpreting the claimed invention as a whole requires consideration of
+ all claim limitations. Thus, proper claim construction requires treating language in a
+ process claim which recites the making or using of a nonobvious product as a material
+ limitation. The decision in *Ochiai* specifically dispelled any
+ distinction between processes of making a product and methods of using a product with
+ regard to the effect of any product limitations in either type of claim.
+ 
+
+
+As noted in *Brouwer,* 77 F.3d at 425, 37 USPQ2d at
+ 1666, the inquiry as to whether a claimed invention would have been obvious is "highly
+ fact-specific by design." Accordingly, obviousness must be assessed on a case-by-case
+ basis. The following decisions are illustrative of the lack of *per se*
+ rules in applying the test for obviousness under **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)** and of the
+ fact-intensive comparison of claimed processes with the prior art: *In re
+ Durden,* 763 F.2d 1406, 226 USPQ 359 (Fed. Cir. 1985) (The examiner rejected
+ a claim directed to a process in which patentable starting materials were reacted to
+ form patentable end products. The prior art showed the same chemical reaction mechanism
+ applied to other chemicals. The court held that the process claim was obvious over the
+ prior art.); *In re Albertson,* 332 F.2d 379, 141 USPQ 730 (CCPA 1964)
+ (Process of chemically reducing one novel, nonobvious material to obtain another novel,
+ nonobvious material was claimed. The process was held obvious because the reduction
+ reaction was old.); *In re Kanter,* 399 F.2d 249, 158 USPQ 331 (CCPA
+ 1968) (Process of siliconizing a patentable base material to obtain a patentable product
+ was claimed. Rejection based on prior art teaching the siliconizing process as applied
+ to a different base material was upheld.); Cf. *In re Pleuddemann,* 910
+ F.2d 823, 15 USPQ2d 1738 (Fed. Cir. 1990) (Methods of bonding polymer and filler using a
+ novel silane coupling agent held patentable even though methods of bonding using other
+ silane coupling agents were well known because the process could not be conducted
+ without the new agent); *In re Kuehl,* 475 F.2d 658, 177 USPQ 250 (CCPA
+ 1973) (Process of cracking hydrocarbons using novel zeolite catalyst found to be
+ patentable even though catalytic cracking process was old. "The test under 103 is
+ whether in view of the prior art the invention as a whole would have been obvious at the
+ time it was made, and the prior art here does not include the zeolite, ZK-22. The
+ obviousness of the process of cracking hydrocarbons with ZK-22 as a catalyst must be
+ determined without reference to knowledge of ZK-22 and its properties." 475 F.2d at
+ 664-665, 177 USPQ at 255.); and *In re Mancy,* 499 F.2d 1289, 182 USPQ
+ 303 (CCPA 1974) (Claim to a process for the production of a known antibiotic by
+ cultivating a novel, nonobvious microorganism was found to be patentable.). 
+ 
+
+
+]

data/2100/s2117.html.txt

@@ -0,0 +1,691 @@
+[
+# 2117 Markush Claims [R-10.2019]
+
+**I.** **MARKUSH CLAIM**A "Markush" claim recites a list of alternatively
+ useable members. *In re Harnisch,* 631 F.2d 716, 719-20 (CCPA 1980);
+ *Ex parte Markush,* 1925 Dec. Comm'r Pat. 126, 127 (1924). The
+ listing of specified alternatives within a Markush claim is referred to as a Markush
+ group or Markush grouping. *Abbott Labs v. Baxter Pharmaceutical Products,
+ Inc.,* 334 F.3d 1274, 1280-81, 67 USPQ2d 1191, 1196-97 (Fed. Cir. 2003)
+ (citing to several sources that describe Markush groups). Claim language defined by a
+ Markush grouping requires selection from a closed group "consisting of" the alternative
+ members. *Id.* at 1280, 67 USPQ2d at 1196. See **[MPEP § 2111.03](s2111.html#d0e200824)**,
+ subsection II, for a discussion of the term "consisting of" in the context of Markush
+ groupings.
+ 
+
+
+ Treatment of claims reciting alternatives is not
+ governed by the particular format used (e.g., alternatives may be set forth as "a
+ material selected from the group consisting of A, B, and C" or "wherein the material is
+ A, B, or C"). See, e.g., the *Supplementary Examination Guidelines for
+ Determining Compliance with 35 U.S.C. 112 and for Treatment of Related Issues in
+ Patent Applications* (*"Supplementary Guidelines"*), 76
+ Fed. Reg. 7162 (February 9, 2011). Claims that set forth a list of alternatives from
+ which a selection is to be made are typically referred to as Markush claims, after the
+ appellant in *Ex parte Markush,* 1925 Dec. Comm’r Pat. 126, 127 (1924).
+ Although the term "Markush claim" is used throughout the MPEP, any claim that recites
+ alternatively usable members, regardless of format, should be treated as a Markush
+ claim. Inventions in metallurgy, refractories, ceramics, chemistry, pharmacology and
+ biology are most frequently claimed under the Markush formula, but purely mechanical
+ features or process steps may also be claimed by using the Markush style of claiming.
+ See, e.g., *Fresenius USA, Inc. v. Baxter Int’l, Inc.,* 582 F.3d 1288,
+ 1297-98 (Fed. Cir. 2009)(claim to a hemodialysis apparatus required "at least one unit
+ selected from the group consisting of (i) a dialysate-preparation unit, (ii) a
+ dialysate-circulation unit, (iii) an ultrafiltrate-removal unit, and (iv) a
+ dialysate-monitoring unit" and a user/machine interface operably connected thereto);
+ *In re Harnisch,* 631 F.2d 716, 206 USPQ 300 (CCPA 1980)(defining
+ alternative moieties of a chemical compound with Markush groupings).
+ 
+
+
+A Markush grouping is proper if the members of a group
+ share a single structural similarity and a common use. See subsections II - IV, below,
+ for guidelines regarding the determination of whether a Markush grouping is
+ improper.
+ 
+
+
+See **[MPEP § 2111.03](s2111.html#d0e200824)** and
+ **[MPEP §
+ 2173.05(h)](s2173.html#d0e218467)** for discussions of when a Markush grouping may be
+ indefinite under **[35 U.S.C. 112(b)](mpep-9015-appx-l.html#al_d1d85b_2ae65_215)** (e.g., if the list
+ of alternatives is not a closed grouping, or if a Markush group is so expansive that
+ persons skilled in the art cannot determine the metes and bounds of the claimed
+ invention). 
+ 
+
+
+See **[MPEP § 803.02](s803.html#d0e98237)** for information
+ pertaining to the election, search, and examination of claims that include at least one
+ Markush grouping. 
+ 
+
+**II.** **IMPROPER MARKUSH GROUPING**A Markush claim may be rejected under judicially approved
+ "improper Markush grouping" principles when the claim contains an improper grouping of
+ alternatively useable members. A Markush claim contains an "improper Markush grouping"
+ if either: (1) the members of the Markush group do not share a "single structural
+ similarity" or (2) the members do not share a common use. *Supplementary
+ Guidelines* at 7166 (citing *In re Harnisch,* 631 F.2d 716,
+ 721-22, 206 USPQ 300, 305 (CCPA 1980)). 
+ 
+
+
+Where a Markush grouping describes part of a combination
+ or process, the members following "selected from the group consisting of" (or a similar
+ introductory phrase) must be substitutable, one for the other, with the expectation that
+ the same intended result would be achieved. *Multilayer Stretch Cling Film
+ Holdings, Inc. v. Berry Plastics Corp.,* 831 F.3d 1350, 1357 (Fed. Cir.
+ 2016)("It is generally understood that … the members of the Markush group … are
+ alternatively usable for the purposes of the invention … .")(citations omitted). Where a
+ Markush grouping describes part of a chemical compound, regardless of whether the claim
+ is limited to a compound per se or the compound is recited as part of a combination or
+ process, the members following "selected from the group consisting of" (or similar
+ introductory phrase) need not share a community of properties themselves; the propriety
+ of the grouping is determined by a consideration of the compound as a whole. See
+ *Harnisch,* 631 F.2d at 722, 206 USPQ at 305 ("in determining the
+ propriety of a Markush grouping the compounds must be considered as wholes and not
+ broken down into elements or other components"). See also *In re
+ Jones,* 162 F.2d 479, 481 (CCPA 1947) ("In determining the propriety of a
+ Markush grouping, moreover, the compounds which are grouped must each be considered as a
+ whole and should not be broken down into elements or other components").
+ 
+
+
+The alternatives defined by the Markush group are either
+ alternative chemical compounds as a whole (e.g., if a claim includes a compound R-OH
+ wherein R is selected from the group consisting of methyl, propyl, and butyl, then the
+ alternatives are methanol, propanol, or butanol) or in the context of a combination or
+ process, the alternatives from which a selection is to be made (e.g., the alternatives
+ in a list following the phrase "selected from the group consisting of"). The
+ alternatives (1) share a "single structural similarity" when they belong to the same
+ recognized physical or chemical class or to the same art-recognized class, and (2) share
+ a common function or use when they are disclosed in the specification or known in the
+ art to be functionally equivalent in the context of the claimed invention. See
+ *Supplementary Guidelines* at 7166 and subsection II.A, below.
+ 
+
+
+Where a Markush grouping describes alternative chemical
+ compounds, whether by words or chemical formulas, and the compounds do not appear to be
+ members of a recognized physical or chemical class or members of an art-recognized
+ class, the members are considered to share a "single structural similarity" and common
+ use when the alternatively usable compounds share a substantial structural feature that
+ is essential to a common use. *Ex parte Hozumi,* 3 USPQ2d 1059, 1060
+ (Bd. Pat. App. & Int. 1984). See also subsection II.B, below. 
+ 
+
+***A.*** ***"Single Structural
+ Similarity" - Members of a Physical, Chemical, or Art-Recognized
+ Class***Members of a Markush group share a "single structural
+ similarity" when they belong to the same recognized physical or chemical class or to
+ the same art-recognized class. A recognized physical class, a recognized chemical
+ class, or an art-recognized class is a class wherein there is an expectation from the
+ knowledge in the art that members of the class will behave in the same way in the
+ context of the claimed invention. In other words, each member could be substituted
+ one for the other, with the expectation that the same intended result would be
+ achieved. For example, in the context of a claim covering a disposable diaper, a
+ limitation "the fastener selected from the group consisting of a pressure sensitive
+ adhesive and complementary release material, a complementary hook and loop structure,
+ a snap, and a buckle" would likely be considered an art recognized class because a
+ review of the prior art would establish that it was well known that each member could
+ be substituted for each other with the expectation that the intended result
+ (repositionable and refastenable) would occur.
+ 
+
+
+Note that where a Markush group includes only
+ materials from a recognized scientific class of equivalent materials or from an
+ art-recognized class, "the mere existence of such a group in an application tend[s]
+ to prove the equivalence of its members and when one of them [is] anticipated the
+ group [is] therefore rendered unpatentable, in the absence of some convincing
+ evidence of some degree of non-equivalency of one or more of the remaining members."
+ *In re Ruff,* 256 F.2d 590, 598-99, 118 USPQ 340, 348 (CCPA
+ 1958)("[A]ctual equivalence is not enough to justify refusal of a patent on one
+ member of a group when another member is in the prior art. The equivalence must be
+ disclosed in the prior art or be obvious within the terms of Section 103." Id. at
+ 599, 118 USPQ at 348). 
+ 
+
+
+Thus, a Markush grouping is ordinarily proper if all
+ the members of the group belong to a recognized class (whether physical, chemical, or
+ art recognized) and are disclosed in the specification to possess at least one
+ property in common which is mainly responsible for their function in the claimed
+ invention, and it is clear from their very nature or from the prior art that all
+ members possess this property. See also **[MPEP § 803.02](s803.html#d0e98237)**.
+ 
+
+***B.*** ***Common Use Flows From
+ Substantial Structural Feature***Where a Markush grouping describes alternative chemical
+ compounds, whether by words or chemical formulas, and the alternatives do not belong to
+ a recognized class as explained in subsection II.A, above, the members of the Markush
+ grouping may still be considered to be proper where the alternatives share a substantial
+ structural feature that is essential to a common use.
+ 
+
+
+For example, in *Harnisch*, the claims
+ were directed to a Markush group of coumarin derivatives disclosed to be useful as dyes.
+ The claimed coumarin derivatives were not members of a recognized chemical class,
+ encompassing "polyfused N-heterocyclics, cyclic, acyclic and aromatic amines,
+ aryloxyalkylamines, amides, sulfonamides, [and] phthalimides" among others.
+ *Harnisch,* 631 F.2d at 718, 206 USPQ at 302. Furthermore, they were
+ not members of an art-recognized class ("[n]owhere in the record has it been established
+ or even alleged that the variety of compounds included within the explicit scope of the
+ claims are recognized by the art as being functionally equivalent"
+ (*Id.*)). However, the court found that the Markush grouping was
+ proper because the claimed compounds, viewed as a whole, all share a coumarin group and
+ the property of being a dye. See also *In re Jones,* 162 F.2d 479, 481
+ (1947).
+ 
+
+
+See also *Ex parte Hozumi*, 3 USPQ2d
+ 1059, 1060 (Bd. Pat. App. & Int. 1984)). See subsection IV, below, for a discussion
+ of the *Harnisch* and *Hozumi* decisions.
+ 
+
+**III.** **REJECTION BASED ON IMPROPER MARKUSH
+ GROUPING**When an examiner determines that the species of a
+ Markush group do not share a single structural similarity or do not share a common
+ use, then a rejection on the basis that the claim contains an ‘‘improper Markush
+ grouping’’ is appropriate (see subsection II). Note that this is a rejection on the
+ merits and may be appealed to the Patent Trial and Appeal Board in accordance with
+ **[35 U.S.C.
+ 134](mpep-9015-appx-l.html#d0e303218912313)** and **[37 CFR 41.31(a)(1)](mpep-9020-appx-r.html#ar_d24d1f_19b20_1b6)**. Use Form
+ Paragraph **[8.40](#fp8.40)** to reject a claim on the basis that it includes
+ an improper Markush grouping.
+ 
+
+
+# ¶ 8.40 Improper Markush Grouping Rejection
+
+
+Claim **[1]** rejected on the basis that it contains an
+ improper Markush grouping of alternatives. See *In re Harnisch,* 631 F.2d
+ 716, 721-22 (CCPA 1980) and *Ex parte Hozumi,* 3 USPQ2d 1059, 1060 (Bd. Pat.
+ App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush
+ group (i.e., alternatives from which a selection is to be made in the context of a combination
+ or process, or alternative chemical compounds as a whole) share a "single structural
+ similarity" and a common use. A Markush grouping meets these requirements in two situations.
+ First, a Markush grouping is proper if the alternatives are all members of the same recognized
+ physical or chemical class or the same art-recognized class, and are disclosed in the
+ specification or known in the art to be functionally equivalent and have a common use. Second,
+ where a Markush grouping describes alternative chemical compounds, whether by words or
+ chemical formulas, and the alternatives do not belong to a recognized class as set forth
+ above, the members of the Markush grouping may be considered to share a "single structural
+ similarity" and common use where the alternatives share both a substantial structural feature
+ and a common use that flows from the substantial structural feature. See **[MPEP §
+ 2117](s2117.html#ch2100_d299b6_1ae8e_380)**.
+ 
+
+
+The Markush grouping of **[2]** is improper because the alternatives defined by the
+ Markush grouping do not share both a single structural similarity and a common use for the
+ following reasons: **[3]**. 
+ 
+
+
+To overcome this rejection, Applicant may set forth each alternative (or grouping of
+ patentably indistinct alternatives) within an improper Markush grouping in a series of
+ independent or dependent claims and/or present convincing arguments that the group members
+ recited in the alternative within a single claim in fact share a single structural similarity
+ as well as a common use.
+ 
+
+
+### Examiner Note:
+
+ * 1. In bracket 1, insert claim number(s) and "is" or "are" as appropriate.
+* 2. In bracket 2, insert a description of the Markush group(s) that
+ are improper.
+* 3. In bracket 3, explain why these alternatives do not meet the
+ requirements for a proper Markush grouping, i.e., why the alternatives are not all
+ members of the same recognized physical or chemical class or the same art-recognized
+ class; and/or why the members are not considered to be functionally equivalent and have
+ a common use; and/or why (if the Markush grouping describes alternative chemical
+ compounds), the alternatives do not share both a substantial structural feature and a
+ common use that flows from the substantial structural feature. See **[MPEP §
+ 2117](s2117.html#ch2100_d299b6_1ae8e_380)**.
+* 4. If an election of species requirement is appropriate, this form
+ paragraph should only be used after applicant has made an election.
+
+
+
+In accordance with the principles of compact
+ prosecution, a rejection based on an improper Markush grouping should be made in the
+ first action on the merits after presentation of the claim with the improper Markush
+ grouping (e.g., first Office action on the merits or next Office action following
+ presentation of the claim). In addition, if the examiner determines that one or more
+ claims include an improper Markush grouping, the examiner should also require the
+ applicant to elect an alternative or group of indistinct alternatives for search and
+ examination (i.e., an election of species), if such an election requirement was not
+ previously made. See **[MPEP § 803.02](s803.html#d0e98237)** for more information on election of species
+ requirements in Markush claims. Note that if a written provisional election of
+ species requirement must be made separate from the first Office action on the merits,
+ it should not include a rejection on the basis of an improper Markush grouping. Any
+ appropriate improper Markush grouping rejection should be made in an Office action on
+ the merits. 
+ 
+
+
+The examiner should include suggestions for the
+ applicant as to how to overcome the rejection, e.g., by suggesting a proper Markush
+ grouping based on the specification as filed and/or by suggesting that applicant set
+ forth each alternative (or grouping of patentably indistinct alternatives) within an
+ improper Markush grouping in a series of independent or dependent claims. There may
+ be more than one way to formulate a proper Markush grouping. The examiner should not
+ suggest any grouping that clearly would not meet the requirements of
+ **[35
+ U.S.C. 112(a)](mpep-9015-appx-l.html#al_d1d85b_2ae60_3d5)**. For example, the examiner should not suggest a
+ grouping that meets the requirements for a proper Markush grouping, but would clearly
+ lack adequate written description if presented in a separate claim.
+ 
+
+
+In addition to a rejection based on an improper
+ Markush grouping, the claim should also be rejected under **[35 U.S.C.
+ 112(b)](mpep-9015-appx-l.html#al_d1d85b_2ae65_215)** if one skilled in the art cannot determine the metes and
+ bounds of the Markush claim due to an inability to envision all of the members of the
+ Markush grouping. In other words, if a boundary cannot be drawn separating
+ embodiments encompassed by the claim from those that are not, the claim is indefinite
+ and should be rejected under **[35 U.S.C. 112(b)](mpep-9015-appx-l.html#al_d1d85b_2ae65_215)**. See also
+ **[MPEP §
+ 2173.05(h)](s2173.html#d0e218467)**. 
+ 
+
+
+The claim should be examined for patentability with
+ respect to all other conditions of patentability (e.g., **[35 U.S.C. 101](mpep-9015-appx-l.html#d0e302376)**,
+ **[102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**, **[103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)**, **[112](mpep-9015-appx-l.html#d0e302824912)**, and
+ nonstatutory double patenting). As explained with regard to election of species
+ practice as set forth in detail in **[MPEP § 803.02](s803.html#d0e98237)**, the search need not
+ be extended to species that fall outside a proper Markush grouping.
+ 
+
+
+The improper Markush grouping rejection of the claim
+ should be maintained until (1) the claim is amended such that the Markush grouping
+ includes only members that share a single structural similarity and a common use; or
+ (2) the applicant presents convincing arguments why the members of the Markush
+ grouping share a single structural similarity and common use (i.e., are members of a
+ physical, chemical, or art-recognized class that share a common use, or are chemical
+ compounds that share a substantial structural feature that is essential to the common
+ use). In addition, even if the applicant does not take action sufficient to overcome
+ the improper Markush grouping rejection, when all of the claims are otherwise in
+ condition for allowance the examiner should reconsider the propriety of the improper
+ Markush grouping rejection. If the examiner determines that in light of the prior art
+ and the record as a whole the alternatives of the Markush grouping share a single
+ structural similarity and a common use, then the rejection should be withdrawn. Note
+ that no Markush claim can be allowed until any improper Markush grouping rejection
+ has been overcome or withdrawn, and all other conditions of patentability have been
+ satisfied.
+ 
+
+**IV.** **MARKUSH GROUPING EXAMPLES** The propriety of Markush groupings must be decided on
+ a case-by-case basis. The following examples illustrate Markush groupings that have
+ been found to be proper and improper. Office personnel should note that the cases
+ from which these examples are drawn have been selected for their treatment of Markush
+ groupings. The cases may not necessarily reflect current practice as to other issues
+ discussed therein.
+ 
+
+***A.*** ***In re Harnisch, 631 F.2d
+ 716, 206 USPQ 300 (CCPA 1980)****Representative Claim:*
+
+
+
+1. Coumarin compounds which in one of their
+ mesometric limiting structures correspond to the general formula
+ 
+
+
+![diagram of general formula for a mesometric limiting structure ](graphics/Harnisch-mesometric-limiting-structure.png)
+wherein
+
+
+
+> 
+> * X represents aldehyde, azomethine, or
+>  hydrazone,
+> * R1
+>  represents hydrogen or alkyl,
+> * Z1
+>  represents hydrogen, alkyl, cycloalkyl, aralkyl, aryl or a 2- or
+>  3-membered alkylene radical connected to the 6-position of the
+>  coumarin ring and
+> * Z2
+>  represents hydrogen, alkyl, cycloalkyl, aralkyl or a 2- or 3-membered
+>  alkylene radical connected to the 8-position of the coumarin ring
+> 
+> 
+> 
+
+
+and wherein
+
+
+
+> 
+> * Z1 and
+>  Z2 conjointly with the N atom by which
+>  they are bonded can represent the remaining members of an optionally
+>  benz-fused heterocyclic ring which, like the ring A and the alkyl,
+>  aralkyl, cycloalkyl and aryl radicals mentioned, can carry further
+>  radicals customary in dye-stuff chemistry.
+> 
+> 
+> 
+
+
+
+*Background:* The Board had
+ entered a rejection – later reversed by the CCPA – of claim 1 under 37 CFR
+ 1.196(b) on the ground that it was drawn to an improper Markush group. The Board
+ had focused on the wide variety of functional groups that could be present in the
+ claimed compounds, and had stressed the different physical and chemical properties
+ of the compounds in view of the functional groups. The Board had observed that
+ "[n]owhere in the record has it been established or even alleged that the variety
+ of compounds included within the explicit scope of the claims are recognized by
+ the art as being functionally equivalent." In the Board’s view, "the mere fact"
+ that all of the compounds encompassed by claim 1 shared "a single structural
+ similarity (i.e., the coumarin group)," and as a result were useful either as dyes
+ or intermediates for the preparation of dyes, was insufficient to render the
+ Markush grouping proper because the compounds could "be subject to different modes
+ of application and use." 
+ 
+
+
+*Analysis/Conclusion:* The CCPA
+ reversed the Board’s decision and held that the Markush grouping was proper. The
+ court pointed out that all of the claimed compounds are dyes, even if some might
+ also be seen as synthetic intermediates. The court noted the Board’s admission,
+ despite the significant variation in functional groups, that all of the compounds
+ shared "a single structural similarity" which is the coumarin core. The court held
+ that "the claimed compounds all belong to a subgenus, as defined by appellant [in
+ the specification], which is not repugnant to scientific classification." Stating
+ that "[u]nder these circumstances we consider the claimed compounds to be part of
+ a single invention," the court concluded that the Markush grouping of claim 1 was
+ proper. The CCPA also stressed that they decide cases involving the propriety of
+ Markush groupings "on their facts on a case-by-case basis." 
+ 
+
+
+The *Harnisch* court also cited
+ its earlier decision in *In re Jones*, 162 F.2d 479 (CCPA 1947)
+ with approval as to the proper approach to evaluating claims containing Markush
+ groups. According to the *Harnisch* court, "in determining the
+ propriety of a Markush grouping the compounds must be considered as wholes and not
+ broken down into elements or other components." In other words, when considering
+ whether the members of a Markush group have sufficient structural similarity and
+ common use to meet prongs 1 and 2 above, the proper focus should be on the
+ commonality across all of the alternative embodiments of the invention within the
+ scope of the claim. Note that in the *Harnisch* decision, the
+ court looked to the common structure of the coumarin core and its associated
+ common function as a dye, even though the coumarin core was not part of the
+ variable Markush groups of substituents. A Markush grouping is not improper simply
+ because the members of a list of alternative elements or substituents of the
+ invention, as distinguished from a list of complete embodiments of the invention,
+ lack "a single structural similarity" or a common use. When assessing whether a
+ Markush grouping defining a chemical compound is proper, each claimed chemical
+ compound as a whole must be compared and analyzed to determine whether the claimed
+ compounds share both a substantial single structural similarity and a common use.
+ 
+ 
+
+***B.*** ***Ex parte Dams, Appeal No.
+ 1997-2193, 07/986,648, decision mailed 9-13-2000 (unpublished); USP
+ 6,201,122****Representative Claims:*
+
+
+
+1. A fluoroaliphatic radical-containing anionic
+ sulfonamido compound which comprises a fluoroaliphatic radical-containing
+ sulfonamido group and an ethylenecarbonyl group whose beta ethylene carbon atom
+ is bonded to a sulfur or nitrogen atom which is bonded to a linking group
+ bonded to the nitrogen atom of said sulfonamido group, and the carbonyl carbon
+ atom of said carbonyl is bonded to an anionic hydrophilic polar group
+ comprising at least one carbon, nitrogen, oxygen, or sulfur atom. 
+ 
+
+
+2. The fluoroaliphatic radical-containing
+ sulfonamido compound of claim 1 wherein said compound has the formula
+ 
+
+
+
+> 
+> * RfSO2N(R)WACH(R')CH(R'')C(O)-Y
+> 
+> 
+> 
+
+
+where Rf is a
+ fluoroaliphatic radical; A is S or NR'''; W is siloxylene, silylene, alkylene,
+ arylene, or combinations thereof; R, R', R'', and R''' are independently
+ hydrogen, lower alkyl, aryl, or combinations thereof, and can contain
+ functional groups, or R and R''' together with the nitrogen atoms to which they
+ are bonded and W, form a ring; and Y is an anionic hydrophilic polar group
+ comprising at least one carbon, nitrogen, oxygen, or sulfur atom. 
+ 
+
+
+
+
+6. The fluoroaliphatic radical-containing
+ sulfonamido compound of claim 2 wherein said N(R)WA is selected from the group
+ consisting of N(R)CH2CH2NH,
+ 
+
+
+![graphic representation of  cyclic alternative](graphics/Dams_N-N_figure.png)
+N(R)CH2CH2CH2Si(CH3)2OSi(CH3)2CH2CH2CH2NH,
+ N(R)CH(CH3)CH2(CH2CH2O)q(CH(CH3)CH2O)zCH2CH(CH3)NH
+ where q and z are from 1 to 20, and
+ N(R)CH2CH2S, where R is H,
+ CH3 or
+ CH2CH3.
+ 
+
+
+
+*Background:* The examiner had
+ rejected the claims on a number of grounds, including the ground of improper
+ Markush groupings. It had been the examiner’s position that the Markush groups of
+ the claims lacked a common structural feature. The examiner had also stated that
+ in his view, the members of the Markush group were separately classifiable and
+ separately patentable. This rejection was later reversed by the Board. 
+ 
+
+
+*Analysis/Conclusion:* The Board
+ stated that the examiner erred by failing to treat the compounds of the claims as
+ a whole. The examiner had improperly "focused on the individual moiety defined by
+ the Markush terminology." Referring to claim 6 and relying on *In re
+ Harnisch*, the Board explained that even though Markush terminology
+ was used to define the substituent N(R)WA, the proper inquiry was "whether the
+ compounds defined by the different moieties" have the necessary common structure
+ and common use. The Board held that the compounds shared "a common structural
+ feature disclosed as essential to the disclosed utility of being an anionic
+ surfactant." Thus the compounds satisfied prongs 1 and 2 above, and the Markush
+ grouping was proper.
+ 
+
+***C.*** ***Ex parte Hozumi, 3 USPQ2d
+ 1059 (Bd. Pat. App. & Interf. 1984) Appeal No. 559-94, Application No.
+ 06/257,771, decision mailed 06-26-1984 (USP
+ 4,551,532)****Representative Claim:*
+
+
+
+Claim 1. A compound of the formula:
+
+
+![Formula for Claim 1 of Hozumi](graphics/Hozumi_Claim_1_Compound.png)
+
+> 
+> * wherein
+> 	+ n is an integer of 1 to 15;
+> 	+ R1 is
+> 	 C6-26 alkyl,
+> 	 C6-26 alkenyl or
+> 	 C6-26 alkynyl, each of said groups
+> 	 being unsubstituted or substituted by hydroxyl, mercapto, amino,
+> 	 oxo, carbamoyl, carboxyl, halogen, C3-7
+> 	 cycloalkyl or phenyl; and
+> 	+ R2 ,
+> 	 R3 and
+> 	 R4 are independently hydrogen or
+> 	 C1-5 alkyl, or 
+> 	 
+> 	![graphic representation of cyclic ammonio group](graphics/Hozumi_ammonio_group.png)
+> 	represents cyclic ammonio
+> 	 selected from the group consisting of pyridinio, oxazolio,
+> 	 thiazolio, pyridazinio, quinolinio, isoquinolinio,
+> 	 N-C1-4 alkylmorpholinio and
+> 	 N-C1-4 alkylpiperazinio, each of
+> 	 said groups being unsubstituted or substituted by
+> 	 C1-4 alkyl, hydroxyl, hydroxyethyl,
+> 	 aminoethyl, amino, carbamoyl or ureido,
+> * 
+> 
+> 
+> or a pharmaceutically acceptable salt
+>  thereof.
+>  
+> 
+> 
+> 
+
+
+
+
+*Background:* The examiner had
+ rejected claim 1 on the ground that it included an improper Markush grouping. 
+ 
+
+
+*Analysis/Conclusion:* The Board
+ reversed the examiner’s improper Markush grouping rejection of claim 1, once again
+ relying on the *Harnisch* decision. The Board summarized
+ *Harnisch* by stating that the Markush grouping of coumarin
+ compounds in that case was proper because there was "in common a functional
+ utility related to a substantial structural feature disclosed as being essential
+ to that utility." In this case, as in others already discussed, the Board
+ emphasized the case-by-case nature of the inquiry. 
+ 
+
+
+Applying the *Harnisch* criteria
+ to the facts of this case, the Board pointed out that structurally "the compounds
+ claimed are phosphoric acid diesters in which one esterifying moiety is derived
+ from a poly(ethylene glycol) monoether and the other is derived from a
+ beta-aminoethanol." The Board acknowledged that as a result of the variable number
+ of repeating oxyethylene units indicated by the "n" index, the molecular weight
+ could "vary over a fairly broad range," and that further structural variation was
+ seen in the etherifying groups and the substituents on the nitrogen atom. Despite
+ the breadth of the claim, the Board focused on "the relatively large proportion of
+ the structure of the compounds in the claimed class which is common to the entire
+ class," and determined that the prong 1 requirement for structural similarity was
+ met. As for the prong 2 common use requirement, the Board stated that all of the
+ compounds shared antimycotic activity. Thus the Board found that in this case, as
+ was also the case in *Harnisch*, there was "a substantial
+ structural feature of the class of compounds claimed disclosed as being essential
+ to at least one disclosed utility." Thus the Markush grouping was proper and the
+ examiner’s rejection was reversed. 
+ 
+
+***D.*** ***Based On PCT Search and
+ Examination Guidelines Example 23***Claim 1: A herbicidal composition consisting
+ essentially of an effective amount of the mixture of (a) 2,4-D
+ (2,4-dichloro-phenoxy acetic acid) and (b) a second herbicide selected from the
+ group consisting of copper sulfate, sodium chlorate, ammonium sulfamate, sodium
+ trichloroacetate, dichloropropionic acid, 3-amino-2,5-dichlorobenzoic acid,
+ diphenamid (an amide), ioxynil (nitrile), dinoseb (phenol), trifluralin
+ (dinitroaniline), EPTC (thiocarbamate), and simazine (triazine) along with an
+ inert carrier or diluent.
+ 
+
+
+*Background/Prior Art:* A review
+ of the art demonstrates that the alternatives are not all members of the same
+ recognized physical or chemical recognized class of compounds. The prior art
+ explains that mixing herbicides can be risky and can result in physical or
+ chemical incompatibilities, e.g., increasing or decreasing the effectiveness of
+ each or all of the herbicides, increasing toxicity, or reacting to form a
+ precipitate. The prior art also shows that the many of the herbicides set forth in
+ component (b) are effective against one type of weed (e.g., algae, woody weeds, or
+ grasses), but are not effective against other types of weeds. In addition, many of
+ the herbicides listed in the Markush group are tolerated by one type of crop
+ (e.g., legumes, tomato, or corn) or in one type of environment (e.g., ponds, golf
+ courses, or orchards), but are not tolerated by other crops or in other
+ environments. 
+ 
+
+
+*Analysis:* All members of the
+ Markush grouping have a common disclosed use as herbicides. However, the
+ alternatives set forth in the Markush grouping are not all members of the same
+ physical or chemical recognized class of compounds. Furthermore, the members of
+ the Markush group defining component (b) are not in an art recognized class
+ because a person of ordinary skill in the art would not expect that members of the
+ class will behave in the same way in the context of the claimed invention.
+ Specifically, a person of ordinary skill in the art would not expect that any one
+ herbicide of component (b) could be substituted with any other member of the
+ Markush group with the expectation that the same intended result would be achieved
+ because of the unpredictability of results when mixing herbicides, the different
+ weeds that are controlled by one member of the Markush group as compared to
+ another, the different crops that do (or do not) tolerate the alternatives within
+ the Markush group, and the different environments in which the each second
+ herbicide is suitable for use.
+ 
+
+
+Although the members of the Markush grouping are
+ not members of a recognized class (physical, chemical, or art-recognized) for the
+ reasons set forth above, the Markush grouping describes alternative chemical
+ compounds. Therefore the members of the Markush grouping may be considered to
+ share a "single structural similarity" and common use if the alternatives share
+ both a substantial structural feature and a common use that flows from the
+ substantial structural feature.
+ 
+
+
+In this case, the members of the Markush grouping
+ do not share a substantial structural feature. Rather, the members of the Markush
+ group defining component (b) represent a plurality of chemical classes with
+ varying structures which may be identified as follows:
+ 
+
+
+* (a) inorganic salts: copper sulfate, sodium
+ chlorate, ammonium sulfamate (no ring structure)
+* (b) organic salts and carboxylic acids: sodium
+ trichloroacetate, dichloropropionic acid, 3-amino-2,5-dichlorobenzoic acid
+ (only the third chemical has a ring structure, which is a benzoic acid)
+* (c) amides: diphenamid (ring structure is
+ diphenyl)
+* (d) nitriles: ioxynil (ring structure is
+ dinitrophenol)
+* (e) phenols: dinoseb
+* (f) amines: trifluralin, (ring structure is
+ dinitroaniline), and
+* (g) heterocyclic: simazine (ring structure is
+ triazine).
+
+
+*Conclusion:* The claim sets forth
+ an improper Markush grouping because the alternatives are not all members of the
+ same recognized physical or chemical class or the same art-recognized class, nor
+ do the alternative chemical compounds share both a substantial structural feature
+ and a common use that flows from the substantial structural feature. 
+ 
+
+
+[[top]](#top)
+
+
+]

data/2100/s2118-2119.html.txt

@@ -0,0 +1,9 @@
+[
+# 2118-2119 [Reserved]
+
+
+
+[[top]](#top)
+
+
+]

data/2100/s2120.html.txt

@@ -0,0 +1,819 @@
+[
+# 2120 Rejection on Prior Art [R-10.2019]
+
+
+
+#### *35 U.S.C. 102  
+ Conditions for patentability; novelty.*
+
+
+*[Editor Note: Applicable to any patent application subject to the first
+ inventor to file provisions of the AIA (see **[35 U.S.C. 100
+ (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**). See **[pre-AIA 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** for the law
+ applicable to applications and patents not subject to the first inventor to file
+ provisions of the AIA.]*
+
+
+* (a) NOVELTY; PRIOR ART.—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](mpep-9015-appx-l.html#d0e303440)**, or in an
+	 application for patent published or deemed published under **[section
+	 122(b)](mpep-9015-appx-l.html#d0e303063)**, 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.
+* (b) EXCEPTIONS.—
+	+ (1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE
+	 EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—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
+		 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.
+	+ (2) DISCLOSURES APPEARING IN APPLICATIONS AND
+	 PATENTS.—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)](mpep-9015-appx-l.html#al_d1d85b_11e72_315)**, 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.
+* (c) COMMON OWNERSHIP UNDER JOINT RESEARCH
+ AGREEMENTS.—Subject matter disclosed and a claimed invention shall be deemed to
+ have been owned by the same person or subject to an obligation of assignment to
+ the same person in applying the provisions of subsection (b)(2)(C) if—
+	+ (1) the subject matter disclosed was developed and
+	 the claimed invention was made by, or on behalf of, 1 or more parties to a
+	 joint research agreement that was in effect on or before the effective
+	 filing date of the claimed invention;
+	+ (2) the claimed invention was made as a result of
+	 activities undertaken within the scope of the joint research agreement; and
+	+ (3) the application for patent for the claimed
+	 invention discloses or is amended to disclose the names of the parties to
+	 the joint research agreement.
+* (d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS
+ PRIOR ART.—For purposes of determining whether a patent or application for patent
+ is prior art to a claimed invention under subsection **[(a)(2)](mpep-9015-appx-l.html#al_d1d85b_11e72_315)**, such patent or application shall be considered to
+ have been effectively filed, with respect to any subject matter described in the
+ patent or application—
+	+ (1) if paragraph (2) does not apply, as of
+	 the actual filing date of the patent or the application for patent; or
+	+ (2) if the patent or application for patent
+	 is entitled to claim a right of priority under **[section
+	 119](mpep-9015-appx-l.html#d0e302921)**, **[365(a)](mpep-9015-appx-l.html#d0e307039)**,
+	 **[365(b)](mpep-9015-appx-l.html#d0e307046)**, **[386(a)](mpep-9015-appx-l.html#al_d225a2_29a27_324)**, or
+	 **[386(b)](mpep-9015-appx-l.html#al_d225a2_29a74_1f8)**, or to claim the
+	 benefit of an earlier filing date under **[section
+	 120](mpep-9015-appx-l.html#d0e303023313)**, **[121](mpep-9015-appx-l.html#d0e303040912)**, **[365(c)](mpep-9015-appx-l.html#d0e307053)**, or **[386(c)](mpep-9015-appx-l.html#al_d225a2_29a9c_1b3)** based upon 1 or
+	 more prior filed applications for patent, as of the filing date of the
+	 earliest such application that describes the subject matter.
+
+
+
+
+#### *35 U.S.C. 102 (pre-AIA)  
+ Conditions for patentability; novelty and loss of
+ right to patent.*
+
+
+*[Editor Note: With the exception of subsection (g) in limited circumstances,
+ not applicable to any patent application subject to the first inventor to file
+ provisions of the AIA (see **[35 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**). For an
+ application or patent subject to the first inventor to file provisions of the AIA,
+ see **[35
+ U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+
+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 patent, or
+* (b) the invention was patented or described in a printed
+ publication in this or a foreign country or in public use or on sale in this
+ country, more than one year prior to the date of the application for patent in the
+ United States, or
+* (c) he has abandoned the invention, or
+* (d) the invention was first patented or caused to be patented, or was
+ the subject of an inventor’s certificate, by the applicant or his legal
+ representatives or assigns in a foreign country prior to the date of the
+ application for patent in this country on an application for patent or inventor’s
+ certificate filed more than twelve months before the filing of the application in
+ the United States, or
+* (e) the invention was described in — (1) an application for patent,
+ published under **[section 122(b)](mpep-9015-appx-l.html#d0e303054)**, by another filed in the United States
+ before the invention by the applicant for patent or (2) a patent granted on an
+ application for patent by another filed in the United States before the invention
+ by the applicant for patent, except that an international application filed under
+ the treaty defined in **[section 351(a)](mpep-9015-appx-l.html#d0e306867)** shall have the
+ effects for the purposes of this subsection of an application filed in the United
+ States only if the international application designated the United States and was
+ published under **[Article 21(2)](mpep-9025-appx-t.html#d0e363622)** of such treaty in the English language;
+ or
+* (f) he did not himself invent the subject matter sought to be
+ patented, or
+* (g)(1) during the course of an interference conducted under
+ **[section
+ 135](mpep-9015-appx-l.html#d0e303239)** or **[section 291](mpep-9015-appx-l.html#d0e306203)**, another inventor
+ involved therein establishes, to the extent permitted in **[section 104](mpep-9015-appx-l.html#d0e302559)**,
+ 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.
+
+
+
+
+#### *35 U.S.C. 103  
+ Conditions for patentability; non-obvious
+ subject matter.*
+
+
+*[Editor Note: Applicable to any patent application subject to the first
+ inventor to file provisions of the AIA (see **[35 U.S.C. 100
+ (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**). See **[pre-AIA 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** for the law
+ applicable to applications and patents not subject to the first inventor to file
+ provisions of the AIA.]*
+
+
+A patent for a claimed invention may not be obtained,
+ notwithstanding that the claimed invention is not identically disclosed as set forth in
+ **[section
+ 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**, if the differences between the claimed invention and the
+ prior art are such that the claimed invention as a whole would have been obvious before
+ the effective filing date of the claimed invention to a person having ordinary skill in
+ the art to which the claimed invention pertains. Patentability shall not be negated by
+ the manner in which the invention was made.
+ 
+
+
+
+
+#### *35 U.S.C. 103 (pre-AIA)   
+ Conditions for patentability; non-obvious subject
+ matter.*
+
+
+*[Editor Note: **Not applicable** to any patent application subject to
+ the first inventor to file provisions of the AIA (see **[35 U.S.C. 100
+ (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**). For an application or patent subject to the first
+ inventor to file provisions of the AIA, see **[35 U.S.C.
+ 103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)**.]*
+
+
+* (a) A patent may not be obtained though the invention is not
+ identically disclosed or described as set forth in **[section 102](mpep-9015-appx-l.html#d0e302383)**,
+ if the differences between the subject matter sought to be patented and the prior
+ art are such that the subject matter as a whole would have been obvious at the
+ time the invention was made to a person having ordinary skill in the art to which
+ said subject matter pertains. Patentability shall not be negatived by the manner
+ in which the invention was made.
+* (b)
+	+ (1) Notwithstanding subsection (a), and upon timely election by
+	 the applicant for patent to proceed under this subsection, a
+	 biotechnological process using or resulting in a composition of matter that
+	 is novel under **[section 102](mpep-9015-appx-l.html#d0e302383)** and
+	 nonobvious under subsection (a) of this section shall be considered
+	 nonobvious if-
+		- (A) claims to the process and the composition of matter
+		 are contained in either the same application for patent or in separate
+		 applications having the same effective filing date; and
+		- (B) the composition of matter, and the process at the time
+		 it was invented, were owned by the same person or subject to an
+		 obligation of assignment to the same person.
+	+ (2) A patent issued on a process under paragraph (1)-
+		- (A) shall also contain the claims to the composition of
+		 matter used in or made by that process, or
+		- (B) shall, if such composition of matter is claimed in
+		 another patent, be set to expire on the same date as such other
+		 patent, notwithstanding **[section 154](mpep-9015-appx-l.html#d0e303482)**.
+	+ (3) For purposes of paragraph (1), the term "biotechnological
+	 process" means-
+		- (A) a process of genetically altering or otherwise
+		 inducing a single- or multi-celled organism to-
+			* (i) express an exogenous nucleotide sequence,
+			* (ii) inhibit, eliminate, augment, or alter expression
+			 of an endogenous nucleotide sequence, or
+			* (iii) express a specific physiological characteristic
+			 not naturally associated with said organism;
+		- (B) cell fusion procedures yielding a cell line that
+		 expresses a specific protein, such as a monoclonal antibody; and
+		- (C) a method of using a product produced by a process
+		 defined by subparagraph (A) or (B), or a combination of subparagraphs
+		 (A) and (B).
+* (c)
+	+ (1) Subject matter developed by another person, which qualifies
+	 as prior art only under one or more of subsections (e), (f), and (g) of
+	 **[section
+	 102](mpep-9015-appx-l.html#d0e302383)**, shall not preclude patentability under this
+	 section where the subject matter and the claimed invention were, at the time
+	 the claimed invention was made, owned by the same person or subject to an
+	 obligation of assignment to the same person.
+	+ (2) For purposes of this subsection, subject matter developed by
+	 another person and a claimed invention shall be deemed to have been owned by
+	 the same person or subject to an obligation of assignment to the same person
+	 if —
+		- (A) the claimed invention was made by or on behalf of
+		 parties to a joint research agreement that was in effect on or before
+		 the date the claimed invention was made;
+		- (B) the claimed invention was made as a result of
+		 activities undertaken within the scope of the joint research
+		 agreement; and
+		- (C) the application for patent for the claimed invention
+		 discloses or is amended to disclose the names of the parties to the
+		 joint research agreement.
+	+ (3) For purposes of paragraph (2), the term "joint research
+	 agreement" means a written contract, grant, or cooperative agreement entered
+	 into by two or more persons or entities for the performance of experimental,
+	 developmental, or research work in the field of the claimed invention.
+
+
+**I.** **CHOICE OF PRIOR ART; BEST AVAILABLE**Prior art rejections should ordinarily be confined strictly to the best
+ available art. Exceptions may properly be made, for example, where:
+ 
+
+
+* (A) the propriety of a **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** or
+ **[103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** rejection depends on a particular interpretation of a
+ claim;
+* (B) a claim is met by a prior art disclosure which does not disclose
+ the inventive concept involved;
+* (C) for cases examined under the first inventor to file provisions of
+ the AIA, the most pertinent disclosure could be shown not to be prior art by
+ invoking an exception in a **[37 CFR 1.130](mpep-9020-appx-r.html#d0e323465)** affidavit or
+ declaration or could be antedated by a **[37 CFR 1.131](mpep-9020-appx-r.html#aia_d0e323504)** affidavit or
+ declaration, depending on the applicable version of **[35 U.S.C.
+ 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**; or
+* (D) for cases examined under pre-AIA law, an
+ obviousness rejection is based on prior art that qualifies only under
+ **[pre-AIA 35
+ U.S.C. 102(e), (f), or (g)](mpep-9015-appx-l.html#d0e302407)** so that the rejection could be
+ overcome by establishing that the prior art is disqualified under
+ **[pre-AIA 35
+ U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302521)**.
+
+
+In the interest of compact prosecution, such rejections should be backed
+ up by the best other art rejections available. Keep in mind the best backup rejection(s)
+ could be based on alternate embodiments from the same "best available" reference(s). For
+ example, if an anticipation rejection could be overcome by invoking an exception in a
+ **[37 CFR
+ 1.130(b)](mpep-9020-appx-r.html#d0e323497)** declaration, it would be appropriate to make an
+ additional obviousness rejection over another disclosure in the same reference. Merely
+ cumulative rejections, i.e., those which would clearly fall if the primary rejection
+ were not sustained, should be avoided. 
+ 
+
+
+See also **[MPEP § 707.05](s707.html#d0e73405)**.
+ 
+
+**II.** **RELIANCE UPON ABSTRACTS AND FOREIGN LANGUAGE DOCUMENTS IN SUPPORT OF A
+ REJECTION**Prior art uncovered in searching the claimed subject matter of a patent
+ application often includes English language abstracts of underlying documents, such as
+ technical literature or foreign patent documents which may not be in the English
+ language. When both the abstract and the underlying document qualify as prior art, the
+ underlying document should normally be used to support a rejection. When an abstract is
+ used to support a rejection, the evidence relied upon is the facts contained in the
+ abstract, not additional facts that may be contained in the underlying full text
+ document. Citation of and reliance upon an abstract without citation of and reliance
+ upon the underlying scientific document is generally inappropriate where both the
+ abstract and the underlying document are prior art. See *Ex parte
+ Jones*, 62 USPQ2d 1206, 1208 (Bd. Pat. App. & Inter. 2001)
+ (unpublished). To determine whether both the abstract and the underlying document are
+ prior art, a copy of the underlying document must be obtained and analyzed. If the
+ document is in a language other than English and the examiner seeks to rely on that
+ document, a translation must be obtained so that the record is clear as to the precise
+ facts the examiner is relying upon in support of the rejection. The record must also
+ be clear as to whether the examiner is relying upon the abstract or the full text
+ document to support a rejection. The rationale for this is several-fold. It is not
+ uncommon for a full text document to reveal that the document fully anticipates an
+ invention that the abstract renders obvious at best. The converse may also be true, that
+ the full text document will include teachings away from the invention that will preclude
+ an obviousness rejection under **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)**, when the abstract
+ alone appears to support the rejection. An abstract can have a different effective
+ publication date than the full text document. Because all patentability determinations
+ are fact dependent, obtaining and considering full text documents at the earliest
+ practicable time in the examination process will yield the fullest available set of
+ facts upon which to determine patentability, thereby improving quality and reducing
+ pendency. In limited circumstances, it may be appropriate for the examiner to make a
+ rejection in a non-final Office action based in whole or in part on the abstract only
+ without relying on the full text document. In such circumstances, the full text document
+ and a translation (if not in English) may be supplied in the next Office action.
+ 
+
+
+ Examiners may rely on a machine translation of a foreign
+ language document unless the machine translation is not of sufficient quality to be
+ adequate evidence of the contents of the document. See *In re Orbital
+ Technologies Corporation,* 603 Fed. App’x 924, 932 (Fed. Cir. 2015). A
+ request by the applicant for the examiner to obtain a human language translation should
+ be granted if the applicant provides evidence (e.g., a translation inconsistent with the
+ machine translation) showing the machine translation does not accurately represent the
+ document’s contents.
+ 
+
+
+An Office action supplying a full text document and/or
+ translation may be made final if the conditions described in **[MPEP § 706.07(a)](s706.html#d0e69118)** or
+ for a first Office action or RCE, in **[MPEP § 706.07(b)](s706.html#d0e69408)**, have been met.
+ 
+
+
+Some translation resources available to examiners are
+ discussed in **[MPEP §
+ 901.05(d)](s901.html#d0e113207)**.
+ 
+
+**III.** **DISTINCTION BETWEEN 35 U.S.C. 102 AND 103**The distinction between rejections based on **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** and
+ those based on **[35
+ U.S.C. 103](mpep-9015-appx-l.html#d0e302450)** should be kept in mind. Under the former, the claim is
+ anticipated by the reference. No question of obviousness is present. In other words, for
+ anticipation under **[35
+ U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**, the reference must teach every aspect of the claimed
+ invention either explicitly or impliedly. Any feature not directly taught must be
+ inherently present. Whereas, in a rejection based on **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)**, the reference
+ teachings must somehow be modified in order to meet the claims. The modification must be
+ one which would have been obvious to one of ordinary skill in the art before the
+ effective filing date of the claimed invention for applications or patents subject to
+ the first inventor to file provisions of the AIA or at the time the invention was made
+ for applications or patents subject to pre-AIA law. See **[MPEP §§ 2131](s2131.html#d0e202959)** -
+ **[2146](s2146.html#d0e213206)** and **[2150](s2150.html#ch2100_d2002f_22805_16e)** -
+ **[2159.04](s2159.html#ch2100_d222e3_140d7_1bb)** for guidance on patentability determinations under
+ **[35 U.S.C.
+ 102](mpep-9015-appx-l.html#d0e302383)** and **[103](mpep-9015-appx-l.html#d0e302450)**.
+ 
+
+
+
+# 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 [R-10.2019]
+
+
+Once the examiner conducts a search and finds a printed publication or
+ patent which discloses the claimed invention, the examiner should determine whether the
+ rejection should be made under **[35 U.S.C. 102(a)(1) or (a)(2)](mpep-9015-appx-l.html#al_d1d85b_11e72_307)** or, if
+ the application is subject to the former prior art regime, **[pre-AIA 35 U.S.C. 102(a), (b), or
+ (e)](mpep-9015-appx-l.html#d0e302391)**. See **[MPEP § 2159](s2159.html#ch2100_d20034_1dc34_1dd)** for guidance. Form
+ paragraph **[7.03.aia](#fp7.03.aia)** or **[7.03.fti](#fp7.03.fti)** should be used in an Office
+ action to indicate whether the application is being examined under the first inventor to
+ file provisions of the AIA or the pre-AIA prior art provisions, respectively.
+ 
+
+
+# ¶ 7.03.aia Application Examined Under AIA First Inventor to File
+ Provisions
+
+
+The present application, filed on or after March 16, 2013, is being
+ examined under the first inventor to file provisions of the AIA.
+ 
+
+
+### Examiner Note:
+
+ * This form paragraph should be used in any application subject to
+ the first inventor to file provisions of the AIA.
+
+
+
+# ¶ 7.03.fti Application Examined Under First to Invent
+ provisions
+
+
+The present application, filed on or after March 16, 2013, is being
+ examined under the pre-AIA first to invent provisions. 
+ 
+
+
+### Examiner Note:
+
+ * This form paragraph should be used in any application filed
+ on or after March 16, 2013 that is subject to the pre-AIA prior art provisions.
+
+
+
+In order to determine which paragraph of **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**
+ applies, the effective filing date of the application and each claimed invention must be
+ determined and compared with the date of the reference. See **[MPEP §
+ 2139.01](s2139.html#ch2100_d2c184_12530_2b6)** regarding determination of effective filing date of
+ the claimed invention under pre-AIA law and **[MPEP §
+ 2152.01](s2152.html#ch2100_d20033_1afb3_e6)** regarding determination of effective filing date of
+ the claimed invention under AIA law.
+ 
+
+
+The examiner must also determine the issue or publication
+ date of the reference so that a proper comparison between the application and reference
+ dates can be made. See **[MPEP §§ 2124](s2124.html#d0e202094)**, **[2126](s2126.html#d0e202195)**, **[2128](s2128.html#d0e202564)** -
+ **[2128.02](s2128.html#d0e202804)**, and **[2152.02](s2152.html#ch2100_d20033_1d66c_1e5)**
+ - **[2154.02(c)](s2154.html#ch2100_d20034_145f0_210)** for case law relevant to reference date
+ determination.
+ 
+
+
+See **[MPEP § 2152.05](s2152.html#ch2100_d2c184_13c9f_236)** for determining whether
+ to apply **[35
+ U.S.C. 102(a)(1) or (a)(2)](mpep-9015-appx-l.html#al_d1d85b_11e72_2ee)**. See **[MPEP §
+ 2139.02](s2139.html#ch2100_d2c184_125d3_2ef)** for determining whether to apply **[pre-AIA 35 U.S.C. 102(a), (b), or
+ (e)](mpep-9015-appx-l.html#d0e302383)**. 
+ 
+
+
+In all applications, an applicant may overcome a **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**
+ 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 available to overcome a rejection based on **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**
+ prior art depend on whether or not any claim in the application being examined is
+ subject to the first inventor to file provisions of the AIA. 
+ 
+
+
+See **[MPEP § 2152.06](s2152.html#ch2100_d2c184_13ec5_303)** for overcoming a
+ rejection under **[35 U.S.C. 102(a)(1) or (a)(2)](mpep-9015-appx-l.html#al_d1d85b_11e72_2ee)**. See
+ **[MPEP §§
+ 2132.01](s2132.html#d0e203530)**, **[2133.02(a)](s2133.html#ch2100_d2c183_21092_1c6)**, and **[2136.05](s2136.html#d0e206333)***et seq.* for overcoming prior art rejections under **[pre-AIA 35 U.S.C. 102(a), (b), and
+ (e)](mpep-9015-appx-l.html#d0e302383)**, respectively.
+ 
+
+
+
+
+# 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 [R-10.2019]
+
+
+An applicant may make an admission, or submit evidence of sale of the
+ invention or knowledge of the invention by others, or the examiner may have personal
+ knowledge that the invention was sold by applicant or known by others. See
+ **[MPEP §§
+ 2152.02(c)](s2152.html#ch2100_d20033_1e416_252)**-**[2152.02(e)](s2152.html#ch2100_d20033_228c0_21c)** for a discussion of when public use of a claimed
+ invention, placing a claimed invention on sale, or otherwise making a claimed invention
+ available to the public might preclude patentability under **[35 U.S.C.
+ 102(a)(1)](mpep-9015-appx-l.html#al_d1d85b_11e72_307)**. See **[MPEP §§ 2132](s2132.html#d0e203390)** and **[2133.03](s2133.html#d0e203781)***et seq.* for a discussion of when public knowledge, public use, or
+ sale of a claimed invention might preclude patentability under **[pre-AIA 35 U.S.C. 102(a) or
+ (b)](mpep-9015-appx-l.html#d0e302383)**. If the activity is by an entity other than the inventors or
+ assignee, such as sale by another, manufacture by another or disclosure of the invention
+ by applicant to another then both **[pre-AIA 35 U.S.C. 102(a) and (b)](mpep-9015-appx-l.html#d0e302383)** may
+ be applicable. If the evidence only points to knowledge within the year prior to the
+ effective filing date then **[pre-AIA 35 U.S.C. 102(a)](mpep-9015-appx-l.html#d0e302383)** applies.
+ However, no rejection under **[pre-AIA 35 U.S.C. 102(a)](mpep-9015-appx-l.html#d0e302383)** should be
+ made if there is evidence that applicant made the invention and only disclosed it to
+ others within the year prior to the effective filing date. 
+ 
+
+
+Note that as an aid to resolving public use or on sale issues, as well
+ as to other related matters of public availability or public knowledge, an applicant may
+ be required to answer specific questions posed by the examiner and to explain or
+ supplement any evidence of record. See **[35 U.S.C. 132](mpep-9015-appx-l.html#d0e303187)** and **[37 CFR
+ 1.104(a)(2)](mpep-9020-appx-r.html#d0e322124)**. Information sought should be restricted to that which is
+ reasonably necessary for the examiner to render a decision on patentability. The
+ examiner may consider making a requirement for information under  **[37 CFR 1.105](mpep-9020-appx-r.html#d0e322262)**
+ where the evidence of record indicates reasonable necessity. See **[MPEP § 704.10](s704.html#d0e55758)***et seq.*
+
+
+A 2-month time period should be set by the examiner for any reply to the
+ requirement, unless the requirement is part of an Office action having a shortened
+ statutory period, in which case the period for reply to the Office action will also
+ apply to the requirement. If applicant fails to reply in a timely fashion to a
+ requirement for information, the application will be regarded as abandoned.
+ **[35 U.S.C.
+ 133](mpep-9015-appx-l.html#d0e303207aia)**. 
+ 
+
+
+If there is not enough information on which to base a public use or on
+ sale rejection, the examiner should make a requirement for more information. Form
+ paragraph **[7.104.aia](#fp7.104.aia)** or **[7.104.fti](#fp7.104.fti)** can be used.
+ 
+
+
+# ¶ 7.104.aia Requirement for Information, Public Use or Sale or Other Public
+ Availability
+
+
+An issue of public use, on sale activity, or other public
+ availability has been raised in this application. In order for the examiner to properly
+ consider patentability of the claimed invention under **[35 U.S.C.
+ 102(a)(1)](mpep-9015-appx-l.html#al_d1d85b_11e72_307)**, additional information regarding this issue is required as
+ follows: **[1]**
+
+
+Applicant is reminded that failure to fully reply to this
+ requirement for information will result in a holding of abandonment.
+ 
+
+
+### Examiner Note:
+
+ * 1. This form paragraph must be preceded by form paragraph
+ **[7.105](#fp7.105)**, and should be followed by form paragraphs
+ **[7.122](#fp7.122)** –
+ **[7.126](#fp7.126)** as
+ appropriate.
+* 2. 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](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**/**[103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** as amended by the Leahy-Smith
+ America Invents Act. This form paragraph must be preceded by form paragraph
+ **[7.03.aia](#fp7.03.aia)**.
+* 3. Information sought should be restricted to that
+ which is reasonably necessary for the examiner to render a decision on patentability.
+ See **[MPEP §
+ 2133.03](s2133.html#d0e203781)**.
+* 4. A two month time period should be set by the examiner
+ for reply to the requirement unless it is part of an Office action having a shortened
+ statutory period (SSP), in which case the period for reply will apply also to the
+ requirement.
+* 5. If sufficient evidence already exists to establish a
+ *prima facie* case of public use, sale, or other public availability
+ use form paragraph **[7.16.aia](#fp7.16.aia)** to make a rejection under **[35 U.S.C.
+ 102(a)(1)](mpep-9015-appx-l.html#al_d1d85b_11e72_307)**. See **[MPEP § 2133.03](s2133.html#d0e203781)**.
+
+
+
+# ¶ 7.104.fti Requirement for Information, Public Use or Sale
+
+
+An issue of public use or on sale activity has been raised
+ in this application. In order for the examiner to properly consider patentability of the
+ claimed invention under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302395)**, additional
+ information regarding this issue is required as follows: **[1]**
+
+
+Applicant is reminded that failure to fully reply to this
+ requirement for information will result in a holding of abandonment.
+ 
+
+
+### Examiner Note:
+
+ * 1. This form paragraph must be preceded by form
+ paragraph **[7.105](#fp7.105)**, and should be followed by form paragraphs
+ **[7.122](#fp7.122)**
+ –**[7.126](#fp7.126)** as
+ appropriate.
+* 2. Information sought should be restricted to that which
+ is reasonably necessary for the examiner to render a decision on patentability. See
+ **[MPEP §
+ 2133.03](s2133.html#d0e203781)**.
+* 3. A two month time period should be set by the examiner for reply
+ to the requirement unless it is part of an Office action having an SSP, in which case
+ the SSP will apply also to the requirement.
+* 4. If sufficient evidence already exists to establish a
+ *prima facie* case of public use or on sale, use form paragraph
+ **[7.16.fti](#fp7.16.fti)**
+ to make a rejection under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302395)**. See
+ **[MPEP §
+ 2133.03](s2133.html#d0e203781)**.
+
+
+
+
+
+[[top]](#top)
+
+
+, 
+# 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 [R-10.2019]
+
+
+Once the examiner conducts a search and finds a printed publication or
+ patent which discloses the claimed invention, the examiner should determine whether the
+ rejection should be made under **[35 U.S.C. 102(a)(1) or (a)(2)](mpep-9015-appx-l.html#al_d1d85b_11e72_307)** or, if
+ the application is subject to the former prior art regime, **[pre-AIA 35 U.S.C. 102(a), (b), or
+ (e)](mpep-9015-appx-l.html#d0e302391)**. See **[MPEP § 2159](s2159.html#ch2100_d20034_1dc34_1dd)** for guidance. Form
+ paragraph **[7.03.aia](#fp7.03.aia)** or **[7.03.fti](#fp7.03.fti)** should be used in an Office
+ action to indicate whether the application is being examined under the first inventor to
+ file provisions of the AIA or the pre-AIA prior art provisions, respectively.
+ 
+
+
+# ¶ 7.03.aia Application Examined Under AIA First Inventor to File
+ Provisions
+
+
+The present application, filed on or after March 16, 2013, is being
+ examined under the first inventor to file provisions of the AIA.
+ 
+
+
+### Examiner Note:
+
+ * This form paragraph should be used in any application subject to
+ the first inventor to file provisions of the AIA.
+
+
+
+# ¶ 7.03.fti Application Examined Under First to Invent
+ provisions
+
+
+The present application, filed on or after March 16, 2013, is being
+ examined under the pre-AIA first to invent provisions. 
+ 
+
+
+### Examiner Note:
+
+ * This form paragraph should be used in any application filed
+ on or after March 16, 2013 that is subject to the pre-AIA prior art provisions.
+
+
+
+In order to determine which paragraph of **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**
+ applies, the effective filing date of the application and each claimed invention must be
+ determined and compared with the date of the reference. See **[MPEP §
+ 2139.01](s2139.html#ch2100_d2c184_12530_2b6)** regarding determination of effective filing date of
+ the claimed invention under pre-AIA law and **[MPEP §
+ 2152.01](s2152.html#ch2100_d20033_1afb3_e6)** regarding determination of effective filing date of
+ the claimed invention under AIA law.
+ 
+
+
+The examiner must also determine the issue or publication
+ date of the reference so that a proper comparison between the application and reference
+ dates can be made. See **[MPEP §§ 2124](s2124.html#d0e202094)**, **[2126](s2126.html#d0e202195)**, **[2128](s2128.html#d0e202564)** -
+ **[2128.02](s2128.html#d0e202804)**, and **[2152.02](s2152.html#ch2100_d20033_1d66c_1e5)**
+ - **[2154.02(c)](s2154.html#ch2100_d20034_145f0_210)** for case law relevant to reference date
+ determination.
+ 
+
+
+See **[MPEP § 2152.05](s2152.html#ch2100_d2c184_13c9f_236)** for determining whether
+ to apply **[35
+ U.S.C. 102(a)(1) or (a)(2)](mpep-9015-appx-l.html#al_d1d85b_11e72_2ee)**. See **[MPEP §
+ 2139.02](s2139.html#ch2100_d2c184_125d3_2ef)** for determining whether to apply **[pre-AIA 35 U.S.C. 102(a), (b), or
+ (e)](mpep-9015-appx-l.html#d0e302383)**. 
+ 
+
+
+In all applications, an applicant may overcome a **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**
+ 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 available to overcome a rejection based on **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**
+ prior art depend on whether or not any claim in the application being examined is
+ subject to the first inventor to file provisions of the AIA. 
+ 
+
+
+See **[MPEP § 2152.06](s2152.html#ch2100_d2c184_13ec5_303)** for overcoming a
+ rejection under **[35 U.S.C. 102(a)(1) or (a)(2)](mpep-9015-appx-l.html#al_d1d85b_11e72_2ee)**. See
+ **[MPEP §§
+ 2132.01](s2132.html#d0e203530)**, **[2133.02(a)](s2133.html#ch2100_d2c183_21092_1c6)**, and **[2136.05](s2136.html#d0e206333)***et seq.* for overcoming prior art rejections under **[pre-AIA 35 U.S.C. 102(a), (b), and
+ (e)](mpep-9015-appx-l.html#d0e302383)**, respectively.
+ 
+
+
+, 
+# 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 [R-10.2019]
+
+
+An applicant may make an admission, or submit evidence of sale of the
+ invention or knowledge of the invention by others, or the examiner may have personal
+ knowledge that the invention was sold by applicant or known by others. See
+ **[MPEP §§
+ 2152.02(c)](s2152.html#ch2100_d20033_1e416_252)**-**[2152.02(e)](s2152.html#ch2100_d20033_228c0_21c)** for a discussion of when public use of a claimed
+ invention, placing a claimed invention on sale, or otherwise making a claimed invention
+ available to the public might preclude patentability under **[35 U.S.C.
+ 102(a)(1)](mpep-9015-appx-l.html#al_d1d85b_11e72_307)**. See **[MPEP §§ 2132](s2132.html#d0e203390)** and **[2133.03](s2133.html#d0e203781)***et seq.* for a discussion of when public knowledge, public use, or
+ sale of a claimed invention might preclude patentability under **[pre-AIA 35 U.S.C. 102(a) or
+ (b)](mpep-9015-appx-l.html#d0e302383)**. If the activity is by an entity other than the inventors or
+ assignee, such as sale by another, manufacture by another or disclosure of the invention
+ by applicant to another then both **[pre-AIA 35 U.S.C. 102(a) and (b)](mpep-9015-appx-l.html#d0e302383)** may
+ be applicable. If the evidence only points to knowledge within the year prior to the
+ effective filing date then **[pre-AIA 35 U.S.C. 102(a)](mpep-9015-appx-l.html#d0e302383)** applies.
+ However, no rejection under **[pre-AIA 35 U.S.C. 102(a)](mpep-9015-appx-l.html#d0e302383)** should be
+ made if there is evidence that applicant made the invention and only disclosed it to
+ others within the year prior to the effective filing date. 
+ 
+
+
+Note that as an aid to resolving public use or on sale issues, as well
+ as to other related matters of public availability or public knowledge, an applicant may
+ be required to answer specific questions posed by the examiner and to explain or
+ supplement any evidence of record. See **[35 U.S.C. 132](mpep-9015-appx-l.html#d0e303187)** and **[37 CFR
+ 1.104(a)(2)](mpep-9020-appx-r.html#d0e322124)**. Information sought should be restricted to that which is
+ reasonably necessary for the examiner to render a decision on patentability. The
+ examiner may consider making a requirement for information under  **[37 CFR 1.105](mpep-9020-appx-r.html#d0e322262)**
+ where the evidence of record indicates reasonable necessity. See **[MPEP § 704.10](s704.html#d0e55758)***et seq.*
+
+
+A 2-month time period should be set by the examiner for any reply to the
+ requirement, unless the requirement is part of an Office action having a shortened
+ statutory period, in which case the period for reply to the Office action will also
+ apply to the requirement. If applicant fails to reply in a timely fashion to a
+ requirement for information, the application will be regarded as abandoned.
+ **[35 U.S.C.
+ 133](mpep-9015-appx-l.html#d0e303207aia)**. 
+ 
+
+
+If there is not enough information on which to base a public use or on
+ sale rejection, the examiner should make a requirement for more information. Form
+ paragraph **[7.104.aia](#fp7.104.aia)** or **[7.104.fti](#fp7.104.fti)** can be used.
+ 
+
+
+# ¶ 7.104.aia Requirement for Information, Public Use or Sale or Other Public
+ Availability
+
+
+An issue of public use, on sale activity, or other public
+ availability has been raised in this application. In order for the examiner to properly
+ consider patentability of the claimed invention under **[35 U.S.C.
+ 102(a)(1)](mpep-9015-appx-l.html#al_d1d85b_11e72_307)**, additional information regarding this issue is required as
+ follows: **[1]**
+
+
+Applicant is reminded that failure to fully reply to this
+ requirement for information will result in a holding of abandonment.
+ 
+
+
+### Examiner Note:
+
+ * 1. This form paragraph must be preceded by form paragraph
+ **[7.105](#fp7.105)**, and should be followed by form paragraphs
+ **[7.122](#fp7.122)** –
+ **[7.126](#fp7.126)** as
+ appropriate.
+* 2. 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](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**/**[103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** as amended by the Leahy-Smith
+ America Invents Act. This form paragraph must be preceded by form paragraph
+ **[7.03.aia](#fp7.03.aia)**.
+* 3. Information sought should be restricted to that
+ which is reasonably necessary for the examiner to render a decision on patentability.
+ See **[MPEP §
+ 2133.03](s2133.html#d0e203781)**.
+* 4. A two month time period should be set by the examiner
+ for reply to the requirement unless it is part of an Office action having a shortened
+ statutory period (SSP), in which case the period for reply will apply also to the
+ requirement.
+* 5. If sufficient evidence already exists to establish a
+ *prima facie* case of public use, sale, or other public availability
+ use form paragraph **[7.16.aia](#fp7.16.aia)** to make a rejection under **[35 U.S.C.
+ 102(a)(1)](mpep-9015-appx-l.html#al_d1d85b_11e72_307)**. See **[MPEP § 2133.03](s2133.html#d0e203781)**.
+
+
+
+# ¶ 7.104.fti Requirement for Information, Public Use or Sale
+
+
+An issue of public use or on sale activity has been raised
+ in this application. In order for the examiner to properly consider patentability of the
+ claimed invention under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302395)**, additional
+ information regarding this issue is required as follows: **[1]**
+
+
+Applicant is reminded that failure to fully reply to this
+ requirement for information will result in a holding of abandonment.
+ 
+
+
+### Examiner Note:
+
+ * 1. This form paragraph must be preceded by form
+ paragraph **[7.105](#fp7.105)**, and should be followed by form paragraphs
+ **[7.122](#fp7.122)**
+ –**[7.126](#fp7.126)** as
+ appropriate.
+* 2. Information sought should be restricted to that which
+ is reasonably necessary for the examiner to render a decision on patentability. See
+ **[MPEP §
+ 2133.03](s2133.html#d0e203781)**.
+* 3. A two month time period should be set by the examiner for reply
+ to the requirement unless it is part of an Office action having an SSP, in which case
+ the SSP will apply also to the requirement.
+* 4. If sufficient evidence already exists to establish a
+ *prima facie* case of public use or on sale, use form paragraph
+ **[7.16.fti](#fp7.16.fti)**
+ to make a rejection under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302395)**. See
+ **[MPEP §
+ 2133.03](s2133.html#d0e203781)**.
+
+
+
+
+]

data/2100/s2121.html.txt

@@ -0,0 +1,422 @@
+[
+# 2121 Prior Art; General Level of Operability Required to Make a
+ *Prima Facie* Case [R-08.2017]
+
+**I.** **PRIOR ART IS PRESUMED TO BE OPERABLE/ENABLING**When the reference relied on expressly anticipates or makes obvious all
+ of the elements of the claimed invention, the reference is presumed to be operable. Once
+ such a reference is found, the burden is on applicant to rebut the presumption of
+ operability. *In re Sasse,* 629 F.2d 675, 207 USPQ 107 (CCPA 1980). See
+ also **[MPEP
+ § 716.07](s716.html#d0e93668)**. See also *In re Antor Media Corp.,*
+ 689 F.3d 1282, 103 USPQ2d 1555 (Fed. Cir. 2012). Specifically, in *In re Antor
+ Media Corp.,* the court stated:
+ 
+
+
+
+
+> 
+> "Consistent with the statutory framework and our
+>  precedent, we therefore hold that, during patent prosecution, an examiner is
+>  entitled to reject claims as anticipated by a prior art publication or patent
+>  without conducting an inquiry into whether or not that prior art reference is
+>  enabling. As long as an examiner makes a proper prima facie case of anticipation
+>  by giving adequate notice under **[§ 132](mpep-9015-appx-l.html#d0e303187)**, the burden shifts to
+>  the applicant to submit rebuttal evidence of nonenablement." 
+>  
+> 
+> 
+> 
+
+
+
+*In re Antor Media Corp.,* 689 F.3d at
+ 1289, 103 USPQ2d at 1559.
+ 
+
+
+Where a reference appears to not be enabling on its
+ face, however, an applicant may successfully challenge the cited prior art for lack of
+ enablement by argument without supporting evidence. *In re Morsa,* 713
+ F.3d 104, 110, 106 USPQ2d 1327, 1332 (Fed. Cir. 2013).
+ 
+
+
+See also **[MPEP § 716.07](s716.html#d0e93668)**.
+ 
+
+**II.** **WHAT CONSTITUTES AN "ENABLING DISCLOSURE" DOES NOT DEPEND ON THE TYPE OF PRIOR
+ ART THE DISCLOSURE IS CONTAINED IN**The level of disclosure required within a reference to make it an
+ "enabling disclosure" is the same no matter what type of prior art is at issue. It does
+ not matter whether the prior art reference is a U.S. patent, foreign patent, a printed
+ publication or other. There is no basis in the statute (**[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** or
+ **[103](mpep-9015-appx-l.html#d0e302450)**) for discriminating either in favor of or against prior art
+ references on the basis of nationality. *In re Moreton,* 288 F.2d 708,
+ 129 USPQ 227 (CCPA 1961).
+ 
+
+**III.** **EFFICACY IS NOT A REQUIREMENT FOR PRIOR ART ENABLEMENT** A prior art reference provides an enabling disclosure and thus
+ anticipates a claimed invention if the reference describes the claimed invention in
+ sufficient detail to enable a person of ordinary skill in the art to carry out the
+ claimed invention; 
+ "proof of efficacy is not
+ required for a prior art reference to be enabling for purposes of
+ anticipation."
+ 
+ 
+ *Impax Labs. Inc. v. Aventis Pharm.**Inc.,* 468 F.3d 1366, 1383, 81 USPQ2d 1001, 1013 (Fed. Cir. 2006). See
+ also **[MPEP §
+ 2122](s2122.html#d0e201997)**. 
+ 
+
+
+
+# 2121.01 Use of Prior Art in Rejections Where Operability is in
+ Question [R-10.2019]
+
+
+"In determining that quantum of prior art disclosure which is necessary
+ to declare an applicant’s invention ‘not novel’ or ‘anticipated’ within
+ **[section
+ 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**, the stated test is whether a reference contains an ‘enabling
+ disclosure’... ." *In re**Hoeksema,* 399 F.2d 269, 158 USPQ 596 (CCPA 1968). The disclosure in
+ an assertedly anticipating reference must provide an enabling disclosure of the desired
+ subject matter; mere naming or description of the subject matter is insufficient, if it
+ cannot be produced without undue experimentation. *Elan Pharm., Inc. v. Mayo
+ Found. For Med. Educ. & Research,* 346 F.3d 1051, 1054, 68 USPQ2d 1373,
+ 1376 (Fed. Cir. 2003) (At issue was whether a prior art reference enabled one of
+ ordinary skill in the art to produce Elan’s claimed transgenic mouse without undue
+ experimentation. Without a disclosure enabling one skilled in the art to produce a
+ transgenic mouse without undue experimentation, the reference would not be applicable as
+ prior art.). A reference contains an "enabling disclosure" if the public was in
+ possession of the claimed invention before the effective filing date of the claimed
+ invention for applications or patents subject to the first inventor to file provisions
+ of the AIA or the time the invention was made for applications or patents subject to
+ pre-AIA law. "Such possession is effected if one of ordinary skill in the art could have
+ combined the publication’s description of the invention with his [or her] own knowledge
+ to make the claimed invention." *In re Donohue,* 766 F.2d 531, 226 USPQ
+ 619 (Fed. Cir. 1985).
+ 
+
+**I.** **35 U.S.C. 102 REJECTIONS AND ADDITION OF EVIDENCE SHOWING REFERENCE IS
+ OPERABLE**It is possible to make a **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** rejection even if
+ the reference does not itself teach one of ordinary skill how to practice the
+ invention, i.e., how to make the article disclosed or use the method disclosed. If
+ the reference teaches every claimed element of the article or every claimed step of
+ the method, secondary evidence, such as other patents or publications, can be cited
+ to show public possession of the method of making the article or using the method.
+ *In re Donohue,* 766 F.2d at 533, 226 USPQ at 621. See
+ **[MPEP §
+ 2131.01](s2131.html#d0e203057)** for more information on **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**
+ rejections using secondary references to show that the primary reference contains an
+ "enabling disclosure." 
+ 
+
+**II.** **35 U.S.C. 103 REJECTIONS AND USE OF INOPERATIVE PRIOR ART**"Even if a reference discloses an inoperative device, it is prior
+ art for all that it teaches." *Beckman Instruments**v.**LKB Produkter AB,* 892 F.2d 1547, 1551, 13 USPQ2d 1301, 1304 (Fed.
+ Cir. 1989). Therefore, "a non-enabling reference may qualify as prior art for the
+ purpose of determining obviousness under **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)**." *Symbol
+ Techs. Inc. v. Opticon Inc.,* 935 F.2d 1569, 1578, 19 USPQ2d 1241, 1247
+ (Fed. Cir. 1991).
+ 
+
+
+
+
+# 2121.02 Compounds and Compositions — What Constitutes Enabling Prior
+ Art [R-08.2017]
+
+
+*[Editor Note: This MPEP section is **applicable** to applications
+ subject to the first inventor to file (FITF) provisions of the AIA except that the
+ relevant date is the "effective filing date" of the claimed invention instead of the
+ "time of the invention" or "date of invention," which are only applicable to
+ applications subject to **[pre-AIA 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**. See
+ **[35
+ U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)** and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq.]*
+
+**I.** **ONE OF ORDINARY SKILL IN THE ART MUST BE ABLE TO MAKE OR SYNTHESIZE**Where a process for making the compound is not developed until after
+ the date of invention, the mere naming of a compound in a reference, without more,
+ cannot constitute a description of the compound. *In re Hoeksema,*
+ 399 F.2d 269, 158 USPQ 596 (CCPA 1968). Note, however, that a reference is presumed
+ operable until applicant provides facts rebutting the presumption of operability.
+ *In re Sasse,* 629 F.2d 675, 207 USPQ 107 (CCPA 1980). Therefore,
+ applicant must provide evidence showing that a process for making was not known at
+ the time of the invention. See the following subsection for the evidentiary standard
+ to be applied. 
+ 
+
+**II.** **A REFERENCE DOES NOT CONTAIN AN "ENABLING DISCLOSURE" IF ATTEMPTS AT MAKING
+ THE COMPOUND OR COMPOSITION WERE UNSUCCESSFUL BEFORE THE DATE OF INVENTION**When a prior art reference merely discloses the structure of the
+ claimed compound, evidence showing that attempts to prepare that compound were
+ unsuccessful before the date of invention will be adequate to show inoperability.
+ *In re Wiggins,* 488 F.2d 538, 179 USPQ 421 (CCPA 1973). However,
+ the fact that an author of a publication did not attempt to make the compound
+ disclosed, without more, will not overcome a rejection based on that publication.
+ *In re Donohue,* 766 F.2d 531, 226 USPQ 619 (Fed. Cir. 1985) (In
+ this case, the examiner had made a rejection under **[pre-AIA 35 U.S.C.
+ 102(b)](mpep-9015-appx-l.html#d0e302383)** over a publication, which disclosed the claimed
+ compound, in combination with two patents teaching a general process of making the
+ particular class of compounds. The applicant submitted an affidavit stating that the
+ authors of the publication had not actually synthesized the compound. The court held
+ that the fact that the publication’s author did not synthesize the disclosed compound
+ was immaterial to the question of reference operability. The patents were evidence
+ that synthesis methods were well known. The court distinguished
+ *Wiggins,* in which a very similar rejection was reversed. In
+ *Wiggins,* attempts to make the compounds using the prior art
+ methods were all unsuccessful.). Compare *In re Hoeksema,* 399 F.2d
+ 269, 158 USPQ 596 (CCPA 1968) (A claim to a compound was rejected over a patent to
+ *De Boer* which disclosed compounds similar in structure to those
+ claimed (obvious homologs) and a process of making these compounds. Applicant
+ responded with an affidavit by an expert named Wiley which stated that there was no
+ indication in the *De Boer* patent that the process disclosed in
+ *De Boer* could be used to produce the claimed compound and that
+ he did not believe that the process disclosed in *De Boer* could be
+ adapted to the production of the claimed compound. The court held that the facts
+ stated in this affidavit were legally sufficient to overcome the rejection and that
+ applicant need not show that all known processes are incapable of producing the
+ claimed compound for this showing would be practically impossible.). 
+ 
+
+
+
+
+# 2121.03 Plant Genetics — What Constitutes Enabling Prior
+ Art [R-10.2019]
+
+**THOSE OF ORDINARY SKILL MUST BE ABLE TO GROW AND CULTIVATE THE PLANT**When the claims are drawn to plants, the reference, combined with
+ knowledge in the prior art, must enable one of ordinary skill in the art to reproduce
+ the plant. *In re**LeGrice,* 301 F.2d 929, 133 USPQ 365 (CCPA 1962) (National Rose
+ Society Annual of England and various other catalogues showed color pictures of the
+ claimed roses and disclosed that applicant had raised the roses. The publications
+ were published more than 1 year before applicant's filing date. The court held that
+ the publications did not place the rose in the public domain. Information on the
+ grafting process required to reproduce the rose was not included in the publications
+ and such information was necessary for those of ordinary skill in the art (plant
+ breeders) to reproduce the rose.). Compare *Ex parte**Thomson,* 24 USPQ2d 1618 (Bd. Pat. App. & Inter. 1992) (Seeds
+ were commercially available more than 1 year prior to applicant’s filing date. One of
+ ordinary skill in the art could grow the claimed cotton cultivar from the
+ commercially available seeds. Thus, the publications describing the cotton cultivar
+ had "enabled disclosures." The Board distinguished *In re LeGrice*
+ by finding that the catalogue picture of the rose of *In re LeGrice*
+ was the only evidence in that case. There was no evidence of commercial availability
+ in enabling form since the asexually reproduced rose could not be reproduced from
+ seed. Therefore, the public would not have possession of the rose by its picture
+ alone, but the public would have possession of the cotton cultivar based on the
+ publications and the availability of the seeds.). In *In re Elsner,*
+ 381 F.3d 1125, 1126, 72 USPQ2d 1038, 1040 (Fed. Cir. 2004), prior to the critical
+ date of a plant patent application, the plant had been sold in Germany and a foreign
+ Plant Breeder’s Rights (PBR) application for the same plant had been published in the
+ Community Plant Variety Office *Official Gazette*. The court held
+ that when (i) a publication identifies claimed the plant, (ii) a foreign sale occurs
+ that puts one of ordinary skill in the art in possession of the plant itself, and
+ (iii) such possession permits asexual reproduction of the plant without undue
+ experimentation to one of ordinary skill in the art, then that combination of facts
+ and events directly conveys the essential knowledge of the invention and constitutes
+ a **[pre-AIA 35 U.S.C.
+ 102(b)](mpep-9015-appx-l.html#d0e302395)** statutory bar.*Id.* at 1129, 72 USPQ2d
+ at 1041. Although the court agreed with the Board that foreign sales may enable an
+ otherwise non-enabling printed publication, the case was remanded for additional
+ fact-finding in order to determine if the foreign sales of the plant were known to be
+ accessible to the skilled artisan and if the skilled artisan could have reproduced
+ the plant asexually after obtaining it without undue experimentation.
+ *Id.* at 1131, 72 USPQ2d at 1043. See **[MPEP §
+ 2152.02(d)](s2152.html#ch2100_d20033_2254b_3e0)** for information on foreign sales being prior art
+ for applications subject to the first inventor to file provisions of the AIA. 
+ 
+
+
+
+
+# 2121.04 Apparatus and Articles — What Constitutes Enabling Prior
+ Art [R-10.2019]
+
+**PICTURES MAY CONSTITUTE AN "ENABLING DISCLOSURE"**Pictures and drawings may be sufficiently enabling to put the public
+ in the possession of the article pictured. Therefore, such an enabling picture may
+ be used to reject claims to the article. However, the picture must show all the
+ claimed structural features and how they are put together. *In re
+ Bager,* 47 F.2d 951, 953, 8 USPQ 484, 486 (CCPA 1931) ("Description for
+ the purposes of anticipation can be by drawings alone as well as by words.") (citing
+ *Jockmus v. Leviton,* 28 F.2d 812 (2d Cir. 1928)). See also
+ **[MPEP §
+ 2125](s2125.html#d0e202147)** for a discussion of drawings as prior art. 
+ 
+
+
+
+[[top]](#top)
+
+
+, 
+# 2121.01 Use of Prior Art in Rejections Where Operability is in
+ Question [R-10.2019]
+
+
+"In determining that quantum of prior art disclosure which is necessary
+ to declare an applicant’s invention ‘not novel’ or ‘anticipated’ within
+ **[section
+ 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**, the stated test is whether a reference contains an ‘enabling
+ disclosure’... ." *In re**Hoeksema,* 399 F.2d 269, 158 USPQ 596 (CCPA 1968). The disclosure in
+ an assertedly anticipating reference must provide an enabling disclosure of the desired
+ subject matter; mere naming or description of the subject matter is insufficient, if it
+ cannot be produced without undue experimentation. *Elan Pharm., Inc. v. Mayo
+ Found. For Med. Educ. & Research,* 346 F.3d 1051, 1054, 68 USPQ2d 1373,
+ 1376 (Fed. Cir. 2003) (At issue was whether a prior art reference enabled one of
+ ordinary skill in the art to produce Elan’s claimed transgenic mouse without undue
+ experimentation. Without a disclosure enabling one skilled in the art to produce a
+ transgenic mouse without undue experimentation, the reference would not be applicable as
+ prior art.). A reference contains an "enabling disclosure" if the public was in
+ possession of the claimed invention before the effective filing date of the claimed
+ invention for applications or patents subject to the first inventor to file provisions
+ of the AIA or the time the invention was made for applications or patents subject to
+ pre-AIA law. "Such possession is effected if one of ordinary skill in the art could have
+ combined the publication’s description of the invention with his [or her] own knowledge
+ to make the claimed invention." *In re Donohue,* 766 F.2d 531, 226 USPQ
+ 619 (Fed. Cir. 1985).
+ 
+
+**I.** **35 U.S.C. 102 REJECTIONS AND ADDITION OF EVIDENCE SHOWING REFERENCE IS
+ OPERABLE**It is possible to make a **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** rejection even if
+ the reference does not itself teach one of ordinary skill how to practice the
+ invention, i.e., how to make the article disclosed or use the method disclosed. If
+ the reference teaches every claimed element of the article or every claimed step of
+ the method, secondary evidence, such as other patents or publications, can be cited
+ to show public possession of the method of making the article or using the method.
+ *In re Donohue,* 766 F.2d at 533, 226 USPQ at 621. See
+ **[MPEP §
+ 2131.01](s2131.html#d0e203057)** for more information on **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**
+ rejections using secondary references to show that the primary reference contains an
+ "enabling disclosure." 
+ 
+
+**II.** **35 U.S.C. 103 REJECTIONS AND USE OF INOPERATIVE PRIOR ART**"Even if a reference discloses an inoperative device, it is prior
+ art for all that it teaches." *Beckman Instruments**v.**LKB Produkter AB,* 892 F.2d 1547, 1551, 13 USPQ2d 1301, 1304 (Fed.
+ Cir. 1989). Therefore, "a non-enabling reference may qualify as prior art for the
+ purpose of determining obviousness under **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)**." *Symbol
+ Techs. Inc. v. Opticon Inc.,* 935 F.2d 1569, 1578, 19 USPQ2d 1241, 1247
+ (Fed. Cir. 1991).
+ 
+
+
+, 
+# 2121.02 Compounds and Compositions — What Constitutes Enabling Prior
+ Art [R-08.2017]
+
+
+*[Editor Note: This MPEP section is **applicable** to applications
+ subject to the first inventor to file (FITF) provisions of the AIA except that the
+ relevant date is the "effective filing date" of the claimed invention instead of the
+ "time of the invention" or "date of invention," which are only applicable to
+ applications subject to **[pre-AIA 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**. See
+ **[35
+ U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)** and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq.]*
+
+**I.** **ONE OF ORDINARY SKILL IN THE ART MUST BE ABLE TO MAKE OR SYNTHESIZE**Where a process for making the compound is not developed until after
+ the date of invention, the mere naming of a compound in a reference, without more,
+ cannot constitute a description of the compound. *In re Hoeksema,*
+ 399 F.2d 269, 158 USPQ 596 (CCPA 1968). Note, however, that a reference is presumed
+ operable until applicant provides facts rebutting the presumption of operability.
+ *In re Sasse,* 629 F.2d 675, 207 USPQ 107 (CCPA 1980). Therefore,
+ applicant must provide evidence showing that a process for making was not known at
+ the time of the invention. See the following subsection for the evidentiary standard
+ to be applied. 
+ 
+
+**II.** **A REFERENCE DOES NOT CONTAIN AN "ENABLING DISCLOSURE" IF ATTEMPTS AT MAKING
+ THE COMPOUND OR COMPOSITION WERE UNSUCCESSFUL BEFORE THE DATE OF INVENTION**When a prior art reference merely discloses the structure of the
+ claimed compound, evidence showing that attempts to prepare that compound were
+ unsuccessful before the date of invention will be adequate to show inoperability.
+ *In re Wiggins,* 488 F.2d 538, 179 USPQ 421 (CCPA 1973). However,
+ the fact that an author of a publication did not attempt to make the compound
+ disclosed, without more, will not overcome a rejection based on that publication.
+ *In re Donohue,* 766 F.2d 531, 226 USPQ 619 (Fed. Cir. 1985) (In
+ this case, the examiner had made a rejection under **[pre-AIA 35 U.S.C.
+ 102(b)](mpep-9015-appx-l.html#d0e302383)** over a publication, which disclosed the claimed
+ compound, in combination with two patents teaching a general process of making the
+ particular class of compounds. The applicant submitted an affidavit stating that the
+ authors of the publication had not actually synthesized the compound. The court held
+ that the fact that the publication’s author did not synthesize the disclosed compound
+ was immaterial to the question of reference operability. The patents were evidence
+ that synthesis methods were well known. The court distinguished
+ *Wiggins,* in which a very similar rejection was reversed. In
+ *Wiggins,* attempts to make the compounds using the prior art
+ methods were all unsuccessful.). Compare *In re Hoeksema,* 399 F.2d
+ 269, 158 USPQ 596 (CCPA 1968) (A claim to a compound was rejected over a patent to
+ *De Boer* which disclosed compounds similar in structure to those
+ claimed (obvious homologs) and a process of making these compounds. Applicant
+ responded with an affidavit by an expert named Wiley which stated that there was no
+ indication in the *De Boer* patent that the process disclosed in
+ *De Boer* could be used to produce the claimed compound and that
+ he did not believe that the process disclosed in *De Boer* could be
+ adapted to the production of the claimed compound. The court held that the facts
+ stated in this affidavit were legally sufficient to overcome the rejection and that
+ applicant need not show that all known processes are incapable of producing the
+ claimed compound for this showing would be practically impossible.). 
+ 
+
+
+, 
+# 2121.03 Plant Genetics — What Constitutes Enabling Prior
+ Art [R-10.2019]
+
+**THOSE OF ORDINARY SKILL MUST BE ABLE TO GROW AND CULTIVATE THE PLANT**When the claims are drawn to plants, the reference, combined with
+ knowledge in the prior art, must enable one of ordinary skill in the art to reproduce
+ the plant. *In re**LeGrice,* 301 F.2d 929, 133 USPQ 365 (CCPA 1962) (National Rose
+ Society Annual of England and various other catalogues showed color pictures of the
+ claimed roses and disclosed that applicant had raised the roses. The publications
+ were published more than 1 year before applicant's filing date. The court held that
+ the publications did not place the rose in the public domain. Information on the
+ grafting process required to reproduce the rose was not included in the publications
+ and such information was necessary for those of ordinary skill in the art (plant
+ breeders) to reproduce the rose.). Compare *Ex parte**Thomson,* 24 USPQ2d 1618 (Bd. Pat. App. & Inter. 1992) (Seeds
+ were commercially available more than 1 year prior to applicant’s filing date. One of
+ ordinary skill in the art could grow the claimed cotton cultivar from the
+ commercially available seeds. Thus, the publications describing the cotton cultivar
+ had "enabled disclosures." The Board distinguished *In re LeGrice*
+ by finding that the catalogue picture of the rose of *In re LeGrice*
+ was the only evidence in that case. There was no evidence of commercial availability
+ in enabling form since the asexually reproduced rose could not be reproduced from
+ seed. Therefore, the public would not have possession of the rose by its picture
+ alone, but the public would have possession of the cotton cultivar based on the
+ publications and the availability of the seeds.). In *In re Elsner,*
+ 381 F.3d 1125, 1126, 72 USPQ2d 1038, 1040 (Fed. Cir. 2004), prior to the critical
+ date of a plant patent application, the plant had been sold in Germany and a foreign
+ Plant Breeder’s Rights (PBR) application for the same plant had been published in the
+ Community Plant Variety Office *Official Gazette*. The court held
+ that when (i) a publication identifies claimed the plant, (ii) a foreign sale occurs
+ that puts one of ordinary skill in the art in possession of the plant itself, and
+ (iii) such possession permits asexual reproduction of the plant without undue
+ experimentation to one of ordinary skill in the art, then that combination of facts
+ and events directly conveys the essential knowledge of the invention and constitutes
+ a **[pre-AIA 35 U.S.C.
+ 102(b)](mpep-9015-appx-l.html#d0e302395)** statutory bar.*Id.* at 1129, 72 USPQ2d
+ at 1041. Although the court agreed with the Board that foreign sales may enable an
+ otherwise non-enabling printed publication, the case was remanded for additional
+ fact-finding in order to determine if the foreign sales of the plant were known to be
+ accessible to the skilled artisan and if the skilled artisan could have reproduced
+ the plant asexually after obtaining it without undue experimentation.
+ *Id.* at 1131, 72 USPQ2d at 1043. See **[MPEP §
+ 2152.02(d)](s2152.html#ch2100_d20033_2254b_3e0)** for information on foreign sales being prior art
+ for applications subject to the first inventor to file provisions of the AIA. 
+ 
+
+
+, 
+# 2121.04 Apparatus and Articles — What Constitutes Enabling Prior
+ Art [R-10.2019]
+
+**PICTURES MAY CONSTITUTE AN "ENABLING DISCLOSURE"**Pictures and drawings may be sufficiently enabling to put the public
+ in the possession of the article pictured. Therefore, such an enabling picture may
+ be used to reject claims to the article. However, the picture must show all the
+ claimed structural features and how they are put together. *In re
+ Bager,* 47 F.2d 951, 953, 8 USPQ 484, 486 (CCPA 1931) ("Description for
+ the purposes of anticipation can be by drawings alone as well as by words.") (citing
+ *Jockmus v. Leviton,* 28 F.2d 812 (2d Cir. 1928)). See also
+ **[MPEP §
+ 2125](s2125.html#d0e202147)** for a discussion of drawings as prior art. 
+ 
+
+
+]

data/2100/s2122.html.txt

@@ -0,0 +1,23 @@
+[
+# 2122 Discussion of Utility in the Prior Art [R-08.2017]
+
+**UTILITY NEED NOT BE DISCLOSED IN REFERENCE**In order to constitute anticipatory prior art, a reference must
+ identically disclose the claimed compound, but no utility need be disclosed by the
+ reference. *In re**Schoenwald,* 964 F.2d 1122, 1124, 22 USPQ2d 1671, 1673 (Fed. Cir.
+ 1992) (The application claimed compounds used in ophthalmic compositions to treat dry
+ eye syndrome. The examiner found a printed publication which disclosed the claimed
+ compound but did not disclose a use for the compound. The court found that the claim was
+ anticipated since the compound and a process of making it was taught by the reference.
+ The court explained that "no utility need be disclosed for a reference to be
+ anticipatory of a claim to an old compound." It is enough that the claimed compound is
+ taught by the reference.). See also *Impax Labs. Inc. v. Aventis Pharm.
+ Inc.,* 468 F.3d 1366, 1383, 81 USPQ2d 1001, 1013 (Fed. Cir. 2006) ("[P]roof
+ of efficacy is not required for a prior art reference to be enabling for purposes of
+ anticipation.").
+ 
+
+
+[[top]](#top)
+
+
+]

data/2100/s2123.html.txt

@@ -0,0 +1,60 @@
+[
+# 2123 Rejection Over Prior Art’s Broad Disclosure Instead of Preferred
+ Embodiments [R-08.2012]
+
+**I.** **PATENTS ARE RELEVANT AS PRIOR ART FOR ALL THEY CONTAIN**"The use of patents as references is not limited to what the patentees
+ describe as their own inventions or to the problems with which they are concerned. They
+ are part of the literature of the art, relevant for all they contain." *In re
+ Heck,* 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting
+  *In re Lemelson,* 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA
+ 1968)). 
+ 
+
+
+A reference may be relied upon for all that it would have reasonably
+ suggested to one having ordinary skill the art, including nonpreferred embodiments.
+ *Merck & Co. v.**Biocraft Laboratories,* 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.),
+ *cert. denied,* 493 U.S. 975 (1989). See also *Upsher-Smith
+ Labs. v. Pamlab, LLC,* 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir.
+ 2005) (reference disclosing optional inclusion of a particular component teaches
+ compositions that both do and do not contain that component); *Celeritas
+ Technologies Ltd. v. Rockwell International Corp.,* 150 F.3d 1354, 1361, 47
+ USPQ2d 1516, 1522-23 (Fed. Cir. 1998) (The court held that the prior art anticipated the
+ claims even though it taught away from the claimed invention. "The fact that a modem
+ with a single carrier data signal is shown to be less than optimal does not vitiate the
+ fact that it is disclosed.").
+ 
+
+
+See also **[MPEP § 2131.05](s2131.html#d0e203351)** and **[§ 2145](s2145.html#d0e212553)**, subsection X.D., which discuss
+ prior art that teaches away from the claimed invention in the context of anticipation
+ and obviousness, respectively.
+ 
+
+**II.** **NONPREFERRED AND ALTERNATIVE EMBODIMENTS CONSTITUTE PRIOR ART**Disclosed examples and preferred embodiments do not constitute a
+ teaching away from a broader disclosure or nonpreferred embodiments. *In re
+ Susi,* 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious
+ composition does not become patentable simply because it has been described as somewhat
+ inferior to some other product for the same use." *In re Gurley,* 27
+ F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994) (The invention was directed to an
+ epoxy impregnated fiber-reinforced printed circuit material. The applied prior art
+ reference taught a printed circuit material similar to that of the claims but
+ impregnated with polyester-imide resin instead of epoxy. The reference, however,
+ disclosed that epoxy was known for this use, but that epoxy impregnated circuit boards
+ have "relatively acceptable dimensional stability" and "some degree of flexibility," but
+ are inferior to circuit boards impregnated with polyester-imide resins. The court upheld
+ the rejection concluding that applicant’s argument that the reference teaches away from
+ using epoxy was insufficient to overcome the rejection since "Gurley asserted no
+ discovery beyond what was known in the art." *Id.* at 554, 31 USPQ2d at
+ 1132.). Furthermore, "[t]he prior art’s mere disclosure of more than one alternative
+ does not constitute a teaching away from any of these alternatives because such
+ disclosure does not criticize, discredit, or otherwise discourage the solution
+ claimed…." *In re Fulton,* 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146
+ (Fed. Cir. 2004).
+ 
+
+
+[[top]](#top)
+
+
+]

data/2100/s2124.html.txt

@@ -0,0 +1,340 @@
+[
+# 2124 Exception to the Rule That the Reference Must be Prior
+ Art [R-10.2019]
+
+**IN SOME CIRCUMSTANCES A FACTUAL REFERENCE NEED NOT ANTEDATE THE FILING DATE**In certain circumstances, references cited to show a universal fact
+ need not be available as prior art before applicant’s filing date. *In re
+ Wilson,* 311 F.2d 266, 135 USPQ 442 (CCPA 1962). Such facts include the
+ characteristics and properties of a material or a scientific truism. Some specific
+ examples in which later publications showing factual evidence can be cited include
+ situations where the facts shown in the reference are evidence "that, as of
+ an application’s filing date, undue experimentation would have been
+ required, *In re Corneil,* 347 F.2d 563, 568, 145 USPQ 702, 705 (CCPA
+ 1965), or that a parameter absent from the claims was or was not critical, *In
+ re Rainer,* 305 F.2d 505, 507 n.3, 134 USPQ 343, 345 n.3 (CCPA 1962), or
+ that a statement in the specification was inaccurate, *In re**Marzocchi,* 439 F.2d 220, 223 n.4, 169 USPQ 367, 370 n.4 (CCPA 1971),
+ or that the invention was inoperative or lacked utility, *In re
+ Langer,* 503 F.2d 1380, 1391, 183 USPQ 288, 297 (CCPA 1974), or that a claim
+ was indefinite, *In re Glass,* 492 F.2d 1228,1232 n.6, 181 USPQ 31, 34
+ n.6 (CCPA 1974), or that characteristics of prior art products were known, *In
+ re Wilson,* 311 F.2d 266, 135 USPQ 442 (CCPA 1962)." *In re
+ Koller,* 613 F.2d 819, 824 n.5, 204 USPQ 702, 706 n.5 (CCPA 1980) (quoting
+ *In re Hogan,* 559 F.2d 595, 605 n.17, 194 USPQ 527, 537 n.17 (CCPA
+ 1977) (emphasis in original)). See also *Amgen Inc. v. Sanofi,* 872
+ F.3d 1367, 1375, 124 USPQ2d 1354, 1359 (Fed. Cir. 2017)(post-effective-filing-date
+ evidence could be relied upon to show that patent failed to disclose a representative
+ number of species of a claimed genus, and to show that patentees may have engaged in
+ undue experimentation as of the effective filing date to enable the full scope of the
+ claims). However, it is impermissible to use a later factual reference showing the state
+ of the art existing after the effective filing date of the application to determine
+ whether the application is enabled or described as required under **[35 U.S.C.
+ 112(a)](mpep-9015-appx-l.html#al_d1d85b_2ae60_3d5)** or **[pre-AIA 35 U.S.C. 112](mpep-9015-appx-l.html#d0e302824)**, first
+ paragraph. *In re Koller,* 613 F.2d 819, 823 n. 5, 204 USPQ 702, 706
+ n.5 (CCPA 1980). Post-effective-filing-date evidence offered to illuminate the
+ post-effective-filing-date state of the art is improper. *Amgen,* 872
+ F.3d at 1374, 124 USPQ2d at 1359. References which do not qualify as prior art because
+ they postdate the claimed invention may be relied upon to show the level of ordinary
+ skill in the art at or around the time the invention was made. *Ex parte
+ Erlich,* 22 USPQ 1463 (Bd. Pat. App. & Inter. 1992).
+ 
+
+
+
+# 2124.01 Tax Strategies Deemed Within the Prior
+ Art [R-10.2019]
+
+
+*[Editor Note: This MPEP section is **applicable** to applications
+ subject to the first inventor to file (FITF) provisions of the AIA except that the
+ relevant date is the "effective filing date" of the claimed invention instead of the
+ "time of the invention," which is only applicable to applications subject to
+ **[pre-AIA 35
+ U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**. See **[35 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)** and
+ **[MPEP
+ § 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq.]*
+
+**I.** **OVERVIEW****[The
+ Leahy-Smith America Invents Act (AIA), Public Law 112-29, sec.
+ 14](mpep-9015-appx-l.html#aiasec14taxstrategy)**, 125 Stat. 284 (September 16, 2011) provides that for
+ purposes of evaluating an invention for novelty and nonobviousness under
+ **[35 U.S.C.
+ 102](mpep-9015-appx-l.html#d0e302383)** and **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)**, any strategy for
+ reducing, avoiding, or deferring tax liability (hereinafter "tax strategy"), whether
+ known or unknown at the time of the invention or application for patent, shall be
+ deemed insufficient to differentiate a claimed invention from the prior art. As a
+ result, applicants will no longer be able to rely on the novelty or non-obviousness
+ of a tax strategy embodied in their claims to distinguish them from the prior art.
+ Any tax strategy will be considered indistinguishable from all other publicly
+ available information that is relevant to a patent’s claim of originality. This
+ provision aims to keep the ability to interpret the tax law and to implement such
+ interpretation in the public domain, available to all taxpayers and their
+ advisors.
+ 
+
+
+The term "tax liability" is defined for purposes of this
+ provision as referring to any liability for a tax under any federal, state, or local
+ law, or the law of any foreign jurisdiction, including any statute, rule, regulation,
+ or ordinance that levies, imposes, or assesses such tax liability.
+ 
+
+
+There are two exclusions to this provision. The first
+ is that the provision does not apply to that part of an invention that is a method,
+ apparatus, technology, computer program product, or system, that is used solely for
+ preparing a tax or information return or other tax filing, including one that
+ records, transmits, transfers, or organizes data related to such filing.
+ 
+
+
+The second is that the provision does not apply to
+ that part of an invention that is a method, apparatus, technology, computer program
+ product, or system, that is used solely for financial management, to the extent that
+ it is severable from any tax strategy or does not limit the use of any tax strategy
+ by any taxpayer or tax advisor.
+ 
+
+
+This provision took effect on September 16, 2011, and
+ applies to any patent application that is pending on, or filed on or after, September
+ 16, 2011, and to any patent issued on or after September 16, 2011. Accordingly, this
+ provision will apply in a reexamination or other post-grant proceeding only to
+ patents issued on or after September 16, 2011.
+ 
+
+**II.** **EXAMINATION GUIDANCE FOR CLAIMS RELATING TO TAX STRATEGIES**The following procedure should be followed when
+ examining claims relating to tax strategies.
+ 
+
+
+* 1. Construe the claim in accordance with
+ **[MPEP §
+ 2111](s2111.html#d0e200352)***et seq.*
+* 2. Analyze the claim for compliance with
+ **[35 U.S.C.
+ 101](mpep-9015-appx-l.html#d0e302376)** and **[112](mpep-9015-appx-l.html#d0e302824)** in accordance with
+ current guidance, which is unaffected by this provision.
+* 3. Identify any limitations relating to a tax
+ strategy, as defined above (note the listed exclusions).
+	+ a. Inventions that fall within the scope of
+	 **[AIA section 14](mpep-9015-appx-l.html#aiasec14taxstrategy)**
+	 include those tax strategies especially suitable for use with tax-favored
+	 structures that must meet certain requirements, such as employee benefit
+	 plans, tax-exempt organizations, or other entities that must be
+	 structured or operated in a particular manner to obtain certain tax
+	 consequences.
+	+ b. Thus, **[AIA section
+	 14](mpep-9015-appx-l.html#aiasec14taxstrategy)** applies if the effect of an invention is to aid
+	 in satisfying the qualification requirements for a desired tax-favored
+	 entity status, to take advantage of the specific tax benefits offered in
+	 a tax-favored structure, or to allow for tax reduction, avoidance, or
+	 deferral not otherwise automatically available in such entity or
+	 structure.
+* 4. Evaluate the claim in view of the prior art
+ under **[35
+ U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** and **[103](mpep-9015-appx-l.html#d0e302450)**, treating any
+ limitations relating to a tax strategy as being within the prior art, and not
+ as a patentable difference between the claim and the prior art. This approach
+ is analogous to the treatment of printed matter limitations in a claim as
+ discussed at **[MPEP § 2112.01](s2112.html#d0e201273)**, subsection III.
+
+
+Form paragraph **[7.06.01](#fp7.06.01)** may be used to indicate
+ claim limitation(s) interpreted as a tax strategy. 
+ 
+
+
+# ¶ 7.06.01 Claim Limitation Relating to a Tax Strategy Deemed To Be
+ Within the Prior Art under 35 U.S.C. 102 and/or 103
+
+
+Claim limitation "**[1]**" has been interpreted
+ as a strategy for reducing, avoiding, or deferring tax liability ("tax strategy") pursuant to
+ Section 14 of the Leahy-Smith America Invents Act. Accordingly, this claim limitation is being
+ treated as being within the prior art and is insufficient to differentiate the invention of
+ claim **[2]** from the prior art.
+ 
+
+
+### Examiner Note:
+
+ * 1. In bracket 1, recite the claim limitation that
+ relates to a tax strategy. For more information see **[MPEP §
+ 2124.01](s2124.html#ch2100_d1b13f_20224_b9)**.
+* 2. In bracket 2, insert claim number(s), pluralize
+ "claim" as appropriate.
+
+
+**III.** **EXAMPLES DIRECTED TO COMPUTER-IMPLEMENTED METHODS**A computer-implemented method that is deemed novel and
+ non-obvious would not be affected by this provision even if used for a tax purpose.
+ For example, a novel and non-obvious computer-implemented method for manipulating
+ data would not be affected by this provision even if the method organized data for a
+ future tax filing. However, a prior art computer-implemented method would not become
+ non-obvious by implementing a novel and non-obvious tax strategy. That is, the
+ presence of limitations relating to the tax strategy would not cause a claim that is
+ otherwise within the prior art to become novel or non-obvious over the prior art. 
+ 
+
+
+Thus, for purposes of applying art to a
+ software-related invention under **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** and
+ **[35
+ U.S.C. 103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)**, claim limitations that are directed solely to
+ enabling individuals to file their income tax returns or assisting them with managing
+ their finances should be given patentable weight, except that claim limitations
+ directed to a tax strategy should not be given patentable weight. 
+ 
+
+
+
+[[top]](#top)
+
+
+, 
+# 2124.01 Tax Strategies Deemed Within the Prior
+ Art [R-10.2019]
+
+
+*[Editor Note: This MPEP section is **applicable** to applications
+ subject to the first inventor to file (FITF) provisions of the AIA except that the
+ relevant date is the "effective filing date" of the claimed invention instead of the
+ "time of the invention," which is only applicable to applications subject to
+ **[pre-AIA 35
+ U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**. See **[35 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)** and
+ **[MPEP
+ § 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq.]*
+
+**I.** **OVERVIEW****[The
+ Leahy-Smith America Invents Act (AIA), Public Law 112-29, sec.
+ 14](mpep-9015-appx-l.html#aiasec14taxstrategy)**, 125 Stat. 284 (September 16, 2011) provides that for
+ purposes of evaluating an invention for novelty and nonobviousness under
+ **[35 U.S.C.
+ 102](mpep-9015-appx-l.html#d0e302383)** and **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)**, any strategy for
+ reducing, avoiding, or deferring tax liability (hereinafter "tax strategy"), whether
+ known or unknown at the time of the invention or application for patent, shall be
+ deemed insufficient to differentiate a claimed invention from the prior art. As a
+ result, applicants will no longer be able to rely on the novelty or non-obviousness
+ of a tax strategy embodied in their claims to distinguish them from the prior art.
+ Any tax strategy will be considered indistinguishable from all other publicly
+ available information that is relevant to a patent’s claim of originality. This
+ provision aims to keep the ability to interpret the tax law and to implement such
+ interpretation in the public domain, available to all taxpayers and their
+ advisors.
+ 
+
+
+The term "tax liability" is defined for purposes of this
+ provision as referring to any liability for a tax under any federal, state, or local
+ law, or the law of any foreign jurisdiction, including any statute, rule, regulation,
+ or ordinance that levies, imposes, or assesses such tax liability.
+ 
+
+
+There are two exclusions to this provision. The first
+ is that the provision does not apply to that part of an invention that is a method,
+ apparatus, technology, computer program product, or system, that is used solely for
+ preparing a tax or information return or other tax filing, including one that
+ records, transmits, transfers, or organizes data related to such filing.
+ 
+
+
+The second is that the provision does not apply to
+ that part of an invention that is a method, apparatus, technology, computer program
+ product, or system, that is used solely for financial management, to the extent that
+ it is severable from any tax strategy or does not limit the use of any tax strategy
+ by any taxpayer or tax advisor.
+ 
+
+
+This provision took effect on September 16, 2011, and
+ applies to any patent application that is pending on, or filed on or after, September
+ 16, 2011, and to any patent issued on or after September 16, 2011. Accordingly, this
+ provision will apply in a reexamination or other post-grant proceeding only to
+ patents issued on or after September 16, 2011.
+ 
+
+**II.** **EXAMINATION GUIDANCE FOR CLAIMS RELATING TO TAX STRATEGIES**The following procedure should be followed when
+ examining claims relating to tax strategies.
+ 
+
+
+* 1. Construe the claim in accordance with
+ **[MPEP §
+ 2111](s2111.html#d0e200352)***et seq.*
+* 2. Analyze the claim for compliance with
+ **[35 U.S.C.
+ 101](mpep-9015-appx-l.html#d0e302376)** and **[112](mpep-9015-appx-l.html#d0e302824)** in accordance with
+ current guidance, which is unaffected by this provision.
+* 3. Identify any limitations relating to a tax
+ strategy, as defined above (note the listed exclusions).
+	+ a. Inventions that fall within the scope of
+	 **[AIA section 14](mpep-9015-appx-l.html#aiasec14taxstrategy)**
+	 include those tax strategies especially suitable for use with tax-favored
+	 structures that must meet certain requirements, such as employee benefit
+	 plans, tax-exempt organizations, or other entities that must be
+	 structured or operated in a particular manner to obtain certain tax
+	 consequences.
+	+ b. Thus, **[AIA section
+	 14](mpep-9015-appx-l.html#aiasec14taxstrategy)** applies if the effect of an invention is to aid
+	 in satisfying the qualification requirements for a desired tax-favored
+	 entity status, to take advantage of the specific tax benefits offered in
+	 a tax-favored structure, or to allow for tax reduction, avoidance, or
+	 deferral not otherwise automatically available in such entity or
+	 structure.
+* 4. Evaluate the claim in view of the prior art
+ under **[35
+ U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** and **[103](mpep-9015-appx-l.html#d0e302450)**, treating any
+ limitations relating to a tax strategy as being within the prior art, and not
+ as a patentable difference between the claim and the prior art. This approach
+ is analogous to the treatment of printed matter limitations in a claim as
+ discussed at **[MPEP § 2112.01](s2112.html#d0e201273)**, subsection III.
+
+
+Form paragraph **[7.06.01](#fp7.06.01)** may be used to indicate
+ claim limitation(s) interpreted as a tax strategy. 
+ 
+
+
+# ¶ 7.06.01 Claim Limitation Relating to a Tax Strategy Deemed To Be
+ Within the Prior Art under 35 U.S.C. 102 and/or 103
+
+
+Claim limitation "**[1]**" has been interpreted
+ as a strategy for reducing, avoiding, or deferring tax liability ("tax strategy") pursuant to
+ Section 14 of the Leahy-Smith America Invents Act. Accordingly, this claim limitation is being
+ treated as being within the prior art and is insufficient to differentiate the invention of
+ claim **[2]** from the prior art.
+ 
+
+
+### Examiner Note:
+
+ * 1. In bracket 1, recite the claim limitation that
+ relates to a tax strategy. For more information see **[MPEP §
+ 2124.01](s2124.html#ch2100_d1b13f_20224_b9)**.
+* 2. In bracket 2, insert claim number(s), pluralize
+ "claim" as appropriate.
+
+
+**III.** **EXAMPLES DIRECTED TO COMPUTER-IMPLEMENTED METHODS**A computer-implemented method that is deemed novel and
+ non-obvious would not be affected by this provision even if used for a tax purpose.
+ For example, a novel and non-obvious computer-implemented method for manipulating
+ data would not be affected by this provision even if the method organized data for a
+ future tax filing. However, a prior art computer-implemented method would not become
+ non-obvious by implementing a novel and non-obvious tax strategy. That is, the
+ presence of limitations relating to the tax strategy would not cause a claim that is
+ otherwise within the prior art to become novel or non-obvious over the prior art. 
+ 
+
+
+Thus, for purposes of applying art to a
+ software-related invention under **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** and
+ **[35
+ U.S.C. 103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)**, claim limitations that are directed solely to
+ enabling individuals to file their income tax returns or assisting them with managing
+ their finances should be given patentable weight, except that claim limitations
+ directed to a tax strategy should not be given patentable weight. 
+ 
+
+
+]

data/2100/s2125.html.txt

@@ -0,0 +1,45 @@
+[
+# 2125 Drawings as Prior Art [R-10.2019]
+
+**I.** **DRAWINGS CAN BE USED AS PRIOR ART**Drawings and pictures can anticipate claims if they clearly show the
+ structure which is claimed. *In re Mraz,* 455 F.2d 1069, 173 USPQ 25
+ (CCPA 1972). However, the picture must show all the claimed structural features and how
+ they are put together. *Jockmus v. Leviton,* 28 F.2d 812 (2d Cir.
+ 1928). The origin of the drawing is immaterial. For instance, drawings in a design
+ patent can anticipate or make obvious the claimed invention as can drawings in utility
+ patents. When the reference is a utility patent, it does not matter that the feature
+ shown is unintended or unexplained in the specification. The drawings must be evaluated
+ for what they reasonably disclose and suggest to one of ordinary skill in the art.
+ *In re Aslanian,* 590 F.2d 911, 200 USPQ 500 (CCPA 1979). See
+ **[MPEP §
+ 2121.04](s2121.html#d0e201980)** for more information on prior art drawings as "enabled
+ disclosures."
+ 
+
+**II.** **PROPORTIONS OF FEATURES IN A DRAWING ARE NOT EVIDENCE OF ACTUAL PROPORTIONS WHEN
+ DRAWINGS ARE NOT TO SCALE**When the reference does not disclose that the drawings are to scale and
+ is silent as to dimensions, arguments based on measurement of the drawing features are
+ of little value. See *Hockerson-Halberstadt, Inc. v. Avia Group Int’l,*
+ 222 F.3d 951, 956, 55 USPQ2d 1487, 1491 (Fed. Cir. 2000) (The disclosure gave no
+ indication that the drawings were drawn to scale. "[I]t is well established that patent
+ drawings do not define the precise proportions of the elements and may not be relied on
+ to show particular sizes if the specification is completely silent on the issue.").
+ However, the description of the article pictured can be relied on, in combination with
+ the drawings, for what they would reasonably teach one of ordinary skill in the art.
+ *In re Wright,* 569 F.2d 1124, 1127-28, 193 USPQ 332, 335-36 (CCPA
+ 1977) ("We disagree with the Solicitor’s conclusion, reached by a comparison of the
+ relative dimensions of appellant’s and Bauer’s [the reference's] drawing figures, that
+ Bauer ‘clearly points to the use of a chime length of roughly 1/2 to 1 inch for a
+ whiskey barrel.’ This ignores the fact that Bauer does not disclose that his drawings
+ are to scale. ... However, we agree with the Solicitor that Bauer’s teaching that
+ whiskey losses are influenced by the distance the liquor needs to ‘traverse the pores of
+ the wood’ (albeit in reference to the thickness of the barrelhead)" would have suggested
+ the desirability of an increased chime length to one of ordinary skill in the art bent
+ on further reducing whiskey losses." 569 F.2d at 1127, 193 USPQ at 335-36.) 
+ 
+
+
+[[top]](#top)
+
+
+]

data/2100/s2126.html.txt

@@ -0,0 +1,197 @@
+[
+# 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) [R-08.2017]
+
+**I.** **THE NAME "PATENT" ALONE DOES NOT MAKE A DOCUMENT AVAILABLE AS A PRIOR ART PATENT
+ UNDER 35 U.S.C. 102(a) or Pre-AIA 35 U.S.C. 102(a) OR (b)**What a foreign country designates to be a patent may not be a patent
+ for purposes of rejection under **[35 U.S.C. 102(a)](mpep-9015-appx-l.html#al_d1d85b_11e72_2ee)** or
+ **[pre-AIA 35 U.S.C.
+ 102(a) and (b)](mpep-9015-appx-l.html#d0e302383)**; it is the substance of the rights conferred and
+ the way information within the "patent" is controlled that is determinative. *In
+ re Ekenstam,* 256 F.2d 321, 118 USPQ 349 (CCPA 1958). See the next
+ subsection for further explanation with respect to when a document can be applied in a
+ rejection as a "patent." See **[MPEP § 2135.01](s2135.html#d0e205339)** for a further discussion
+ of the use of "patents" in **[pre-AIA 35 U.S.C. 102(d)](mpep-9015-appx-l.html#d0e302383)**
+ rejections.
+ 
+
+**II.** **A SECRET PATENT IS NOT AVAILABLE AS A REFERENCE UNDER 35 U.S.C. 102(a) or Pre-AIA
+ 35 U.S.C. 102(a) or (b) UNTIL IT IS AVAILABLE TO THE PUBLIC BUT IT MAY BE AVAILABLE
+ UNDER Pre-AIA 35 U.S.C. 102(d) AS OF GRANT DATE** Secret patents are defined as patents which are insufficiently
+ accessible to the public to constitute "printed publications." Decisions on the issue of
+ what is sufficiently accessible to be a "printed publication" are located in
+ **[MPEP §
+ 2128](s2128.html#d0e202564)** - **[MPEP § 2128.01](s2128.html#d0e202706)**.
+ 
+
+
+Even if a patent grants an exclusionary right (is enforceable), it is
+ not available as prior art under **[35 U.S.C. 102(a)](mpep-9015-appx-l.html#al_d1d85b_11e72_2ee)** or
+ **[pre-AIA 35 U.S.C.
+ 102(a) or (b)](mpep-9015-appx-l.html#d0e302383)** if it is secret or private. *In re
+ Carlson,* 983 F.2d 1032, 1037, 25 USPQ2d 1207, 1211 (Fed. Cir. 1992). The
+ document must be at least minimally available to the public to constitute prior art. The
+ patent is sufficiently available to the public for the purposes of **[35 U.S.C.
+ 102(a)](mpep-9015-appx-l.html#al_d1d85b_11e72_2ee)** or **[pre-AIA 35 U.S.C. 102(a) or (b)](mpep-9015-appx-l.html#d0e302383)** if
+ it is laid open for public inspection or disseminated in printed form. See, e.g.,
+ *In re Carlson,* 983 F.2d at 1037, 25 USPQ2d at 1211 ("We recognize
+ that  *Geschmacksmuster* on display for public view in remote cities in
+ a far-away land may create a burden of discovery for one without the time, desire, or
+ resources to journey there in person or by agent to observe that which was registered
+ under German law. Such a burden, however, is by law imposed upon the hypothetical person
+ of ordinary skill in the art who is charged with knowledge of all contents of the
+ relevant prior art."). The date that the patent is made available to the public is the
+ date it is available as a **[35 U.S.C. 102(a)](mpep-9015-appx-l.html#al_d1d85b_11e72_2ee)** or
+ **[pre-AIA 35 U.S.C.
+ 102(a) or (b)](mpep-9015-appx-l.html#d0e302383)** reference. *In re Ekenstam,* 256
+ F.2d 321, 118 USPQ 349 (CCPA 1958). But a period of secrecy after granting the patent
+ has been held to have no effect in connection with **[pre-AIA 35 U.S.C. 102(d)](mpep-9015-appx-l.html#d0e302383)**. These
+ patents are usable in rejections under **[pre-AIA 35 U.S.C. 102(d)](mpep-9015-appx-l.html#d0e302383)** as of the
+ date patent rights are granted. *In re Kathawala,* 9 F.3d 942, 946, 28
+ USPQ2d 1785, 1788-89 (Fed. Cir. 1993). See **[MPEP § 2135](s2135.html#d0e205278)** - **[MPEP § 2135.01](s2135.html#d0e205339)** for
+ more information on **[pre-AIA 35 U.S.C. 102(d)](mpep-9015-appx-l.html#d0e302383)**. 
+ 
+
+
+
+# 2126.01 Date of Availability of a Patent as a Reference [R-11.2013]
+
+**DATE FOREIGN PATENT IS EFFECTIVE AS A REFERENCE IS
+ USUALLY THE DATE PATENT RIGHTS ARE FORMALLY AWARDED TO
+ ITS APPLICANT** The date the patent is available as a reference is generally the
+ date that the patent becomes enforceable. This date is the date the sovereign
+ formally bestows patents rights to the applicant. *In re Monks,* 588
+ F.2d 308, 200 USPQ 129 (CCPA 1978). There is an exception to this rule when the
+ patent is secret as of the date the rights are awarded. *In re
+ Ekenstam,* 256 F.2d 321, 118 USPQ 349 (CCPA 1958). 
+ 
+
+
+Note that **[MPEP § 901.05](s901.html#d0e110750)** summarizes in tabular
+ form dates of patenting for many foreign patents. For a list of cases that discuss
+ the date of patenting countries for purposes of **[pre-AIA 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** in
+ particular, see *Chisum,* Patents § 3.06[4] n.2.
+ 
+
+
+
+
+# 2126.02 Scope of Reference’s Disclosure Which Can Be Used to Reject
+ Claims When the Reference Is a "Patent" but Not a "Publication" [R-11.2013]
+
+**OFTEN UNCLAIMED DETAILS FOUND IN THE PATENT SPECIFICATION CAN BE RELIED ON EVEN
+ IF PATENT IS SECRET**When the patented document is used as a patent and not as a
+ publication, the examiner is not restricted to the information conveyed by the patent
+ claims but may use any information provided in the specification which relates to the
+ subject matter of the patented claims when making a rejection under **[35 U.S.C.
+ 102(a)](mpep-9015-appx-l.html#al_d1d85b_11e72_2ee)** or **[pre-AIA 35 U.S.C. 102(a), (b) or
+ (d)](mpep-9015-appx-l.html#d0e302383)**. *Ex parte Ovist,* 152 USPQ 709, 710 (Bd.
+ App. 1963) (The claim of an Italian patent was generic and thus embraced the species
+ disclosed in the examples, the Board added that the entire specification was germane
+ to the claimed invention and upheld the examiner’s **[pre-AIA 35 U.S.C.
+ 102(b)](mpep-9015-appx-l.html#d0e302383)** rejection.); *In re Kathawala,* 9 F.3d
+ 942, 28 USPQ2d 1785 (Fed. Cir. 1993) (The claims at issue were rejected under
+ **[pre-AIA
+ 35 U.S.C. 102(d)](mpep-9015-appx-l.html#d0e302383)** by applicant’s own parent applications in
+ Greece and Spain. The applicant argued that the "invention ... patented in Spain was
+ not the same ‘invention’ claimed in the U.S. application because the Spanish patent
+ claimed processes for making [compounds for inhibition of cholesterol biosynthesis]
+ and claims 1 and 2 were directed to the compounds themselves." *Id.*
+ at 944, 28 USPQ2d at 1786. The Federal Circuit held that "when an applicant files a
+ foreign application fully disclosing his invention and having the potential to claim
+ his invention in a number of ways, the reference in **[section 102(d)](mpep-9015-appx-l.html#d0e302403)**
+ to ‘invention ... patented’ necessarily includes all disclosed aspects of the
+ invention." *Id.* at 945-46, 28 USPQ2d at 1789.).
+ 
+
+
+Note that *In re Fuge,* 272 F.2d 954, 957, 124 USPQ
+ 105, 107 (CCPA 1959), does not conflict with the above decisions. This decision
+ simply states "that, at the least, the scope of the patent
+ embraces everything included in the [claim]." (emphasis added). 
+ 
+
+
+The courts have interpreted the phrase "invention ... patented" in
+ **[pre-AIA 35
+ U.S.C. 102(a), (b), and (d)](mpep-9015-appx-l.html#d0e302383)** the same way and have cited
+ decisions without regard to which of these subsections of **[pre-AIA 35 U.S.C.
+ 102](mpep-9015-appx-l.html#d0e302383)** was at issue in the particular case at hand. Therefore, it
+ does not seem to matter to which subsection of **[pre-AIA 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** the cases
+ are directed; the court decisions are interchangeable as to this issue. 
+ 
+
+
+
+[[top]](#top)
+
+
+, 
+# 2126.01 Date of Availability of a Patent as a Reference [R-11.2013]
+
+**DATE FOREIGN PATENT IS EFFECTIVE AS A REFERENCE IS
+ USUALLY THE DATE PATENT RIGHTS ARE FORMALLY AWARDED TO
+ ITS APPLICANT** The date the patent is available as a reference is generally the
+ date that the patent becomes enforceable. This date is the date the sovereign
+ formally bestows patents rights to the applicant. *In re Monks,* 588
+ F.2d 308, 200 USPQ 129 (CCPA 1978). There is an exception to this rule when the
+ patent is secret as of the date the rights are awarded. *In re
+ Ekenstam,* 256 F.2d 321, 118 USPQ 349 (CCPA 1958). 
+ 
+
+
+Note that **[MPEP § 901.05](s901.html#d0e110750)** summarizes in tabular
+ form dates of patenting for many foreign patents. For a list of cases that discuss
+ the date of patenting countries for purposes of **[pre-AIA 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** in
+ particular, see *Chisum,* Patents § 3.06[4] n.2.
+ 
+
+
+, 
+# 2126.02 Scope of Reference’s Disclosure Which Can Be Used to Reject
+ Claims When the Reference Is a "Patent" but Not a "Publication" [R-11.2013]
+
+**OFTEN UNCLAIMED DETAILS FOUND IN THE PATENT SPECIFICATION CAN BE RELIED ON EVEN
+ IF PATENT IS SECRET**When the patented document is used as a patent and not as a
+ publication, the examiner is not restricted to the information conveyed by the patent
+ claims but may use any information provided in the specification which relates to the
+ subject matter of the patented claims when making a rejection under **[35 U.S.C.
+ 102(a)](mpep-9015-appx-l.html#al_d1d85b_11e72_2ee)** or **[pre-AIA 35 U.S.C. 102(a), (b) or
+ (d)](mpep-9015-appx-l.html#d0e302383)**. *Ex parte Ovist,* 152 USPQ 709, 710 (Bd.
+ App. 1963) (The claim of an Italian patent was generic and thus embraced the species
+ disclosed in the examples, the Board added that the entire specification was germane
+ to the claimed invention and upheld the examiner’s **[pre-AIA 35 U.S.C.
+ 102(b)](mpep-9015-appx-l.html#d0e302383)** rejection.); *In re Kathawala,* 9 F.3d
+ 942, 28 USPQ2d 1785 (Fed. Cir. 1993) (The claims at issue were rejected under
+ **[pre-AIA
+ 35 U.S.C. 102(d)](mpep-9015-appx-l.html#d0e302383)** by applicant’s own parent applications in
+ Greece and Spain. The applicant argued that the "invention ... patented in Spain was
+ not the same ‘invention’ claimed in the U.S. application because the Spanish patent
+ claimed processes for making [compounds for inhibition of cholesterol biosynthesis]
+ and claims 1 and 2 were directed to the compounds themselves." *Id.*
+ at 944, 28 USPQ2d at 1786. The Federal Circuit held that "when an applicant files a
+ foreign application fully disclosing his invention and having the potential to claim
+ his invention in a number of ways, the reference in **[section 102(d)](mpep-9015-appx-l.html#d0e302403)**
+ to ‘invention ... patented’ necessarily includes all disclosed aspects of the
+ invention." *Id.* at 945-46, 28 USPQ2d at 1789.).
+ 
+
+
+Note that *In re Fuge,* 272 F.2d 954, 957, 124 USPQ
+ 105, 107 (CCPA 1959), does not conflict with the above decisions. This decision
+ simply states "that, at the least, the scope of the patent
+ embraces everything included in the [claim]." (emphasis added). 
+ 
+
+
+The courts have interpreted the phrase "invention ... patented" in
+ **[pre-AIA 35
+ U.S.C. 102(a), (b), and (d)](mpep-9015-appx-l.html#d0e302383)** the same way and have cited
+ decisions without regard to which of these subsections of **[pre-AIA 35 U.S.C.
+ 102](mpep-9015-appx-l.html#d0e302383)** was at issue in the particular case at hand. Therefore, it
+ does not seem to matter to which subsection of **[pre-AIA 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** the cases
+ are directed; the court decisions are interchangeable as to this issue. 
+ 
+
+
+]

data/2100/s2127.html.txt

@@ -0,0 +1,133 @@
+[
+# 2127 Domestic and Foreign Patent Applications as Prior Art [R-10.2019]
+
+**I.** **ABANDONED APPLICATIONS, INCLUDING PROVISIONAL APPLICATIONS*** 
+
+**Abandoned Applications Disclosed to the Public Can Be Used as Prior Art**"An abandoned patent application may become evidence of prior art
+ only when it has been appropriately disclosed, as, for example, when the abandoned
+ patent [application] is reference[d] in the disclosure of another patent, in a
+ publication, or by voluntary disclosure under [former Defensive Publication rule]
+ **[37 CFR
+ 1.139](mpep-9020-appx-r.html#d0e324067)** [Reserved]." *Lee Pharmaceutical v.**Kreps,* 577 F.2d 610, 613, 198 USPQ 601, 605 (9th Cir. 1978). An
+ abandoned patent application becomes available as prior art only as of the date the
+ public gains access to it. See **[37 CFR 1.14(a)(1)(ii)](mpep-9020-appx-r.html#d0e314245)** and
+ **[(iv)](mpep-9020-appx-r.html#d0e314245)**. However, the subject matter of an abandoned application,
+ including both provisional and nonprovisional applications, referred to in a prior
+ art U.S. patent or U.S. patent application publication may be relied on in a
+ **[35
+ U.S.C. 102(a)(2)](mpep-9015-appx-l.html#al_d1d85b_11e72_315)** or **[pre-AIA 35 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302383)**
+ rejection based on that patent or patent application publication if the disclosure of
+ the abandoned application is actually included or incorporated by reference in the
+ patent. Compare *In re Lund,* 376 F.2d 982, 991, 153 USPQ 625, 633
+ (CCPA 1967) (The court reversed a rejection over a patent which was a
+ continuation-in-part of an abandoned application. Applicant’s filing date preceded
+ the issue date of the patent reference. The abandoned application contained subject
+ matter which was essential to the rejection but which was not carried over into the
+ continuation-in-part. The court held that the subject matter of the abandoned
+ application was not available to the public as of either the parent’s or the child’s
+ filing dates and thus could not be relied on in the **[pre-AIA 35 U.S.C.
+ 102(e)](mpep-9015-appx-l.html#d0e302407)** rejection.). See also **[MPEP § 901.02](s901.html#d0e110072)**. See
+ **[MPEP
+ § 2136.02](s2136.html#d0e205829)** and **[MPEP § 2136.03](s2136.html#d0e205924)** for the
+ **[35 U.S.C.
+ 102(e)](mpep-9015-appx-l.html#d0e302383)** date of a U.S. patent claiming priority under
+ **[35 U.S.C.
+ 119](mpep-9015-appx-l.html#d0e302921)** or **[35 U.S.C. 120](mpep-9015-appx-l.html#d0e303023313p)**. See
+ **[MPEP
+ § 2154](s2154.html#ch2100_d20033_274f5_338)** for prior art under **[35 U.S.C.
+ 102(a)(2)](mpep-9015-appx-l.html#al_d1d85b_11e72_315)**.
+ 
+
+**II.** **APPLICATIONS WHICH HAVE ISSUED AS PATENTS*** 
+
+***A.******A 35 U.S.C. 102(a)(2) or Pre-AIA 35 U.S.C. 102(e) Rejection Cannot Rely
+ on Matter Which Was Canceled from the Application and Thus Did Not Get
+ Published in the Issued Patent or Application Publication***Canceled matter in the application file of a U.S. patent or
+ application publication cannot be relied upon in a rejection under **[35 U.S.C.
+ 102(a)(2)](mpep-9015-appx-l.html#al_d1d85b_11e72_315)** or **[pre-AIA 35 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302383)**.
+ *Ex Parte Stalego,* 154 USPQ 52, 53 (Bd. App. 1966). The canceled
+ matter only becomes available as prior art as of the date the application file
+ history becomes available to the public. *In re Lund,* 376 F.2d 982,
+ 153 USPQ 625 (CCPA 1967). However, as discussed below, such matter may be available
+ as prior art under **[35 U.S.C. 102(a)(1)](mpep-9015-appx-l.html#al_d1d85b_11e72_315)** or
+ **[pre-AIA 35
+ U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302395)**. For more information on available prior art for
+ use in **[pre-AIA 35
+ U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302383)** rejections, see **[MPEP § 2136.02](s2136.html#d0e205829)**.
+ For more information on available prior art for use in **[35 U.S.C.
+ 102(a)(2)](mpep-9015-appx-l.html#al_d1d85b_11e72_315)** rejections, see **[MPEP §
+ 2154](s2154.html#ch2100_d20033_274f5_338)***et seq.*
+
+***B.******A 35 U.S.C. 102(a)(1) or Pre-AIA 35 U.S.C. 102(b) Rejection Over a
+ Published Application May Rely on Information that Was Canceled Prior to
+ Publication***Figures that had been canceled from a Canadian patent application
+ before issuance of the patent were available as prior art under **[pre-AIA 35 U.S.C.
+ 102(b)](mpep-9015-appx-l.html#d0e302383)** as of the date the application became publicly
+ accessible. The patent at issue and its underlying application were available for
+ public inspection at the Canadian Patent Office more than one year before the
+ effective filing date of the patents in suit. *Bruckelmyer v. Ground Heaters,
+ Inc.,* 445 F.3d 1374, 78 USPQ2d 1684 (Fed. Cir. 2006).
+ 
+
+**III.** **FOREIGN APPLICATIONS OPEN FOR PUBLIC INSPECTION (LAID OPEN APPLICATIONS)** * 
+
+**Laid Open Applications May Constitute "Published" Documents**When the specification is not issued in printed form but is
+ announced in an official journal and anyone can inspect or obtain copies, it is
+ sufficiently accessible to the public to constitute a "publication" within the
+ meaning of **[35 U.S.C. 102(a)(1)](mpep-9015-appx-l.html#al_d1d85b_11e72_307)** or
+ **[pre-AIA 35
+ U.S.C. 102(a) and (b)](mpep-9015-appx-l.html#d0e302383)**. See  *In re Wyer,* 655
+ F.2d 221, 210 USPQ 790 (CCPA 1981). 
+ 
+
+
+One board decision, however, has held that laid open patent
+ applications are not "published" and cannot constitute prior art. *Ex parte
+ Haller,* 103 USPQ 332 (Bd. App. 1953). Whether or not a document is
+ "published" for the purposes of **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** and
+ **[35 U.S.C.
+ 103](mpep-9015-appx-l.html#d0e302450)** depends on how accessible the document is to the public. As
+ technology has made reproduction of documents easier, the accessibility of the laid
+ open applications has increased. Items provided in easily reproducible form have thus
+ become "printed publications" as the phrase is used in **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**.
+ *In re**Wyer,* 655 F.2d 221, 226, 210 USPQ 790, 794 (CCPA 1981) (Laid open
+ Australian patent application held to be a "printed publication" even though only the
+ abstract was published because it was laid open for public inspection, microfilmed,
+ "diazo copies" were distributed to five suboffices having suitable reproduction
+ equipment and the diazo copies were available for sale.). The contents of a foreign
+ patent application should not be relied upon as prior art until the date of
+ publication (i.e., the insertion into the laid open application) can be confirmed by
+ an examiner’s review of a copy of the document. See **[MPEP § 901.05](s901.html#d0e110750)**.
+ 
+
+**IV.** **PENDING U.S. APPLICATIONS**As specified in **[37 CFR 1.14(a)](mpep-9020-appx-r.html#d0e314245)**, all pending U.S.
+ applications are preserved in confidence except for published applications (see also
+ **[35 U.S.C.
+ 122(b)](mpep-9015-appx-l.html#d0e303063)**), reissue applications, and applications in which a request
+ to open the complete application to inspection by the public has been granted by the
+ Office (**[37 CFR
+ 1.11(b)](mpep-9020-appx-r.html#d0e314104)**). However, if an application that has not been published
+ has an assignee or inventor in common with the application being examined, a rejection
+ will be proper in some circumstances. For instance, when the claims between the two
+ applications are not independent or distinct, a provisional double patenting rejection
+ is made. See **[MPEP §
+ 804](s804.html#d0e98894)**. If the copending applications differ by at least one
+ inventor and at least one of the applications would have been obvious in view of the
+ other, a provisional rejection over **[35 U.S.C. 102(a)(2)](mpep-9015-appx-l.html#al_d1d85b_11e72_315)** or
+ **[pre-AIA 35 U.S.C.
+ 102(e)](mpep-9015-appx-l.html#d0e302383)** or **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)** is made when
+ appropriate. See **[MPEP §§
+ 2136.01](s2136.html#d0e205680)**, **[2146.03(a)](s2146.html#ch2100_d2c184_12851_21a)** and **[2154.01(d)](s2154.html#ch2100_d2c184_139ba_236)**.
+ 
+
+
+See **[MPEP
+ §§ 804](s804.html#d0e98894)**, **[2120.01](s2120.html#ch2100_d2c183_20d9a_21c)**, **[2136](s2136.html#d0e205544)** *et seq.* and  **[2154](s2154.html#ch2100_d20033_274f5_338)***et seq.* for information pertaining to rejections relying on U.S.
+ application publications.
+ 
+
+
+[[top]](#top)
+
+
+]

data/2100/s2128.html.txt

@@ -0,0 +1,713 @@
+[
+# 2128 "Printed Publications" as Prior Art [R-10.2019]
+
+
+[Editor Note: For applications subject to the first inventor to file (FITF)
+ provisions of the AIA, see also **[MPEP §§ 2152.02(b)](s2152.html#ch2100_d20033_1da60_2e9)** and
+ **[2152.02(e)](s2152.html#ch2100_d20033_228c0_21c)**]
+ 
+
+**I.** **A REFERENCE IS A "PRINTED PUBLICATION" IF IT IS ACCESSIBLE TO THE PUBLIC**A reference is proven to be a "printed publication" "upon a
+ satisfactory showing that such document has been disseminated or otherwise made
+ available to the extent that persons interested and ordinarily skilled in the subject
+ matter or art, exercising reasonable diligence, can locate it." *In re
+ Wyer,* 655 F.2d 221, 210 USPQ 790 (CCPA 1981) (quoting *I.C.E. Corp.
+ v. Armco Steel Corp.,* 250 F. Supp. 738, 743, 148 USPQ 537, 540 (SDNY 1966))
+ ("We agree that ‘printed publication’ should be approached as a unitary concept. The
+ traditional dichotomy between ‘printed’ and ‘publication’ is no longer valid. Given the
+ state of technology in document duplication, data storage, and data retrieval systems,
+ the ‘probability of dissemination’ of an item very often has little to do with whether
+ or not it is ‘printed’ in the sense of that word when it was introduced into the patent
+ statutes in 1836. In any event, interpretation of the words ‘printed’ and ‘publication’
+ to mean ‘probability of dissemination’ and ‘public accessibility’ respectively, now
+ seems to render their use in the phrase ‘printed publication’ somewhat redundant.")
+ *In re Wyer,* 655 F.2d at 226, 210 USPQ at 794. See also
+ *Voter Verified, Inc. v. Premier Election Solutions*, 698 F.3d 1374,
+ 1380, 104 USPQ2d 1553, 1556-57 (Fed. Cir. 2012) ("the ultimate question is whether the
+ reference was ‘available to the extent that persons interested and ordinary skilled in
+ the subject matter or art[,] exercising reasonable diligence, can locate it’" (citations
+ omitted)). 
+ 
+
+
+The Federal Circuit stated the following in
+ *Medtronic, Inc. v. Barry*, 891 F.3d 1368, 1380, 127 USPQ2d 1208,
+ 1216-17 (Fed. Cir. 2018): 
+ 
+
+
+
+> 
+> Whether a reference qualifies as a "printed
+>  publication" is a legal conclusion based on underlying factual determinations.
+>  *Suffolk Techs., LLC v. AOL Inc.*, 752 F.3d 1358, 1364 (Fed. Cir.
+>  2014) (citation omitted). "The ‘printed publication’ provision of **[§ 102(b)](mpep-9015-appx-l.html#d0e302395)** ‘was
+>  designed to prevent withdrawal by an inventor ... of that which was already in the
+>  possession of the public.’ " *Bruckelmyer v. Ground Heaters, Inc.*,
+>  445 F.3d 1374, 1378 (Fed. Cir. 2006) (alteration in original) (quoting *In re
+>  Wyer*, 655 F.2d 221, 226 (C.C.P.A. 1981)); see *Blue Calypso, LLC
+>  v. Groupon, Inc.*, 815 F.3d 1331, 1348 (Fed. Cir. 2016) ("This rule is
+>  grounded on the principle that once an invention is in the public domain, it is no
+>  longer patentable by anyone." (internal quotation marks and citations omitted) ).
+>  Medtronic, as the patent challenger, bears the burden of establishing that a
+>  particular document is a printed publication. See *Blue Calypso*,
+>  815 F.3d at 1350–51 (holding that petitioner failed to carry its burden of proving
+>  public accessibility of the allegedly invalidating reference).
+>  
+> 
+> 
+>  The determination of whether a document is a
+>  "printed publication" under **[35 U.S.C. § 102(b)](mpep-9015-appx-l.html#d0e302395)** "involves a
+>  case-by- case inquiry into the facts and circumstances surrounding the reference’s
+>  disclosure to members of the public." *In re Klopfenstein*, 380 F.3d
+>  1345, 1350 (Fed. Cir. 2004). "Because there are many ways in which a reference may be
+>  disseminated to the interested public, ‘public accessibility’ has been called the
+>  touchstone in determining whether a reference constitutes a ‘printed publication’ bar
+>  under **[35 U.S.C. §
+>  102(b)](mpep-9015-appx-l.html#d0e302395)**." Blue Calypso, 815 F.3d at 1348 (quoting *In re
+>  Hall*, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). "A reference will be
+>  considered publicly accessible if it was ‘disseminated or otherwise made available to
+>  the extent that persons interested and ordinarily skilled in the subject matter or
+>  art exercising reasonable diligence[] can locate it.’" Id. (quoting *Kyocera
+>  Wireless Corp. v. Int’l Trade Comm’n*, 545 F.3d 1340, 1350 (Fed. Cir.
+>  2008)). 
+>  
+> 
+> 
+> 
+
+
+See also *Carella v. Starlight Archery,* 804 F.2d 135,
+ 231 USPQ 644 (Fed. Cir. 1986) (Starlight Archery argued that Carella’s patent claims to
+ an archery sight were anticipated under **[pre-AIA 35 U.S.C. 102(a)](mpep-9015-appx-l.html#d0e302383)** by an
+ advertisement in a Wisconsin Bow Hunter Association (WBHA) magazine and a WBHA mailer
+ prepared prior to Carella’s filing date. However, there was no evidence as to when the
+ mailer was received by any of the addressees. Plus, the magazine had not been mailed
+ until 10 days after Carella’s filing date. The court held that since there was no proof
+ that either the advertisement or mailer was accessible to any member of the public
+ before the filing date there could be no rejection under **[pre-AIA 35 U.S.C.
+ 102(a)](mpep-9015-appx-l.html#d0e302383)**.). 
+ 
+
+
+When a document is cited in a rejection of a claim in an
+ examination of a patent application or during an reexamination proceeding, an applicant
+ or patent owner may challenge its public availability and/or the date it became publicly
+ accessible, even when the document itself contains a publication date, by filing a
+ proper affidavit or declaration under **[37 CFR 1.132](mpep-9020-appx-r.html#d0e323552)** that includes facts and
+ evidence to support the applicant or patent owner's position. See **[MPEP § 716](s716.html#d0e92085)***et seq.*
+
+**II.** **ELECTRONIC PUBLICATIONS AS PRIOR ART*** 
+
+***A.******Status as a 
+ "Printed
+ Publication"***  An electronic publication, including an online database or Internet
+ publication (e.g., discussion group, forum, digital video, and social media post), is
+ considered to be a "printed publication" within the meaning of **[35 U.S.C.
+ 102(a)(1)](mpep-9015-appx-l.html#al_d1d85b_11e72_307)** and **[pre-AIA 35 U.S.C. 102(a) and (b)](mpep-9015-appx-l.html#d0e302383)**
+ provided the publication was accessible to persons concerned with the art to which
+ the document relates. See *In re Wyer,* 655 F.2d 221, 227, 210 USPQ
+ 790, 795 (CCPA 1981) ("Accordingly, whether information is printed, handwritten, or
+ on microfilm or a magnetic disc or tape, etc., the one who wishes to characterize the
+ information, in whatever form it may be, as a ‘printed publication’ ... should
+ produce sufficient proof of its dissemination or that it has otherwise been available
+ and accessible to persons concerned with the art to which the document relates and
+ thus most likely to avail themselves of its contents.’" (citations omitted).). See
+ also *Amazon.com v. Barnesandnoble.com,* 73 F. Supp. 2d 1228,
+ 53 USPQ2d 1115, 1119 (W.D. Wash. 1999) (Pages from a website were relied on by
+ defendants as an anticipatory reference (to no avail), however status of the
+ reference as prior art was not challenged.); *In re Epstein,* 32
+ F.3d 1559, 31 USPQ2d 1817 (Fed. Cir. 1994) (Database printouts of abstracts which
+ were not themselves prior art publications were properly relied as providing evidence
+ that the software products referenced therein were "first installed" or "released"
+ more than one year prior to applicant’s filing date.); *Suffolk Tech v. AOL
+ and Google,* 752 F.3d 1358, 110 USPQ2d 2034 (Fed. Cir. 2014) (A newsgroup
+ posting constituted prior art as it was directed to those having ordinary skill in
+ the art and was publicly accessible because the post was sufficiently
+ disseminated.)
+ 
+
+
+The Office policy requiring recordation of the field of search and
+ search results (see **[MPEP § 719.05](s719.html#d0e94319)**) weighs in favor of finding that Internet
+ and online database references cited by the examiner are "accessible to persons
+ concerned with the art to which the document relates and thus most likely to avail
+ themselves of its contents." *Wyer,* 655 F.2d at 221, 210 USPQ at
+ 790. Office copies of an electronic document must be retained if the same document
+ may not be available for retrieval in the future. This is especially important for
+ sources obtained from the Internet and online databases.
+ 
+
+***B.******Date of Availability***  Prior art disclosures on the Internet or on an online database are
+ considered to be publicly available as of the date the item was publicly posted. See
+ subsection I above. Absent evidence of the date that the disclosure was publicly
+ posted, if the publication itself does not include a publication date (or retrieval
+ date), it cannot be relied upon as prior art under **[35 U.S.C.
+ 102(a)(1)](mpep-9015-appx-l.html#al_d1d85b_11e72_307)** and **[pre-AIA 35 U.S.C. 102(a) or (b)](mpep-9015-appx-l.html#d0e302383)**.
+ However, it may be relied upon to provide evidence regarding the state of the art.
+ Examiners may ask the Scientific and Technical Information Center to find the
+ earliest date of publication or posting. See **[MPEP § 901.06(a)](s901.html#d0e113237)**, subsection IV.G.
+ 
+ 
+
+***C.******Extent of Teachings Relied Upon*** An electronic publication, like any publication, may be relied upon
+ for all that it would have reasonably suggested to one having ordinary skill in the
+ art. See **[MPEP
+ § 2121.01](s2121.html#d0e201800)** and **[§ 2123](s2123.html#d0e202024)**. Note, however, that if an
+ electronic document which is the abstract of a patent or printed publication is
+ relied upon in a rejection under **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** or
+ **[35 U.S.C.
+ 103](mpep-9015-appx-l.html#d0e302450)**, only the text of the abstract (and not the underlying
+ document) may be relied upon to support the rejection. In situations where the
+ electronic version and the published paper version of the same or a corresponding
+ patent or printed publication differ appreciably, each may need to be cited and
+ relied upon as independent references based on what they disclose. 
+ 
+
+***D.******Internet Usage Policy*** See **[MPEP § 904.02(c)](s904.html#d0e115698)** for the portions of the Internet Usage
+ Policy pertaining to Internet searching and documenting search strategies. See
+ **[MPEP §
+ 707.05(e)](s707.html#d0e73852)** for the proper citation of electronic documents.
+ 
+ 
+
+***E.******Wayback Machine
+ ®***The Wayback Machine® is a
+ digital library maintained by the Internet Archive (a non-profit organization) for
+ viewing information on archived digital Internet webpages. Simply, the Wayback
+ Machine® uses software programs, known as crawlers, to
+ surf the Internet and automatically store copies of Web objects (Web pages, images,
+ videos, etc.), preserving these objects as they exist at the point and time of
+ capture. These Web objects are stored as Web captures with the capture time/date in
+ the form of a time stamp and the URL of the original website of capture. Accordingly,
+ the Wayback Machine® provides the ability to view and
+ browse Internet information that may no longer be available on the original website. 
+ 
+
+
+Prior art obtained via the Wayback
+ Machine® sets forth a *prima facie*
+ case that the art was publicly accessible at the date and time provided in the time
+ stamp. The burden then shifts to the applicant should they wish to challenge the
+ authenticity, reliability or accessibility of such information.
+ 
+
+***F.******Social
+ Media***Social media websites on the Internet, such as
+ YouTubeTM, TwitterTM,
+ FacebookTM, and public forum posts, can be a source of
+ prior art, provided the public accessibility requirements, as laid out in subsection
+ I are met. Thus, all information on social media is not necessarily publically
+ accessible. Public accessibility is determined on a case-by-case basis taking into
+ consideration factors such as, where the information is posted, privacy restrictions
+ placed on the posting, the length of time it was posted, and whether the information
+ is indexed for searching. 
+ 
+
+
+Some social media websites are not archived by the
+ Wayback Machine®. Therefore, examiners may have to rely on
+ the timestamps on the social media sites to establish the public accessibility date.
+ However, the accuracy of timestamps on social media websites may need to be
+ scrutinized with care, as the reliability of some websites do not approach those of
+ other types of Internet publications, such as those providing peer-reviewed material.
+ When a document is cited in a rejection of a claim, an applicant or patent owner may
+ challenge its public availability and/or date that it became publicly available, even
+ where the information self-contains a publication date, by filing a proper affidavit
+ or declaration under **[37 CFR 1.132](mpep-9020-appx-r.html#d0e323552)**. See
+ **[MPEP §
+ 716](s716.html#d0e92085)***et seq.*
+
+
+For examples of social media website citation formats
+ see **[MPEP §
+ 707.05(e)](s707.html#d0e73852)**. 
+ 
+
+**III.** **EXAMINER NEED NOT PROVE ANYONE ACTUALLY LOOKED AT THE DOCUMENT**There is no need to prove that someone actually looked at a publication
+ when that publication is accessible to the public through a library or patent office.
+ See *In re Wyer,* 655 F.2d 221, 210 USPQ 790 (CCPA 1981); *In
+ re Hall,* 781 F.2d 897, 228 USPQ 453 (Fed. Cir. 1986). "A reference is
+ considered publicly accessible 'upon a satisfactory showing that such document has been
+ disseminated or otherwise made available to the extent that persons interested and
+ ordinarily skilled in the subject matter or art, exercising reasonable diligence, can
+ locate it.' 'If accessibility is proved, there is no requirement to show that particular
+ members of the public actually received the information.'" *Jazz Pharm., Inc. v.
+ Amneal Pharm., LLC,* 895 F.3d 1347, 1355-1356 (Fed. Cir. 2018) (quoting
+ *Wyer,* 655 F.2d at 226) and *Constant v. Advanced
+ Micro-Devices, Inc.,* 848 F.2d 1560 , 1569 (Fed. Cir. 1988)). 
+ 
+
+
+
+# 2128.01 Level of Public Accessibility Required [R-10.2019]
+
+
+The statutory phrase "printed publication" has been
+ interpreted to mean that before the critical date the reference must have been
+ sufficiently accessible to the public interested in the art; dissemination and public
+ accessibility are the keys to the legal determination whether a prior art reference was
+ "published." *Constant v. Advanced Micro-Devices, Inc.,* 848 F.2d 1560,
+ 1568, 7 U.S.P.Q.2d 1057, 1062 (Fed. Cir. 1988)
+ 
+
+**I.** **A THESIS PLACED IN A UNIVERSITY LIBRARY OR A DOCUMENT PLACED IN AN ONLINE
+ DATABASE MAY BE PRIOR ART IF SUFFICIENTLY ACCESSIBLE TO THE PUBLIC**A doctoral thesis indexed and shelved in a library is sufficiently
+ accessible to the public to constitute prior art as a "printed publication."
+ *In re Hall,* 781 F.2d 897, 228 USPQ 453 (Fed. Cir. 1986). Even
+ if access to the library is restricted, a reference will constitute a "printed
+ publication" as long as a presumption is raised that the portion of the public
+ concerned with the art would know of the invention. *In re Bayer,*
+ 568 F.2d 1357, 196 USPQ 670 (CCPA 1978).
+ 
+
+
+In *In re Hall,* general library cataloging and
+ shelving practices showed that a doctoral thesis deposited in university library
+ would have been indexed, cataloged and shelved and thus available to the public
+ before the critical date. Compare *In re Cronyn,* 890 F.2d 1158, 13
+ USPQ2d 1070 (Fed. Cir. 1989) wherein doctoral theses were shelved and indexed by
+ index cards filed alphabetically by student name and kept in a shoe box in the
+ chemistry library. The index cards only listed the student name and title of the
+ thesis. In *Cronyn,* the court held that the students’ theses were
+ not accessible to the public because they had not been either cataloged or indexed in
+ a meaningful way, e.g., by title or in some other way that bears a relationship to
+ the subject of the thesis, but instead were cataloged by the researcher's name.
+ Compare *In re Bayer,* 568 F.2d 1357, 196 USPQ 670 (CCPA 1978) (A
+ reference will constitute a "printed publication" as long as a presumption is raised
+ that the portion of the public concerned with the art would know of the invention
+ even if accessibility is restricted to only this part of the public. But
+ accessibility to applicant’s thesis was restricted to only three members of a
+ graduate committee. There can be no presumption that those concerned with the art
+ would have known of the invention in this case.).
+ 
+
+
+In determining whether a document in an online
+ database is a printed publication, public accessibility is key. See
+ **[MPEP §
+ 2128](s2128.html#d0e202564)**, subsection I. In *Voter Verified, Inc. v.
+ Premier Election Sols., Inc.* the court found that "(i)ndexing is not ‘a
+ necessary condition for a reference to be publicly accessible’; it is but one among
+ many factors that may bear on public accessibility." *Voter Verified, Inc. v.
+ Premier Election Sols., Inc.,* 698 F.3d 1374, 1381, 104 USPQ2d 1553, 1557
+ (Fed. Cir. 2012) (quoting *In re Lister,* 583 F.3d 1307, 1312, 92
+ USPQ2d 1225, 1228 (Fed. Cir. 2009)). The court further stated that "indexing is no
+ more or less important in evaluating the public accessibility of online references
+ than for those fixed in more traditional, tangible media". *Id.*
+
+
+A document in an online database is not always deemed
+ a printed publication. In *Acceleration Bay, LLC v. Activision Blizzard
+ Inc.*, 908 F.3d 765, 773, USPQ2d 1507, 1514 (Fed. Cir. 2018), the court
+ agreed with the Board that an electronic technical report did not constitute a
+ "printed publication" within the meaning of **[(pre‑AIA) 35 U.S.C. 102(a)](mpep-9015-appx-l.html#d0e302391)**. The
+ court agreed with the Board that an interested skilled artisan, using reasonable
+ diligence, would not have been able to find the technical report on the CSE Technical
+ Reports Library website despite some indexing and search functionality on the website
+ that permitted technical accessibility. Technical reports were listed only by author
+ or year, and there was no evidence how many reports were in the Library’s database in
+ 1999. It was determined that at best, an artisan might have located the cited
+ technical report by skimming through potentially hundreds of titles in the same year,
+ with most containing unrelated subject matter, or by viewing all titles in the
+ database listed by author, when the authors were not particularly well known. Also,
+ the website’s advanced search form was found to be deficient because the ability to
+ search keywords for author, title, and abstract fields was not reliable.
+ 
+
+**II.** **ORALLY PRESENTED PAPER CAN CONSTITUTE A "PRINTED PUBLICATION" IF WRITTEN
+ COPIES ARE AVAILABLE WITHOUT RESTRICTION**A paper which is orally presented in a forum open to all interested
+ persons constitutes a "printed publication" if written copies are disseminated
+ without restriction. *Massachusetts Institute of Technology v. AB Fortia,* 774 F.2d 1104, 1109, 227 USPQ 428, 432 (Fed. Cir. 1985) (Paper orally
+ presented to between 50 and 500 persons at a scientific meeting open to all persons
+ interested in the subject matter, with written copies distributed without restriction
+ to all who requested, is a printed publication. Six persons requested and obtained
+ copies.). An oral presentation at a scientific meeting or a demonstration at a trade
+ show may be prior art under **[35 U.S.C. 102(a)(1)](mpep-9015-appx-l.html#al_d1d85b_11e72_307)**’s provision:
+ "otherwise available to the public." See **[MPEP §
+ 2152.02(e)](s2152.html#ch2100_d20033_228c0_21c)**. 
+ 
+
+**III.** **INTERNAL DOCUMENTS INTENDED TO BE CONFIDENTIAL ARE NOT "PRINTED
+ PUBLICATIONS"**Documents and items only distributed internally within an
+ organization which are intended to remain confidential are not "printed publications"
+ no matter how many copies are distributed. There must be an existing policy of
+ confidentiality or agreement to remain confidential within the organization. Mere
+ intent to remain confidential is insufficient. *In re George,*
+ 2 USPQ2d 1880 (Bd. Pat. App. & Inter. 1987) (Research reports disseminated
+ in-house to only those persons who understood the policy of confidentiality regarding
+ such reports are not printed publications even though the policy was not specifically
+ stated in writing.); *Garret Corp. v. United States,* 422 F.2d 874,
+ 878, 164 USPQ 521, 524 (Ct. Cl.1970) ("While distribution to government agencies and
+ personnel alone may not constitute publication ... distribution to commercial
+ companies without restriction on use clearly does."); *Northern Telecom Inc.
+ v. Datapoint Corp.,* 908 F.2d 931, 15 USPQ2d 1321 (Fed. Cir. 1990) (Four
+ reports on the AESOP-B military computer system which were not under security
+ classification were distributed to about fifty organizations involved in the AESOP-B
+ project. One document contained the legend "Reproduction or further dissemination is
+ not authorized." The other documents were of the class that would contain this
+ legend. The documents were housed in Mitre Corporation’s library. Access to this
+ library was restricted to those involved in the AESOP-B project. The court held that
+ public access was insufficient to make the documents "printed publications.").
+ 
+
+**IV.** **PUBLICLY DISPLAYED REFERENCES CAN CONSTITUTE A "PRINTED PUBLICATION" EVEN IF
+ THE REFERENCES ARE NOT DISSEMINATED BY COPIES OR INDEXED IN A LIBRARY OR
+ DATABASE**A publicly displayed document where persons of ordinary skill in the
+ art could see it and are not precluded from copying it can constitute a "printed
+ publication," even if it is not disseminated by the distribution of reproductions or
+ copies and/or indexed in a library or database. 
+ 
+
+
+As stated in *In re Klopfenstein,*
+ 380 F.3d 1345, 1348, 72 USPQ2d 1117, 1119 (Fed. Cir. 2004), "the key inquiry is
+ whether or not a reference has been made ‘publicly accessible.’" Prior to the
+ critical date, a fourteen-slide presentation disclosing the invention was printed and
+ pasted onto poster boards. The printed slide presentation was displayed with no
+ confidentiality restrictions for approximately three cumulative days at two different
+ industry events. *Id.* at 1347, 72 USPQ2d at 1118. The court noted
+ that "an entirely oral presentation at a scientific conference that includes neither
+ slides nor copies of the presentation is without question not a 'printed publication'
+ for the purposes of **[[pre-AIA] 35 U.S.C. § 102(b)](mpep-9015-appx-l.html#d0e302383)**. Furthermore, a presentation that
+ includes a transient display of slides is likewise not necessarily a ‘printed
+ publication.’" *Id.* at 1349 n.4, 72 USPQ2d at 1120 n.4. In
+ resolving whether or not a temporarily displayed reference that was neither
+ distributed nor indexed was nonetheless made sufficiently publicly accessible to
+ count as a "printed publication" under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**, the
+ court considered the following factors: "the length of time the display was
+ exhibited, the expertise of the target audience, the existence (or lack thereof) of
+ reasonable expectations that the material displayed would not be copied, and the
+ simplicity or ease with which the material displayed could have been copied."
+ *Id.* at 1350, 72 USPQ2d at 1120. Upon reviewing the above
+ factors, the court concluded that the display "was sufficiently publicly accessible
+ to count as a ‘printed publication.’" *Id.* at 1352, 72 USPQ2d at
+ 1121. 
+ 
+
+
+Similarly, in *Medtronic Inc., v.
+ Barry* (891 F.3d 1368, 127 USPQ 1208) (Fed. Cir. 2018) a video and slides
+ presented at two conferences prior to the critical date were found to be publically
+ accessible. When considering the factors set forth in *In re
+ Klopfenstein*, the court stated "[i]t may be relevant to determine
+ whether … members were expected to maintain the confidentiality of received materials
+ or would be permitted to share or even publicize the insights gained and materials
+ collected…". *Id* at 127 USPQ2d at 1218. In addition, in
+ *GoPro, Inc. v. Contour IP Holding LLC*, 908 F.3d 690, 128 USPQ2d
+ 1447 (Fed. Cir. 2018), the court stated that the expertise of the target audience is
+ a factor in determining public accessibility but is not dispositive of the inquiry.
+ "Rather, our case law directs us to also consider the nature of the conference or
+ meeting; whether there are restrictions on public disclosure of the information;
+ expectations of confidentiality; and expectations of sharing the information."
+ *Id.* at 695, 128 USPQ2d at 1451. 
+ 
+
+
+See also *Jazz Pharm., Inc. v. Amneal Pharm.,
+ LLC*, 895 F.3d 1347, 127 USPQ2d 1485 (Fed. Cir. 2018) (A notice in the
+ Federal Register which included instructions on accessing reference materials was
+ sufficient for the materials to be considered publicly accessible; the Board did not
+ need to find that specific persons actually received or examined the materials).
+ 
+
+
+"We have consistently held that indexing or
+ searchability is unnecessary for a reference to be a printed publication."
+ *Jazz Pharm., Inc. v. Amneal Pharm., LLC*, 895 F.3d 1347, 1359,
+ 127 USPQ2d 1485,1493 (Fed. Cir. 2018). But see *Acceleration Bay, LLC v.
+ Activision Blizzard Inc.*, 908 F.3d 765, 773, USPQ2d 1507, 1514 (Fed.
+ Cir. 2018)(an electronic technical report did not constitute a "printed publication"
+ because the indexing or searchability was deficient, and an interested skilled
+ artisan, using reasonable diligence, would have to skim through potentially hundreds
+ of titles in the same year, with most containing unrelated subject matter). 
+ 
+
+
+Note that an oral presentation at a scientific meeting
+ or a demonstration at a trade show may be prior art under **[35 U.S.C.
+ 102(a)(1)](mpep-9015-appx-l.html#al_d1d85b_11e72_307)**’s provision: "otherwise available to the public." See
+ **[MPEP
+ § 2152.02(e)](s2152.html#ch2100_d20033_228c0_21c)**. "Trade shows are not unlike conferences - a
+ trade show is directed to individuals interested in the commercial and developmental
+ aspects of products. If one desires to examine certain new products on the market,
+ attending a trade show involving identical or similar products is a good option."
+ *GoPro, Inc. v. Contour IP Holding LLC*, 908 F.3d 690, 694, 128
+ USPQ2d 1447, 1451 (Fed. Cir. 2018). 
+ 
+
+
+
+
+# 2128.02 Date Publication Is Available as a Reference [R-10.2019]
+
+**I.** **DATE OF ACCESSIBILITY CAN BE SHOWN THROUGH EVIDENCE OF ROUTINE BUSINESS
+ PRACTICES**Evidence showing routine business practices can be used to establish
+ the date on which a publication became accessible to the public. Specific evidence
+ showing when the specific document actually became available is not always necessary.
+ *Constant v. Advanced Micro-Devices,**Inc.,* 848 F.2d 1560, 7 USPQ2d 1057 (Fed. Cir.), *cert.
+ denied,* 988 U.S. 892 (1988) (Court held that evidence submitted by Intel
+ regarding undated specification sheets showing how the company usually treated such
+ specification sheets was enough to show that the sheets were accessible by the public
+ before the critical date.); *In re Hall,* 781 F.2d 897, 228 USPQ 453
+ (Fed. Cir. 1986) (Librarian’s affidavit establishing normal time frame and practice
+ for indexing, cataloging and shelving doctoral theses established that the thesis in
+ question would have been accessible by the public before the critical date.);
+ *In re Lister,* 583 F.3d 1307, 1317, 92 USPQ2d 1225, 1231-32
+ (Fed. Cir. 2009) ("The government urges us that it is appropriate in this case to
+ presume that the manuscript information was added to the Westlaw and Dialog databases
+ prior to the critical date because the critical date was more than a year after the
+ certificate of registration was granted. However, absent any evidence pertaining to
+ the general practices of the Copyright Office, Westlaw, and Dialog, or the typical
+ time that elapses between copyright registration, inclusion in the Copyright Office’s
+ automated catalog, and subsequent incorporation into one of the commercial databases,
+ any presumption along those lines would be pure speculation."). 
+ 
+
+**II.** **A JOURNAL ARTICLE OR OTHER PUBLICATION BECOMES AVAILABLE AS PRIOR ART ON DATE
+ IT IS RECEIVED BY A MEMBER OF THE PUBLIC**A publication disseminated by mail is not prior art until it is
+ received by at least one member of the public. Thus, a magazine or technical journal
+ is effective as of the date when the first person receives it, not the date it was
+ mailed or sent to the publisher. *In re Schlittler,* 234 F.2d 882,
+ 110 USPQ 304 (CCPA 1956). 
+ 
+
+
+
+[[top]](#top)
+
+
+, 
+# 2128.01 Level of Public Accessibility Required [R-10.2019]
+
+
+The statutory phrase "printed publication" has been
+ interpreted to mean that before the critical date the reference must have been
+ sufficiently accessible to the public interested in the art; dissemination and public
+ accessibility are the keys to the legal determination whether a prior art reference was
+ "published." *Constant v. Advanced Micro-Devices, Inc.,* 848 F.2d 1560,
+ 1568, 7 U.S.P.Q.2d 1057, 1062 (Fed. Cir. 1988)
+ 
+
+**I.** **A THESIS PLACED IN A UNIVERSITY LIBRARY OR A DOCUMENT PLACED IN AN ONLINE
+ DATABASE MAY BE PRIOR ART IF SUFFICIENTLY ACCESSIBLE TO THE PUBLIC**A doctoral thesis indexed and shelved in a library is sufficiently
+ accessible to the public to constitute prior art as a "printed publication."
+ *In re Hall,* 781 F.2d 897, 228 USPQ 453 (Fed. Cir. 1986). Even
+ if access to the library is restricted, a reference will constitute a "printed
+ publication" as long as a presumption is raised that the portion of the public
+ concerned with the art would know of the invention. *In re Bayer,*
+ 568 F.2d 1357, 196 USPQ 670 (CCPA 1978).
+ 
+
+
+In *In re Hall,* general library cataloging and
+ shelving practices showed that a doctoral thesis deposited in university library
+ would have been indexed, cataloged and shelved and thus available to the public
+ before the critical date. Compare *In re Cronyn,* 890 F.2d 1158, 13
+ USPQ2d 1070 (Fed. Cir. 1989) wherein doctoral theses were shelved and indexed by
+ index cards filed alphabetically by student name and kept in a shoe box in the
+ chemistry library. The index cards only listed the student name and title of the
+ thesis. In *Cronyn,* the court held that the students’ theses were
+ not accessible to the public because they had not been either cataloged or indexed in
+ a meaningful way, e.g., by title or in some other way that bears a relationship to
+ the subject of the thesis, but instead were cataloged by the researcher's name.
+ Compare *In re Bayer,* 568 F.2d 1357, 196 USPQ 670 (CCPA 1978) (A
+ reference will constitute a "printed publication" as long as a presumption is raised
+ that the portion of the public concerned with the art would know of the invention
+ even if accessibility is restricted to only this part of the public. But
+ accessibility to applicant’s thesis was restricted to only three members of a
+ graduate committee. There can be no presumption that those concerned with the art
+ would have known of the invention in this case.).
+ 
+
+
+In determining whether a document in an online
+ database is a printed publication, public accessibility is key. See
+ **[MPEP §
+ 2128](s2128.html#d0e202564)**, subsection I. In *Voter Verified, Inc. v.
+ Premier Election Sols., Inc.* the court found that "(i)ndexing is not ‘a
+ necessary condition for a reference to be publicly accessible’; it is but one among
+ many factors that may bear on public accessibility." *Voter Verified, Inc. v.
+ Premier Election Sols., Inc.,* 698 F.3d 1374, 1381, 104 USPQ2d 1553, 1557
+ (Fed. Cir. 2012) (quoting *In re Lister,* 583 F.3d 1307, 1312, 92
+ USPQ2d 1225, 1228 (Fed. Cir. 2009)). The court further stated that "indexing is no
+ more or less important in evaluating the public accessibility of online references
+ than for those fixed in more traditional, tangible media". *Id.*
+
+
+A document in an online database is not always deemed
+ a printed publication. In *Acceleration Bay, LLC v. Activision Blizzard
+ Inc.*, 908 F.3d 765, 773, USPQ2d 1507, 1514 (Fed. Cir. 2018), the court
+ agreed with the Board that an electronic technical report did not constitute a
+ "printed publication" within the meaning of **[(pre‑AIA) 35 U.S.C. 102(a)](mpep-9015-appx-l.html#d0e302391)**. The
+ court agreed with the Board that an interested skilled artisan, using reasonable
+ diligence, would not have been able to find the technical report on the CSE Technical
+ Reports Library website despite some indexing and search functionality on the website
+ that permitted technical accessibility. Technical reports were listed only by author
+ or year, and there was no evidence how many reports were in the Library’s database in
+ 1999. It was determined that at best, an artisan might have located the cited
+ technical report by skimming through potentially hundreds of titles in the same year,
+ with most containing unrelated subject matter, or by viewing all titles in the
+ database listed by author, when the authors were not particularly well known. Also,
+ the website’s advanced search form was found to be deficient because the ability to
+ search keywords for author, title, and abstract fields was not reliable.
+ 
+
+**II.** **ORALLY PRESENTED PAPER CAN CONSTITUTE A "PRINTED PUBLICATION" IF WRITTEN
+ COPIES ARE AVAILABLE WITHOUT RESTRICTION**A paper which is orally presented in a forum open to all interested
+ persons constitutes a "printed publication" if written copies are disseminated
+ without restriction. *Massachusetts Institute of Technology v. AB Fortia,* 774 F.2d 1104, 1109, 227 USPQ 428, 432 (Fed. Cir. 1985) (Paper orally
+ presented to between 50 and 500 persons at a scientific meeting open to all persons
+ interested in the subject matter, with written copies distributed without restriction
+ to all who requested, is a printed publication. Six persons requested and obtained
+ copies.). An oral presentation at a scientific meeting or a demonstration at a trade
+ show may be prior art under **[35 U.S.C. 102(a)(1)](mpep-9015-appx-l.html#al_d1d85b_11e72_307)**’s provision:
+ "otherwise available to the public." See **[MPEP §
+ 2152.02(e)](s2152.html#ch2100_d20033_228c0_21c)**. 
+ 
+
+**III.** **INTERNAL DOCUMENTS INTENDED TO BE CONFIDENTIAL ARE NOT "PRINTED
+ PUBLICATIONS"**Documents and items only distributed internally within an
+ organization which are intended to remain confidential are not "printed publications"
+ no matter how many copies are distributed. There must be an existing policy of
+ confidentiality or agreement to remain confidential within the organization. Mere
+ intent to remain confidential is insufficient. *In re George,*
+ 2 USPQ2d 1880 (Bd. Pat. App. & Inter. 1987) (Research reports disseminated
+ in-house to only those persons who understood the policy of confidentiality regarding
+ such reports are not printed publications even though the policy was not specifically
+ stated in writing.); *Garret Corp. v. United States,* 422 F.2d 874,
+ 878, 164 USPQ 521, 524 (Ct. Cl.1970) ("While distribution to government agencies and
+ personnel alone may not constitute publication ... distribution to commercial
+ companies without restriction on use clearly does."); *Northern Telecom Inc.
+ v. Datapoint Corp.,* 908 F.2d 931, 15 USPQ2d 1321 (Fed. Cir. 1990) (Four
+ reports on the AESOP-B military computer system which were not under security
+ classification were distributed to about fifty organizations involved in the AESOP-B
+ project. One document contained the legend "Reproduction or further dissemination is
+ not authorized." The other documents were of the class that would contain this
+ legend. The documents were housed in Mitre Corporation’s library. Access to this
+ library was restricted to those involved in the AESOP-B project. The court held that
+ public access was insufficient to make the documents "printed publications.").
+ 
+
+**IV.** **PUBLICLY DISPLAYED REFERENCES CAN CONSTITUTE A "PRINTED PUBLICATION" EVEN IF
+ THE REFERENCES ARE NOT DISSEMINATED BY COPIES OR INDEXED IN A LIBRARY OR
+ DATABASE**A publicly displayed document where persons of ordinary skill in the
+ art could see it and are not precluded from copying it can constitute a "printed
+ publication," even if it is not disseminated by the distribution of reproductions or
+ copies and/or indexed in a library or database. 
+ 
+
+
+As stated in *In re Klopfenstein,*
+ 380 F.3d 1345, 1348, 72 USPQ2d 1117, 1119 (Fed. Cir. 2004), "the key inquiry is
+ whether or not a reference has been made ‘publicly accessible.’" Prior to the
+ critical date, a fourteen-slide presentation disclosing the invention was printed and
+ pasted onto poster boards. The printed slide presentation was displayed with no
+ confidentiality restrictions for approximately three cumulative days at two different
+ industry events. *Id.* at 1347, 72 USPQ2d at 1118. The court noted
+ that "an entirely oral presentation at a scientific conference that includes neither
+ slides nor copies of the presentation is without question not a 'printed publication'
+ for the purposes of **[[pre-AIA] 35 U.S.C. § 102(b)](mpep-9015-appx-l.html#d0e302383)**. Furthermore, a presentation that
+ includes a transient display of slides is likewise not necessarily a ‘printed
+ publication.’" *Id.* at 1349 n.4, 72 USPQ2d at 1120 n.4. In
+ resolving whether or not a temporarily displayed reference that was neither
+ distributed nor indexed was nonetheless made sufficiently publicly accessible to
+ count as a "printed publication" under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**, the
+ court considered the following factors: "the length of time the display was
+ exhibited, the expertise of the target audience, the existence (or lack thereof) of
+ reasonable expectations that the material displayed would not be copied, and the
+ simplicity or ease with which the material displayed could have been copied."
+ *Id.* at 1350, 72 USPQ2d at 1120. Upon reviewing the above
+ factors, the court concluded that the display "was sufficiently publicly accessible
+ to count as a ‘printed publication.’" *Id.* at 1352, 72 USPQ2d at
+ 1121. 
+ 
+
+
+Similarly, in *Medtronic Inc., v.
+ Barry* (891 F.3d 1368, 127 USPQ 1208) (Fed. Cir. 2018) a video and slides
+ presented at two conferences prior to the critical date were found to be publically
+ accessible. When considering the factors set forth in *In re
+ Klopfenstein*, the court stated "[i]t may be relevant to determine
+ whether … members were expected to maintain the confidentiality of received materials
+ or would be permitted to share or even publicize the insights gained and materials
+ collected…". *Id* at 127 USPQ2d at 1218. In addition, in
+ *GoPro, Inc. v. Contour IP Holding LLC*, 908 F.3d 690, 128 USPQ2d
+ 1447 (Fed. Cir. 2018), the court stated that the expertise of the target audience is
+ a factor in determining public accessibility but is not dispositive of the inquiry.
+ "Rather, our case law directs us to also consider the nature of the conference or
+ meeting; whether there are restrictions on public disclosure of the information;
+ expectations of confidentiality; and expectations of sharing the information."
+ *Id.* at 695, 128 USPQ2d at 1451. 
+ 
+
+
+See also *Jazz Pharm., Inc. v. Amneal Pharm.,
+ LLC*, 895 F.3d 1347, 127 USPQ2d 1485 (Fed. Cir. 2018) (A notice in the
+ Federal Register which included instructions on accessing reference materials was
+ sufficient for the materials to be considered publicly accessible; the Board did not
+ need to find that specific persons actually received or examined the materials).
+ 
+
+
+"We have consistently held that indexing or
+ searchability is unnecessary for a reference to be a printed publication."
+ *Jazz Pharm., Inc. v. Amneal Pharm., LLC*, 895 F.3d 1347, 1359,
+ 127 USPQ2d 1485,1493 (Fed. Cir. 2018). But see *Acceleration Bay, LLC v.
+ Activision Blizzard Inc.*, 908 F.3d 765, 773, USPQ2d 1507, 1514 (Fed.
+ Cir. 2018)(an electronic technical report did not constitute a "printed publication"
+ because the indexing or searchability was deficient, and an interested skilled
+ artisan, using reasonable diligence, would have to skim through potentially hundreds
+ of titles in the same year, with most containing unrelated subject matter). 
+ 
+
+
+Note that an oral presentation at a scientific meeting
+ or a demonstration at a trade show may be prior art under **[35 U.S.C.
+ 102(a)(1)](mpep-9015-appx-l.html#al_d1d85b_11e72_307)**’s provision: "otherwise available to the public." See
+ **[MPEP
+ § 2152.02(e)](s2152.html#ch2100_d20033_228c0_21c)**. "Trade shows are not unlike conferences - a
+ trade show is directed to individuals interested in the commercial and developmental
+ aspects of products. If one desires to examine certain new products on the market,
+ attending a trade show involving identical or similar products is a good option."
+ *GoPro, Inc. v. Contour IP Holding LLC*, 908 F.3d 690, 694, 128
+ USPQ2d 1447, 1451 (Fed. Cir. 2018). 
+ 
+
+
+, 
+# 2128.02 Date Publication Is Available as a Reference [R-10.2019]
+
+**I.** **DATE OF ACCESSIBILITY CAN BE SHOWN THROUGH EVIDENCE OF ROUTINE BUSINESS
+ PRACTICES**Evidence showing routine business practices can be used to establish
+ the date on which a publication became accessible to the public. Specific evidence
+ showing when the specific document actually became available is not always necessary.
+ *Constant v. Advanced Micro-Devices,**Inc.,* 848 F.2d 1560, 7 USPQ2d 1057 (Fed. Cir.), *cert.
+ denied,* 988 U.S. 892 (1988) (Court held that evidence submitted by Intel
+ regarding undated specification sheets showing how the company usually treated such
+ specification sheets was enough to show that the sheets were accessible by the public
+ before the critical date.); *In re Hall,* 781 F.2d 897, 228 USPQ 453
+ (Fed. Cir. 1986) (Librarian’s affidavit establishing normal time frame and practice
+ for indexing, cataloging and shelving doctoral theses established that the thesis in
+ question would have been accessible by the public before the critical date.);
+ *In re Lister,* 583 F.3d 1307, 1317, 92 USPQ2d 1225, 1231-32
+ (Fed. Cir. 2009) ("The government urges us that it is appropriate in this case to
+ presume that the manuscript information was added to the Westlaw and Dialog databases
+ prior to the critical date because the critical date was more than a year after the
+ certificate of registration was granted. However, absent any evidence pertaining to
+ the general practices of the Copyright Office, Westlaw, and Dialog, or the typical
+ time that elapses between copyright registration, inclusion in the Copyright Office’s
+ automated catalog, and subsequent incorporation into one of the commercial databases,
+ any presumption along those lines would be pure speculation."). 
+ 
+
+**II.** **A JOURNAL ARTICLE OR OTHER PUBLICATION BECOMES AVAILABLE AS PRIOR ART ON DATE
+ IT IS RECEIVED BY A MEMBER OF THE PUBLIC**A publication disseminated by mail is not prior art until it is
+ received by at least one member of the public. Thus, a magazine or technical journal
+ is effective as of the date when the first person receives it, not the date it was
+ mailed or sent to the publisher. *In re Schlittler,* 234 F.2d 882,
+ 110 USPQ 304 (CCPA 1956). 
+ 
+
+
+]

data/2100/s2129.html.txt

@@ -0,0 +1,79 @@
+[
+# 2129 Admissions as Prior Art [R-10.2019]
+
+**I.** **ADMISSIONS BY APPLICANT CONSTITUTE PRIOR ART**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
+ the statutory categories of **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**. *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). Where the admitted prior art
+ anticipates the claim but does not qualify as prior art under any of the paragraphs of
+ **[35 U.S.C.
+ 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**, the claim may be rejected as being anticipated by the
+ admitted prior art without citing to **[35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**. 
+ 
+
+
+However, even if labeled as "prior art," the
+ work of the same inventive entity may not be considered prior
+ art against the claims unless it falls under one of the statutory categories.
+ *Id.*; see also *Reading & Bates Construction Co. v.
+ Baker Energy Resources Corp.,* 748 F.2d 645, 650, 223 USPQ 1168, 1172 (Fed.
+ Cir. 1984) ("[W]here the inventor continues to improve upon his own work product, his
+ foundational work product should not, without a statutory basis, be treated as prior art
+ solely because he admits knowledge of his own work. It is common sense that an inventor,
+ regardless of an admission, has knowledge of his own work."). 
+ 
+
+
+Consequently, the examiner must determine whether the subject matter
+ identified as "prior art" is applicant’s own work, or the work of another. In the
+ absence of another credible explanation, examiners should treat such subject matter as
+ the work of another. 
+ 
+
+**II.** **DISCUSSION OF PRIOR ART IN SPECIFICATION**Where the specification identifies work done by another as "prior art,"
+ the subject matter so identified is treated as admitted prior art. *In re
+ Nomiya,* 509 F.2d 566, 571, 184 USPQ 607, 611 (CCPA 1975) (holding
+ applicant’s labeling of two figures in the application drawings as "prior art" to be an
+ admission that what was pictured was prior art relative to applicant’s improvement).
+ 
+
+**III.** ***JEPSON* CLAIMS**Drafting a claim in *Jepson* format (i.e., the format
+ described in **[37 CFR
+ 1.75(e)](mpep-9020-appx-r.html#d0e320269)**; see **[MPEP § 608.01(m)](s608.html#d0e45061)**) is taken as an
+ implied admission that the subject matter of the preamble is the prior art work of
+ another. *In re Fout,* 675 F.2d 297, 301, 213 USPQ 532, 534 (CCPA 1982)
+ (holding preamble of *Jepson*-type claim to be admitted prior art where
+ applicant’s specification credited another as the inventor of the subject matter of the
+ preamble). However, this implication may be overcome where applicant gives another
+ credible reason for drafting the claim in *Jepson* format. *In
+ re Ehrreich,* 590 F.2d 902, 909-910, 200 USPQ 504, 510 (CCPA 1979) (holding
+ preamble not to be admitted prior art where applicant explained that the
+ *Jepson* format was used to avoid a double patenting rejection in a
+ co-pending application and the examiner cited no art showing the subject matter of the
+ preamble). Moreover, where the preamble of a *Jepson* claim describes
+ applicant’s own work, such may not be used against the claims. *Reading &
+ Bates Construction Co. v. Baker Energy Resources Corp.,* 748 F.2d 645, 650,
+ 223 USPQ 1168, 1172 (Fed. Cir. 1984); *Ehrreich,* 590 F.2d at 909-910,
+ 200 USPQ at 510.
+ 
+
+**IV.** **INFORMATION DISCLOSURE STATEMENT (IDS)**Mere listing of a reference in an information disclosure statement is
+ not taken as an admission that the reference is prior art against the claims.
+ *Riverwood Int’l Corp. v. R.A. Jones & Co.,* 324 F.3d 1346,
+ 1354-55, 66 USPQ2d 1331, 1337-38 (Fed Cir. 2003) (listing of applicant’s own prior
+ patent in an IDS does not make it available as prior art absent a statutory basis);
+ *see also* **[37 CFR
+ 1.97(h)](mpep-9020-appx-r.html#d0e321609)** ("The filing of an information disclosure statement shall
+ not be construed to be an admission that the information cited in the statement is, or
+ is considered to be, material to patentability as defined in **[§ 1.56(b)](mpep-9020-appx-r.html#d0e319407)**.").
+ 
+
+
+[[top]](#top)
+
+
+]

data/2100/s2130.html.txt

@@ -0,0 +1,9 @@
+[
+# 2130 [Reserved]
+
+
+
+[[top]](#top)
+
+
+]

data/2100/s2131.html.txt

@@ -0,0 +1,773 @@
+[
+# 2131 Anticipation — Application of 35 U.S.C. 102 [R-08.2017]
+
+
+ A claimed invention may be rejected under **[35 U.S.C.
+ 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)** when the invention is anticipated (or is "not novel") over a
+ disclosure that is available as prior art. To reject a claim as anticipated by a reference,
+ the disclosure must teach every element required by the claim under its broadest reasonable
+ interpretation. See, e.g., **[MPEP § 2114](s2114.html#d0e201520)**, subsections II and IV.
+ 
+
+
+"A claim is anticipated only if each and every element as set forth in the
+ claim is found, either expressly or inherently described, in a single prior art reference."
+ *Verdegaal Bros. v. Union Oil Co. of California,* 814 F.2d 628, 631, 2
+ USPQ2d 1051, 1053 (Fed. Cir. 1987). "When a claim covers several structures or
+ compositions, either generically or as alternatives, the claim is deemed anticipated if any
+ of the structures or compositions within the scope of the claim is known in the prior art."
+ *Brown v. 3M,* 265 F.3d 1349, 1351, 60 USPQ2d 1375, 1376 (Fed. Cir.
+ 2001) (claim to a system for setting a computer clock to an offset time to address the Year
+ 2000 (Y2K) problem, applicable to records with year date data in "at least one of
+ two-digit, three-digit, or four-digit" representations, was held anticipated by a system
+ that offsets year dates in only two-digit formats). See also **[MPEP § 2131.02](s2131.html#d0e203166)**. "The
+ identical invention must be shown in as complete detail as is contained in the ... claim."
+ *Richardson v. Suzuki Motor Co.,* 868 F.2d 1226, 1236, 9 USPQ2d 1913,
+ 1920 (Fed. Cir. 1989). The elements must be arranged as required by the claim, but this is
+ not an *ipsissimis verbis* test, i.e., identity of terminology is not
+ required. *In re Bond,* 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990).
+ Note that, in some circumstances, it is permissible to use multiple references in a
+ **[35 U.S.C.
+ 102](mpep-9015-appx-l.html#d0e302383)** rejection. See **[MPEP § 2131.01](s2131.html#d0e203057)**.
+ 
+
+
+
+# 2131.01 Multiple Reference 35 U.S.C. 102 Rejections [R-11.2013]
+
+
+Normally, only one reference should be used in making a rejection under
+ **[35 U.S.C.
+ 102](mpep-9015-appx-l.html#d0e302383)**. However, a **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** rejection over
+ multiple references has been held to be proper when the extra references are cited
+ to:
+ 
+
+
+* (A) Prove the primary reference contains an "enabled disclosure;"
+* (B) Explain the meaning of a term used in the primary reference; or
+* (C) Show that a characteristic not disclosed in the reference is
+ inherent.
+
+
+See subsections I-III below for more explanation of each
+ circumstance.
+ 
+
+**I.** **TO PROVE REFERENCE CONTAINS AN "ENABLED DISCLOSURE"*****Extra References and Extrinsic Evidence Can Be Used To Show the
+ Primary Reference Contains an "Enabled Disclosure"***When the claimed composition or machine is disclosed identically
+ by the reference, an additional reference may be relied on to show that the
+ primary reference has an "enabled disclosure." *In re Samour,* 571 F.2d 559, 197 USPQ 1 (CCPA 1978) and *In re
+ Donohue,* 766 F.2d 531, 226 USPQ 619 (Fed. Cir. 1985) (Compound claims
+ were rejected under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)** over
+ a publication in view of two patents. The publication disclosed the claimed
+ compound structure while the patents taught methods of making compounds of that
+ general class. The applicant argued that there was no motivation to combine the
+ references because no utility was previously known for the compound and that the
+ **[35 U.S.C.
+ 102](mpep-9015-appx-l.html#d0e302383)** rejection over multiple references was improper. The
+ court held that the publication taught all the elements of the claim and thus
+ motivation to combine was not required. The patents were only submitted as
+ evidence of what was in the public's possession before applicant’s invention.).
+ 
+ 
+
+**II.** **TO EXPLAIN THE MEANING OF A TERM USED IN THE PRIMARY REFERENCE*****Extra References or Other Evidence Can Be Used to Show Meaning of a
+ Term Used in the Primary Reference***Extrinsic evidence may be used to explain but not expand the
+ meaning of terms and phrases used in the reference relied upon as anticipatory of
+ the claimed subject matter. *In re Baxter Travenol**Labs.,* 952 F.2d 388, 21 USPQ2d 1281 (Fed. Cir. 1991) (Baxter
+ Travenol Labs. invention was directed to a blood bag system incorporating a bag
+ containing DEHP, an additive to the plastic which improved the bag’s red blood
+ cell storage capability. The examiner rejected the claims over a technical
+ progress report by Becker which taught the same blood bag system but did not
+ expressly disclose the presence of DEHP. The report, however, did disclose using
+ commercial blood bags. It also disclosed the blood bag system as "very similar to
+ [Baxter] Travenol’s commercial two bag blood container." Extrinsic evidence
+ (depositions, declarations and Baxter Travenol’s own admissions) showed that
+ commercial blood bags, at the time Becker’s report was written, contained DEHP.
+ Therefore, one of ordinary skill in the art would have known that "commercial
+ blood bags" meant bags containing DEHP. The claims were thus held to be
+ anticipated.).
+ 
+
+**III.** **TO SHOW THAT A CHARACTERISTIC NOT DISCLOSED IN THE REFERENCE IS INHERENT** ***Extra Reference or Evidence Can Be Used To Show an Inherent
+ Characteristic of the Thing Taught by the Primary Reference***"To serve as an anticipation when the reference is silent about
+ the asserted inherent characteristic, such gap in the reference may be filled with
+ recourse to extrinsic evidence. Such evidence must make clear that the missing
+ descriptive matter is necessarily present in the thing described in the reference,
+ and that it would be so recognized by persons of ordinary skill."
+ *Continental Can Co. USA v. Monsanto Co.,* 948 F.2d 1264,
+ 1268, 20 USPQ2d 1746, 1749-50 (Fed. Cir. 1991) (The court went on to explain that
+ "this modest flexibility in the rule that ‘anticipation’ requires that every
+ element of the claims appear in a single reference accommodates situations in
+ which the common knowledge of technologists is not recorded in the reference; that
+ is, where technological facts are known to those in the field of the invention,
+ albeit not known to judges." 948 F.2d at 1268, 20 USPQ at 1749-50.). Note that as
+ long as there is evidence of record establishing inherency, failure of those
+ skilled in the art to contemporaneously recognize an inherent property, function
+ or ingredient of a prior art reference does not preclude a finding of
+ anticipation. *Atlas Powder Co. v. IRECO, Inc.,* 190 F.3d 1342,
+ 1349, 51 USPQ2d 1943, 1948 (Fed. Cir. 1999) (Two prior art references disclosed
+ blasting compositions containing water-in-oil emulsions with identical ingredients
+ to those claimed, in overlapping ranges with the claimed composition. The only
+ element of the claims arguably not present in the prior art compositions was
+ "sufficient aeration . . . entrapped to enhance sensitivity to a substantial
+ degree." The Federal Circuit found that the emulsions described in both references
+ would inevitably and inherently have "sufficient aeration" to sensitize the
+ compound in the claimed ranges based on the evidence of record (including test
+ data and expert testimony). This finding of inherency was not defeated by the fact
+ that one of the references taught away from air entrapment or purposeful
+ aeration.). See also *In re King,* 801 F.2d 1324, 1327, 231 USPQ
+ 136, 139 (Fed. Cir. 1986); *Titanium Metals Corp. v. Banner,* 778
+ F.2d 775, 782, 227 USPQ 773, 778 (Fed. Cir. 1985). See **[MPEP § 2112](s2112.html#d0e201036)** -
+ **[§
+ 2112.02](s2112.html#d0e201360)** for case law on inherency. Also note that the
+ critical date of extrinsic evidence showing a universal fact need not antedate the
+ filing date. See **[MPEP § 2124](s2124.html#d0e202094)**. 
+ 
+
+
+
+
+# 2131.02 Genus-Species Situations [R-08.2017]
+
+**I.** **A SPECIES WILL ANTICIPATE A CLAIM TO A GENUS**"A generic claim cannot be allowed to an applicant if the prior art
+ discloses a species falling within the claimed genus." The species in that case will
+ anticipate the genus. *In re Slayter,* 276 F.2d 408, 411, 125 USPQ
+ 345, 347 (CCPA 1960); *In re Gosteli,* 872 F.2d 1008, 10 USPQ2d 1614
+ (Fed. Cir. 1989) (Gosteli claimed a genus of 21 specific chemical species of bicyclic
+ thia-aza compounds in Markush claims. The prior art reference applied against the
+ claims disclosed two of the chemical species. The parties agreed that the prior art
+ species would anticipate the claims unless applicant was entitled to his foreign
+ priority date.).
+ 
+
+**II.** **A REFERENCE THAT CLEARLY NAMES THE CLAIMED SPECIES ANTICIPATES THE CLAIM NO
+ MATTER HOW MANY OTHER SPECIES ARE NAMED**A genus does not always anticipate a claim to a species within the
+ genus. However, when the species is clearly named, the species claim is anticipated
+ no matter how many other species are additionally named. See *Ex
+ parte**A,* 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) (The claimed
+ compound was named in a reference which also disclosed 45 other compounds. The Board
+ held that the comprehensiveness of the listing did not negate the fact that the
+ compound claimed was specifically taught. The Board compared the facts to the
+ situation in which the compound was found in the *Merck Index,*
+ saying that "the tenth edition of the *Merck Index* lists ten
+ thousand compounds. In our view, each and every one of those compounds is ‘described’
+ as that term is used in **[[pre-AIA] 35 U.S.C. 102(a)](mpep-9015-appx-l.html#d0e302391)**, in
+ that publication."). *Id.* at 1718. See also  *In re
+ Sivaramakrishnan,* 673 F.2d 1383, 213 USPQ 441 (CCPA 1982) (The claims
+ were directed to polycarbonate containing cadmium laurate as an additive. The court
+ upheld the Board’s finding that a reference specifically naming cadmium laurate as an
+ additive amongst a list of many suitable salts in polycarbonate resin anticipated the
+ claims. The applicant had argued that cadmium laurate was only disclosed as
+ representative of the salts and was expected to have the same properties as the other
+ salts listed while, as shown in the application, cadmium laurate had unexpected
+ properties. The court held that it did not matter that the salt was not disclosed as
+ being preferred, the reference still anticipated the claims and because the claim was
+ anticipated, the unexpected properties were immaterial.).
+ 
+
+**III.** **A GENERIC DISCLOSURE WILL ANTICIPATE A CLAIMED SPECIES COVERED BY THAT
+ DISCLOSURE WHEN THE SPECIES CAN BE "AT ONCE ENVISAGED" FROM THE DISCLOSURE** "[W]hether a generic disclosure necessarily
+ anticipates everything within the genus … depends on the factual aspects of the
+ specific disclosure and the particular products at issue." *Sanofi-Synthelabo
+ v. Apotex, Inc.,* 550 F.3d 1075, 1083, 89 USPQ2d 1370, 1375 (Fed. Cir.
+ 2008). See also *Osram Sylvania Inc. v. American Induction Tech.
+ Inc.,* 701 F.3d 698, 706, 105 USPQ2d 1368, 1374 (Fed. Cir. 2012) ("how
+ one of ordinary skill in the art would understand the relative size of a genus or
+ species in a particular technology is of critical importance").
+ 
+
+
+A reference disclosure can anticipate a claim even if
+ the reference does not describe "the limitations arranged or combined as in the
+ claim, if a person of skill in the art, reading the reference, would ‘at once
+ envisage’ the claimed arrangement or combination." *Kennametal, Inc. v.
+ Ingersoll Cutting Tool Co.,* 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254
+ (Fed. Cir. 2015) (quoting *In re Petering,* 301 F.2d 676, 681(CCPA
+ 1962)). In *Kennametal,* the challenged claim was to a cutting tool
+ requiring a ruthenium binding agent with a physical vapor deposition (PVD) coating.
+ Claim 5 of the reference disclosed all the elements of the claimed coated cutting
+ tool, however, ruthenium was one of five specified binding agents and the claim did
+ not specify a particular coating technique. The specification of the reference
+ disclosed PVD as one of three suitable coating techniques. The Federal Circuit stated
+ that the reference’s "express ‘contemplat[ion]’ of PVD coatings provided sufficient
+ evidence that a reasonable mind could find that a person of skill in the art… would
+ immediately envisage applying a PVD coating. Thus, substantial evidence supports the
+ Board's conclusion that [the reference] effectively teaches 15 combinations, of which
+ one anticipates pending claim 1. Though it is true that there is no evidence in [the
+ reference] of ‘actual performance’ of combining the ruthenium binder and PVD
+ coatings, this is not required." *Kennametal,* 780 F.3d at 1383, 114
+ USPQ2d at 1255 (citations omitted).
+ 
+
+
+When a claimed compound is not specifically named in a reference,
+ but instead it is necessary to select portions of teachings within the reference and
+ combine them, e.g., select various substituents from a list of alternatives given for
+ placement at specific sites on a generic chemical formula to arrive at a specific
+ composition, anticipation can only be found if the classes of substituents are
+ sufficiently limited or well delineated. *Ex parte A,* 17 USPQ2d
+ 1716 (Bd. Pat. App. & Inter. 1990). If one of ordinary skill in the art is able
+ to "at once envisage" the specific compound within the generic chemical formula, the
+ compound is anticipated. One of ordinary skill in the art must be able to draw the
+ structural formula or write the name of each of the compounds included in the generic
+ formula before any of the compounds can be "at once envisaged." One may look to the
+ preferred embodiments to determine which compounds can be anticipated. *In re
+ Petering,* 301 F.2d 676, 133 USPQ 275 (CCPA 1962).
+ 
+
+
+In *In re Petering,* the prior art disclosed a
+ generic chemical formula "wherein X, Y, Z, P, and R'-
+ represent either hydrogen or alkyl radicals, R a side chain containing an OH group."
+ The court held that this formula, without more, could not anticipate a claim to
+ 7-methyl-9-[d, l'-ribityl]-isoalloxazine because the
+ generic formula encompassed a vast number and perhaps even an infinite number of
+ compounds. However, the reference also disclosed preferred substituents for X, Y, Z,
+ P, R, and R' as follows: where X, P, and
+ R' are hydrogen, where Y and Z may be hydrogen or
+ methyl, and where R is one of eight specific isoalloxazines. The court determined
+ that this more limited generic class consisted of about 20 compounds. The limited
+ number of compounds covered by the preferred formula in combination with the fact
+ that the number of substituents was low at each site, the ring positions were
+ limited, and there was a large unchanging structural nucleus, resulted in a finding
+ that the reference sufficiently described "each of the various permutations here
+ involved as fully as if he had drawn each structural formula or had written each
+ name." The claimed compound was 1 of these 20 compounds. Therefore, the reference
+ "described" the claimed compound and the reference anticipated the claims.
+ 
+
+
+In *In re Schauman,* 572 F.2d 312, 197 USPQ 5 (CCPA
+ 1978), claims to a specific compound were anticipated because the prior art taught a
+ generic formula embracing a limited number of compounds closely related to each other
+ in structure and the properties possessed by the compound class of the prior art was
+ that disclosed for the claimed compound. The broad generic formula seemed to describe
+ an infinite number of compounds but claim 1 was limited to a structure with only one
+ variable substituent R. This substituent was limited to low alkyl radicals. One of
+ ordinary skill in the art would at once envisage the subject matter within claim 1 of
+ the reference. 
+ 
+
+
+Compare *In re Meyer,* 599 F.2d 1026, 202 USPQ 175
+ (CCPA 1979) (A reference disclosing "alkaline chlorine or bromine solution" embraces
+ a large number of species and cannot be said to anticipate claims to "alkali metal
+ hypochlorite."); *Akzo N.V.**v.**International Trade Comm’n,* 808 F.2d 1471, 1 USPQ2d 1241 (Fed.
+ Cir. 1986) (Claims to a process for making aramid fibers using a 98% solution of
+ sulfuric acid were not anticipated by a reference which disclosed using sulfuric acid
+ solution but which did not disclose using a 98% concentrated sulfuric acid
+ solution.). See **[MPEP §
+ 2144.08](s2144.html#d0e211596)** for a discussion of obviousness in genus-species
+ situations.
+ 
+
+
+
+
+# 2131.03 Anticipation of Ranges [R-10.2019]
+
+**I.** **A SPECIFIC EXAMPLE IN THE PRIOR ART WHICH IS WITHIN A CLAIMED RANGE
+ ANTICIPATES THE RANGE**"[W]hen, as by a recitation of ranges or otherwise, a claim covers
+ several compositions, the claim is ‘anticipated’ if *one* of them is
+ in the prior art." *Titanium Metals Corp.**v. Banner,* 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (citing
+ *In re**Petering,* 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962))
+ (emphasis in original) (Claims to titanium (Ti) alloy with 0.6-0.9% nickel (Ni) and
+ 0.2-0.4% molybdenum (Mo) were held anticipated by a graph in a Russian article on
+ Ti-Mo-Ni alloys because the graph contained an actual data point corresponding to a
+ Ti alloy containing 0.25% Mo and 0.75% Ni and this composition was within the claimed
+ range of compositions.).
+ 
+
+**II.** **PRIOR ART WHICH TEACHES A RANGE OVERLAPPING OR TOUCHING THE CLAIMED RANGE
+ ANTICIPATES IF THE PRIOR ART RANGE DISCLOSES THE CLAIMED RANGE WITH "SUFFICIENT
+ SPECIFICITY"**When the prior art discloses a range which touches or overlaps the
+ claimed range, but no specific examples falling within the claimed range are
+ disclosed, a case by case determination must be made as to anticipation. In order to
+ anticipate the claims, the claimed subject matter must be disclosed in the reference
+ with "sufficient specificity to constitute an anticipation under the statute." What
+ constitutes a "sufficient specificity" is fact dependent. If the claims are directed
+ to a narrow range, and the reference teaches a broader range, other facts of the
+ case, must be considered when determining whether the narrow range is disclosed with
+ "sufficient specificity" to constitute an anticipation of the claims. Compare
+ *ClearValue Inc. v. Pearl River Polymers Inc.,* 668 F.3d 1340,
+ 101 USPQ2d 1773 (Fed. Cir. 2012) with *Atofina v. Great Lakes Chem.
+ Corp,* 441 F.3d 991, 999, 78 USPQ2d 1417, 1423 (Fed. Cir. 2006).
+ 
+
+
+In *ClearValue,* the claim at issue
+ was directed to a process of clarifying water with alkalinity below 50 ppm, whereas
+ the prior art taught that the same process works for systems with alkalinity of 150
+ ppm or less. In holding the claim anticipated, the court observed that "there is no
+ allegation of criticality or any evidence demonstrating any difference across the
+ range." *Id.* at 1345, 101 USPQ2d at 1777. In
+ *Atofina,* the court held that a reference temperature range of
+ 100-500 degrees C did not describe the claimed range of 330-450 degrees C with
+ sufficient specificity to be anticipatory, even though there was a slight overlap
+ between the reference’s preferred range (150-350 degrees C) and the claimed range.
+ "[T]he disclosure of a range is no more a disclosure of the end points of the range
+ than it is each of the intermediate points." *Id.* at 1000, 78
+ USPQ2d at 1424. Patentee described claimed temperature range as "critical" to enable
+ the process to operate effectively, and showed that one of ordinary skill would have
+ expected the synthesis process to operate differently outside the claimed range. 
+ 
+
+
+If the prior art disclosure does not disclose a
+ claimed range with "sufficient specificity" to anticipate a claimed invention, any
+ evidence of unexpected results within the narrow range may render the claims
+ nonobvious. See **[MPEP §
+ 716.02](s716.html#d0e92844)***et seq.* The question of "sufficient specificity" is similar to
+ that of "clearly envisaging" a species from a generic teaching. See
+ **[MPEP
+ § 2131.02](s2131.html#d0e203166)**. 
+ 
+
+
+A **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** and
+ **[103](mpep-9015-appx-l.html#d0e302450)** combination rejection is permitted if it is unclear if the
+ reference teaches the range with "sufficient specificity." The examiner must, in this
+ case, provide reasons for anticipation as well as a reasoned statement regarding
+ obviousness. *Ex parte Lee,* 31 USPQ2d 1105 (Bd. Pat. App. &
+ Inter. 1993) (expanded Board). For a discussion of the obviousness of ranges see
+ **[MPEP
+ § 2144.05](s2144.html#d0e211255)**.
+ 
+
+**III.** **PRIOR ART WHICH TEACHES A VALUE OR RANGE THAT IS VERY CLOSE TO, BUT DOES NOT
+ OVERLAP OR TOUCH, THE CLAIMED RANGE DOES NOT ANTICIPATE THE CLAIMED RANGE**"[A]nticipation under **[§ 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)** can be found only when the
+ reference discloses exactly what is claimed and that where there are differences
+ between the reference disclosure and the claim, the rejection must be based on
+ **[§
+ 103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** which takes differences into account." *Titanium
+ Metals Corp. v. Banner,* 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985)
+ (Claims to titanium (Ti) alloy with 0.8% nickel (Ni) and 0.3% molybdenum (Mo) were
+ not anticipated by, although they were held obvious over, a graph in a Russian
+ article on Ti-Mo-Ni alloys in which the graph contained an actual data point
+ corresponding to a Ti alloy containing 0.25% Mo and 0.75% Ni.).
+ 
+
+
+
+
+# 2131.04 Secondary Considerations [R-08.2012]
+
+
+Evidence of secondary considerations, such as unexpected results or
+ commercial success, is irrelevant to **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** rejections and thus
+ cannot overcome a rejection so based. *In re Wiggins,* 488 F.2d 538,
+ 543, 179 USPQ 421, 425 (CCPA 1973).
+ 
+
+
+
+
+# 2131.05 Nonanalogous or Disparaging Prior Art [R-08.2012]
+
+
+"Arguments that the alleged anticipatory prior art is ‘nonanalogous
+ art’ or ‘teaches away from the invention’ or is not recognized as solving the problem
+ solved by the claimed invention, [are] not ‘germane’ to a rejection under
+ **[section
+ 102](mpep-9015-appx-l.html#d0e302383)**." *Twin Disc, Inc.**v. United States,* 231 USPQ 417, 424 (Cl. Ct. 1986) (quoting
+ *In re Self,* 671 F.2d 1344, 213 USPQ 1, 7 (CCPA 1982)). See also
+ *State Contracting & Eng’ g Corp. v. Condotte America, Inc.,*
+ 346 F.3d 1057, 1068, 68 USPQ2d 1481, 1488 (Fed. Cir. 2003) (The question of whether a
+ reference is analogous art is not relevant to whether that reference anticipates. A
+ reference may be directed to an entirely different problem than the one addressed by the
+ inventor, or may be from an entirely different field of endeavor than that of the
+ claimed invention, yet the reference is still anticipatory if it explicitly or
+ inherently discloses every limitation recited in the claims.).
+ 
+
+
+A reference is no less anticipatory if, after disclosing the invention,
+ the reference then disparages it. The question whether a reference "teaches away" from
+ the invention is inapplicable to an anticipation analysis. *Celeritas
+ Technologies Ltd. v. Rockwell International Corp.,* 150 F.3d 1354, 1361, 47
+ USPQ2d 1516, 1522-23 (Fed. Cir. 1998) (The prior art was held to anticipate the claims
+ even though it taught away from the claimed invention. "The fact that a modem with a
+ single carrier data signal is shown to be less than optimal does not vitiate the fact
+ that it is disclosed."). See *Upsher-Smith Labs. v. Pamlab, LLC,* 412
+ F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005)(claimed composition that
+ expressly excluded an ingredient held anticipated by reference composition that
+ optionally included that same ingredient); see also *Atlas Powder Co. v. IRECO,
+ Inc.,* 190 F.3d 1342, 1349, 51 USPQ2d 1943, 1948 (Fed. Cir. 1999) (Claimed
+ composition was anticipated by prior art reference that inherently met claim limitation
+ of "sufficient aeration" even though reference taught away from air entrapment or
+ purposeful aeration.).
+ 
+
+
+
+[[top]](#top)
+
+
+, 
+# 2131.01 Multiple Reference 35 U.S.C. 102 Rejections [R-11.2013]
+
+
+Normally, only one reference should be used in making a rejection under
+ **[35 U.S.C.
+ 102](mpep-9015-appx-l.html#d0e302383)**. However, a **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** rejection over
+ multiple references has been held to be proper when the extra references are cited
+ to:
+ 
+
+
+* (A) Prove the primary reference contains an "enabled disclosure;"
+* (B) Explain the meaning of a term used in the primary reference; or
+* (C) Show that a characteristic not disclosed in the reference is
+ inherent.
+
+
+See subsections I-III below for more explanation of each
+ circumstance.
+ 
+
+**I.** **TO PROVE REFERENCE CONTAINS AN "ENABLED DISCLOSURE"*****Extra References and Extrinsic Evidence Can Be Used To Show the
+ Primary Reference Contains an "Enabled Disclosure"***When the claimed composition or machine is disclosed identically
+ by the reference, an additional reference may be relied on to show that the
+ primary reference has an "enabled disclosure." *In re Samour,* 571 F.2d 559, 197 USPQ 1 (CCPA 1978) and *In re
+ Donohue,* 766 F.2d 531, 226 USPQ 619 (Fed. Cir. 1985) (Compound claims
+ were rejected under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)** over
+ a publication in view of two patents. The publication disclosed the claimed
+ compound structure while the patents taught methods of making compounds of that
+ general class. The applicant argued that there was no motivation to combine the
+ references because no utility was previously known for the compound and that the
+ **[35 U.S.C.
+ 102](mpep-9015-appx-l.html#d0e302383)** rejection over multiple references was improper. The
+ court held that the publication taught all the elements of the claim and thus
+ motivation to combine was not required. The patents were only submitted as
+ evidence of what was in the public's possession before applicant’s invention.).
+ 
+ 
+
+**II.** **TO EXPLAIN THE MEANING OF A TERM USED IN THE PRIMARY REFERENCE*****Extra References or Other Evidence Can Be Used to Show Meaning of a
+ Term Used in the Primary Reference***Extrinsic evidence may be used to explain but not expand the
+ meaning of terms and phrases used in the reference relied upon as anticipatory of
+ the claimed subject matter. *In re Baxter Travenol**Labs.,* 952 F.2d 388, 21 USPQ2d 1281 (Fed. Cir. 1991) (Baxter
+ Travenol Labs. invention was directed to a blood bag system incorporating a bag
+ containing DEHP, an additive to the plastic which improved the bag’s red blood
+ cell storage capability. The examiner rejected the claims over a technical
+ progress report by Becker which taught the same blood bag system but did not
+ expressly disclose the presence of DEHP. The report, however, did disclose using
+ commercial blood bags. It also disclosed the blood bag system as "very similar to
+ [Baxter] Travenol’s commercial two bag blood container." Extrinsic evidence
+ (depositions, declarations and Baxter Travenol’s own admissions) showed that
+ commercial blood bags, at the time Becker’s report was written, contained DEHP.
+ Therefore, one of ordinary skill in the art would have known that "commercial
+ blood bags" meant bags containing DEHP. The claims were thus held to be
+ anticipated.).
+ 
+
+**III.** **TO SHOW THAT A CHARACTERISTIC NOT DISCLOSED IN THE REFERENCE IS INHERENT** ***Extra Reference or Evidence Can Be Used To Show an Inherent
+ Characteristic of the Thing Taught by the Primary Reference***"To serve as an anticipation when the reference is silent about
+ the asserted inherent characteristic, such gap in the reference may be filled with
+ recourse to extrinsic evidence. Such evidence must make clear that the missing
+ descriptive matter is necessarily present in the thing described in the reference,
+ and that it would be so recognized by persons of ordinary skill."
+ *Continental Can Co. USA v. Monsanto Co.,* 948 F.2d 1264,
+ 1268, 20 USPQ2d 1746, 1749-50 (Fed. Cir. 1991) (The court went on to explain that
+ "this modest flexibility in the rule that ‘anticipation’ requires that every
+ element of the claims appear in a single reference accommodates situations in
+ which the common knowledge of technologists is not recorded in the reference; that
+ is, where technological facts are known to those in the field of the invention,
+ albeit not known to judges." 948 F.2d at 1268, 20 USPQ at 1749-50.). Note that as
+ long as there is evidence of record establishing inherency, failure of those
+ skilled in the art to contemporaneously recognize an inherent property, function
+ or ingredient of a prior art reference does not preclude a finding of
+ anticipation. *Atlas Powder Co. v. IRECO, Inc.,* 190 F.3d 1342,
+ 1349, 51 USPQ2d 1943, 1948 (Fed. Cir. 1999) (Two prior art references disclosed
+ blasting compositions containing water-in-oil emulsions with identical ingredients
+ to those claimed, in overlapping ranges with the claimed composition. The only
+ element of the claims arguably not present in the prior art compositions was
+ "sufficient aeration . . . entrapped to enhance sensitivity to a substantial
+ degree." The Federal Circuit found that the emulsions described in both references
+ would inevitably and inherently have "sufficient aeration" to sensitize the
+ compound in the claimed ranges based on the evidence of record (including test
+ data and expert testimony). This finding of inherency was not defeated by the fact
+ that one of the references taught away from air entrapment or purposeful
+ aeration.). See also *In re King,* 801 F.2d 1324, 1327, 231 USPQ
+ 136, 139 (Fed. Cir. 1986); *Titanium Metals Corp. v. Banner,* 778
+ F.2d 775, 782, 227 USPQ 773, 778 (Fed. Cir. 1985). See **[MPEP § 2112](s2112.html#d0e201036)** -
+ **[§
+ 2112.02](s2112.html#d0e201360)** for case law on inherency. Also note that the
+ critical date of extrinsic evidence showing a universal fact need not antedate the
+ filing date. See **[MPEP § 2124](s2124.html#d0e202094)**. 
+ 
+
+
+, 
+# 2131.02 Genus-Species Situations [R-08.2017]
+
+**I.** **A SPECIES WILL ANTICIPATE A CLAIM TO A GENUS**"A generic claim cannot be allowed to an applicant if the prior art
+ discloses a species falling within the claimed genus." The species in that case will
+ anticipate the genus. *In re Slayter,* 276 F.2d 408, 411, 125 USPQ
+ 345, 347 (CCPA 1960); *In re Gosteli,* 872 F.2d 1008, 10 USPQ2d 1614
+ (Fed. Cir. 1989) (Gosteli claimed a genus of 21 specific chemical species of bicyclic
+ thia-aza compounds in Markush claims. The prior art reference applied against the
+ claims disclosed two of the chemical species. The parties agreed that the prior art
+ species would anticipate the claims unless applicant was entitled to his foreign
+ priority date.).
+ 
+
+**II.** **A REFERENCE THAT CLEARLY NAMES THE CLAIMED SPECIES ANTICIPATES THE CLAIM NO
+ MATTER HOW MANY OTHER SPECIES ARE NAMED**A genus does not always anticipate a claim to a species within the
+ genus. However, when the species is clearly named, the species claim is anticipated
+ no matter how many other species are additionally named. See *Ex
+ parte**A,* 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) (The claimed
+ compound was named in a reference which also disclosed 45 other compounds. The Board
+ held that the comprehensiveness of the listing did not negate the fact that the
+ compound claimed was specifically taught. The Board compared the facts to the
+ situation in which the compound was found in the *Merck Index,*
+ saying that "the tenth edition of the *Merck Index* lists ten
+ thousand compounds. In our view, each and every one of those compounds is ‘described’
+ as that term is used in **[[pre-AIA] 35 U.S.C. 102(a)](mpep-9015-appx-l.html#d0e302391)**, in
+ that publication."). *Id.* at 1718. See also  *In re
+ Sivaramakrishnan,* 673 F.2d 1383, 213 USPQ 441 (CCPA 1982) (The claims
+ were directed to polycarbonate containing cadmium laurate as an additive. The court
+ upheld the Board’s finding that a reference specifically naming cadmium laurate as an
+ additive amongst a list of many suitable salts in polycarbonate resin anticipated the
+ claims. The applicant had argued that cadmium laurate was only disclosed as
+ representative of the salts and was expected to have the same properties as the other
+ salts listed while, as shown in the application, cadmium laurate had unexpected
+ properties. The court held that it did not matter that the salt was not disclosed as
+ being preferred, the reference still anticipated the claims and because the claim was
+ anticipated, the unexpected properties were immaterial.).
+ 
+
+**III.** **A GENERIC DISCLOSURE WILL ANTICIPATE A CLAIMED SPECIES COVERED BY THAT
+ DISCLOSURE WHEN THE SPECIES CAN BE "AT ONCE ENVISAGED" FROM THE DISCLOSURE** "[W]hether a generic disclosure necessarily
+ anticipates everything within the genus … depends on the factual aspects of the
+ specific disclosure and the particular products at issue." *Sanofi-Synthelabo
+ v. Apotex, Inc.,* 550 F.3d 1075, 1083, 89 USPQ2d 1370, 1375 (Fed. Cir.
+ 2008). See also *Osram Sylvania Inc. v. American Induction Tech.
+ Inc.,* 701 F.3d 698, 706, 105 USPQ2d 1368, 1374 (Fed. Cir. 2012) ("how
+ one of ordinary skill in the art would understand the relative size of a genus or
+ species in a particular technology is of critical importance").
+ 
+
+
+A reference disclosure can anticipate a claim even if
+ the reference does not describe "the limitations arranged or combined as in the
+ claim, if a person of skill in the art, reading the reference, would ‘at once
+ envisage’ the claimed arrangement or combination." *Kennametal, Inc. v.
+ Ingersoll Cutting Tool Co.,* 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254
+ (Fed. Cir. 2015) (quoting *In re Petering,* 301 F.2d 676, 681(CCPA
+ 1962)). In *Kennametal,* the challenged claim was to a cutting tool
+ requiring a ruthenium binding agent with a physical vapor deposition (PVD) coating.
+ Claim 5 of the reference disclosed all the elements of the claimed coated cutting
+ tool, however, ruthenium was one of five specified binding agents and the claim did
+ not specify a particular coating technique. The specification of the reference
+ disclosed PVD as one of three suitable coating techniques. The Federal Circuit stated
+ that the reference’s "express ‘contemplat[ion]’ of PVD coatings provided sufficient
+ evidence that a reasonable mind could find that a person of skill in the art… would
+ immediately envisage applying a PVD coating. Thus, substantial evidence supports the
+ Board's conclusion that [the reference] effectively teaches 15 combinations, of which
+ one anticipates pending claim 1. Though it is true that there is no evidence in [the
+ reference] of ‘actual performance’ of combining the ruthenium binder and PVD
+ coatings, this is not required." *Kennametal,* 780 F.3d at 1383, 114
+ USPQ2d at 1255 (citations omitted).
+ 
+
+
+When a claimed compound is not specifically named in a reference,
+ but instead it is necessary to select portions of teachings within the reference and
+ combine them, e.g., select various substituents from a list of alternatives given for
+ placement at specific sites on a generic chemical formula to arrive at a specific
+ composition, anticipation can only be found if the classes of substituents are
+ sufficiently limited or well delineated. *Ex parte A,* 17 USPQ2d
+ 1716 (Bd. Pat. App. & Inter. 1990). If one of ordinary skill in the art is able
+ to "at once envisage" the specific compound within the generic chemical formula, the
+ compound is anticipated. One of ordinary skill in the art must be able to draw the
+ structural formula or write the name of each of the compounds included in the generic
+ formula before any of the compounds can be "at once envisaged." One may look to the
+ preferred embodiments to determine which compounds can be anticipated. *In re
+ Petering,* 301 F.2d 676, 133 USPQ 275 (CCPA 1962).
+ 
+
+
+In *In re Petering,* the prior art disclosed a
+ generic chemical formula "wherein X, Y, Z, P, and R'-
+ represent either hydrogen or alkyl radicals, R a side chain containing an OH group."
+ The court held that this formula, without more, could not anticipate a claim to
+ 7-methyl-9-[d, l'-ribityl]-isoalloxazine because the
+ generic formula encompassed a vast number and perhaps even an infinite number of
+ compounds. However, the reference also disclosed preferred substituents for X, Y, Z,
+ P, R, and R' as follows: where X, P, and
+ R' are hydrogen, where Y and Z may be hydrogen or
+ methyl, and where R is one of eight specific isoalloxazines. The court determined
+ that this more limited generic class consisted of about 20 compounds. The limited
+ number of compounds covered by the preferred formula in combination with the fact
+ that the number of substituents was low at each site, the ring positions were
+ limited, and there was a large unchanging structural nucleus, resulted in a finding
+ that the reference sufficiently described "each of the various permutations here
+ involved as fully as if he had drawn each structural formula or had written each
+ name." The claimed compound was 1 of these 20 compounds. Therefore, the reference
+ "described" the claimed compound and the reference anticipated the claims.
+ 
+
+
+In *In re Schauman,* 572 F.2d 312, 197 USPQ 5 (CCPA
+ 1978), claims to a specific compound were anticipated because the prior art taught a
+ generic formula embracing a limited number of compounds closely related to each other
+ in structure and the properties possessed by the compound class of the prior art was
+ that disclosed for the claimed compound. The broad generic formula seemed to describe
+ an infinite number of compounds but claim 1 was limited to a structure with only one
+ variable substituent R. This substituent was limited to low alkyl radicals. One of
+ ordinary skill in the art would at once envisage the subject matter within claim 1 of
+ the reference. 
+ 
+
+
+Compare *In re Meyer,* 599 F.2d 1026, 202 USPQ 175
+ (CCPA 1979) (A reference disclosing "alkaline chlorine or bromine solution" embraces
+ a large number of species and cannot be said to anticipate claims to "alkali metal
+ hypochlorite."); *Akzo N.V.**v.**International Trade Comm’n,* 808 F.2d 1471, 1 USPQ2d 1241 (Fed.
+ Cir. 1986) (Claims to a process for making aramid fibers using a 98% solution of
+ sulfuric acid were not anticipated by a reference which disclosed using sulfuric acid
+ solution but which did not disclose using a 98% concentrated sulfuric acid
+ solution.). See **[MPEP §
+ 2144.08](s2144.html#d0e211596)** for a discussion of obviousness in genus-species
+ situations.
+ 
+
+
+, 
+# 2131.03 Anticipation of Ranges [R-10.2019]
+
+**I.** **A SPECIFIC EXAMPLE IN THE PRIOR ART WHICH IS WITHIN A CLAIMED RANGE
+ ANTICIPATES THE RANGE**"[W]hen, as by a recitation of ranges or otherwise, a claim covers
+ several compositions, the claim is ‘anticipated’ if *one* of them is
+ in the prior art." *Titanium Metals Corp.**v. Banner,* 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (citing
+ *In re**Petering,* 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962))
+ (emphasis in original) (Claims to titanium (Ti) alloy with 0.6-0.9% nickel (Ni) and
+ 0.2-0.4% molybdenum (Mo) were held anticipated by a graph in a Russian article on
+ Ti-Mo-Ni alloys because the graph contained an actual data point corresponding to a
+ Ti alloy containing 0.25% Mo and 0.75% Ni and this composition was within the claimed
+ range of compositions.).
+ 
+
+**II.** **PRIOR ART WHICH TEACHES A RANGE OVERLAPPING OR TOUCHING THE CLAIMED RANGE
+ ANTICIPATES IF THE PRIOR ART RANGE DISCLOSES THE CLAIMED RANGE WITH "SUFFICIENT
+ SPECIFICITY"**When the prior art discloses a range which touches or overlaps the
+ claimed range, but no specific examples falling within the claimed range are
+ disclosed, a case by case determination must be made as to anticipation. In order to
+ anticipate the claims, the claimed subject matter must be disclosed in the reference
+ with "sufficient specificity to constitute an anticipation under the statute." What
+ constitutes a "sufficient specificity" is fact dependent. If the claims are directed
+ to a narrow range, and the reference teaches a broader range, other facts of the
+ case, must be considered when determining whether the narrow range is disclosed with
+ "sufficient specificity" to constitute an anticipation of the claims. Compare
+ *ClearValue Inc. v. Pearl River Polymers Inc.,* 668 F.3d 1340,
+ 101 USPQ2d 1773 (Fed. Cir. 2012) with *Atofina v. Great Lakes Chem.
+ Corp,* 441 F.3d 991, 999, 78 USPQ2d 1417, 1423 (Fed. Cir. 2006).
+ 
+
+
+In *ClearValue,* the claim at issue
+ was directed to a process of clarifying water with alkalinity below 50 ppm, whereas
+ the prior art taught that the same process works for systems with alkalinity of 150
+ ppm or less. In holding the claim anticipated, the court observed that "there is no
+ allegation of criticality or any evidence demonstrating any difference across the
+ range." *Id.* at 1345, 101 USPQ2d at 1777. In
+ *Atofina,* the court held that a reference temperature range of
+ 100-500 degrees C did not describe the claimed range of 330-450 degrees C with
+ sufficient specificity to be anticipatory, even though there was a slight overlap
+ between the reference’s preferred range (150-350 degrees C) and the claimed range.
+ "[T]he disclosure of a range is no more a disclosure of the end points of the range
+ than it is each of the intermediate points." *Id.* at 1000, 78
+ USPQ2d at 1424. Patentee described claimed temperature range as "critical" to enable
+ the process to operate effectively, and showed that one of ordinary skill would have
+ expected the synthesis process to operate differently outside the claimed range. 
+ 
+
+
+If the prior art disclosure does not disclose a
+ claimed range with "sufficient specificity" to anticipate a claimed invention, any
+ evidence of unexpected results within the narrow range may render the claims
+ nonobvious. See **[MPEP §
+ 716.02](s716.html#d0e92844)***et seq.* The question of "sufficient specificity" is similar to
+ that of "clearly envisaging" a species from a generic teaching. See
+ **[MPEP
+ § 2131.02](s2131.html#d0e203166)**. 
+ 
+
+
+A **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** and
+ **[103](mpep-9015-appx-l.html#d0e302450)** combination rejection is permitted if it is unclear if the
+ reference teaches the range with "sufficient specificity." The examiner must, in this
+ case, provide reasons for anticipation as well as a reasoned statement regarding
+ obviousness. *Ex parte Lee,* 31 USPQ2d 1105 (Bd. Pat. App. &
+ Inter. 1993) (expanded Board). For a discussion of the obviousness of ranges see
+ **[MPEP
+ § 2144.05](s2144.html#d0e211255)**.
+ 
+
+**III.** **PRIOR ART WHICH TEACHES A VALUE OR RANGE THAT IS VERY CLOSE TO, BUT DOES NOT
+ OVERLAP OR TOUCH, THE CLAIMED RANGE DOES NOT ANTICIPATE THE CLAIMED RANGE**"[A]nticipation under **[§ 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)** can be found only when the
+ reference discloses exactly what is claimed and that where there are differences
+ between the reference disclosure and the claim, the rejection must be based on
+ **[§
+ 103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** which takes differences into account." *Titanium
+ Metals Corp. v. Banner,* 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985)
+ (Claims to titanium (Ti) alloy with 0.8% nickel (Ni) and 0.3% molybdenum (Mo) were
+ not anticipated by, although they were held obvious over, a graph in a Russian
+ article on Ti-Mo-Ni alloys in which the graph contained an actual data point
+ corresponding to a Ti alloy containing 0.25% Mo and 0.75% Ni.).
+ 
+
+
+, 
+# 2131.04 Secondary Considerations [R-08.2012]
+
+
+Evidence of secondary considerations, such as unexpected results or
+ commercial success, is irrelevant to **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** rejections and thus
+ cannot overcome a rejection so based. *In re Wiggins,* 488 F.2d 538,
+ 543, 179 USPQ 421, 425 (CCPA 1973).
+ 
+
+
+, 
+# 2131.05 Nonanalogous or Disparaging Prior Art [R-08.2012]
+
+
+"Arguments that the alleged anticipatory prior art is ‘nonanalogous
+ art’ or ‘teaches away from the invention’ or is not recognized as solving the problem
+ solved by the claimed invention, [are] not ‘germane’ to a rejection under
+ **[section
+ 102](mpep-9015-appx-l.html#d0e302383)**." *Twin Disc, Inc.**v. United States,* 231 USPQ 417, 424 (Cl. Ct. 1986) (quoting
+ *In re Self,* 671 F.2d 1344, 213 USPQ 1, 7 (CCPA 1982)). See also
+ *State Contracting & Eng’ g Corp. v. Condotte America, Inc.,*
+ 346 F.3d 1057, 1068, 68 USPQ2d 1481, 1488 (Fed. Cir. 2003) (The question of whether a
+ reference is analogous art is not relevant to whether that reference anticipates. A
+ reference may be directed to an entirely different problem than the one addressed by the
+ inventor, or may be from an entirely different field of endeavor than that of the
+ claimed invention, yet the reference is still anticipatory if it explicitly or
+ inherently discloses every limitation recited in the claims.).
+ 
+
+
+A reference is no less anticipatory if, after disclosing the invention,
+ the reference then disparages it. The question whether a reference "teaches away" from
+ the invention is inapplicable to an anticipation analysis. *Celeritas
+ Technologies Ltd. v. Rockwell International Corp.,* 150 F.3d 1354, 1361, 47
+ USPQ2d 1516, 1522-23 (Fed. Cir. 1998) (The prior art was held to anticipate the claims
+ even though it taught away from the claimed invention. "The fact that a modem with a
+ single carrier data signal is shown to be less than optimal does not vitiate the fact
+ that it is disclosed."). See *Upsher-Smith Labs. v. Pamlab, LLC,* 412
+ F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005)(claimed composition that
+ expressly excluded an ingredient held anticipated by reference composition that
+ optionally included that same ingredient); see also *Atlas Powder Co. v. IRECO,
+ Inc.,* 190 F.3d 1342, 1349, 51 USPQ2d 1943, 1948 (Fed. Cir. 1999) (Claimed
+ composition was anticipated by prior art reference that inherently met claim limitation
+ of "sufficient aeration" even though reference taught away from air entrapment or
+ purposeful aeration.).
+ 
+
+
+]

data/2100/s2132.html.txt

@@ -0,0 +1,462 @@
+[
+# 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)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See **[MPEP §
+ 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is subject to
+ examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject to those
+ provisions. See **[MPEP § 2152](s2152.html#ch2100_d20033_18e23_3ce)** et seq. for a detailed
+ discussion of **[AIA 35 U.S.C. 102(a) and (b)](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+
+
+#### *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)](mpep-9015-appx-l.html#d0e302391)**], 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](s2128.html#d0e202564)** - **[§ 2128.02](s2128.html#d0e202804)** 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)](mpep-9015-appx-l.html#d0e302383)** 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)](mpep-9015-appx-l.html#d0e302383)** 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)](mpep-9015-appx-l.html#d0e302383)**. *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](mpep-9015-appx-l.html#d0e302559)** 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)](mpep-9015-appx-l.html#d0e302383)** 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)](mpep-9015-appx-l.html#d0e302383)**
+ 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)](mpep-9015-appx-l.html#d0e302383)** 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)](mpep-9015-appx-l.html#d0e302383)**
+ including publications as well as public knowledge and use. Any other interpretation
+ of **[pre-AIA 35
+ U.S.C. 102(a)](mpep-9015-appx-l.html#d0e302383)** "would negate the one year [grace] period
+ afforded under **[§
+ 102(b)](mpep-9015-appx-l.html#d0e302395)**." *In re Katz,* 687 F.2d 450, 215 USPQ
+ 14 (CCPA 1982).
+ 
+
+**IV.** **"PATENTED IN THIS OR A FOREIGN COUNTRY"**See **[MPEP
+ § 2126](s2126.html#d0e202195)** 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)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See
+ **[MPEP
+ § 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is
+ subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject to
+ those provisions. See **[MPEP § 2152](s2152.html#ch2100_d20033_18e23_3ce)** et seq. for a detailed
+ discussion of **[AIA 35 U.S.C. 102(a) and
+ (b)](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.*
+
+
+*"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](s2310.html#ch2300_d2988c_24ad0_c7)** et seq.]*
+
+
+In all applications, an applicant may overcome a
+ **[pre-AIA 35 U.S.C.
+ 102](mpep-9015-appx-l.html#d0e302383)** 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](mpep-9015-appx-l.html#d0e302383)** prior art depend on the applicable paragraph of
+ **[pre-AIA 35 U.S.C.
+ 102](mpep-9015-appx-l.html#d0e302383)**. See **[MPEP § 2133.02(a)](s2133.html#ch2100_d2c183_21092_1c6)** for overcoming a
+ rejection under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#al_d1d85b_11e7d_156)** and
+ **[MPEP §
+ 2136.05](s2136.html#d0e206333)***et seq.* for overcoming a rejection under **[pre-AIA 35 U.S.C.
+ 102(e)](mpep-9015-appx-l.html#d0e302407)**. 
+ 
+
+
+A rejection based on **[pre-AIA 35 U.S.C. 102(a)](mpep-9015-appx-l.html#d0e302383)** 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)](mpep-9020-appx-r.html#aia_d0e323504)** 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)](mpep-9020-appx-r.html#d0e359662)** (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](s715.html#d0e89737)** for
+ information on the requirements of **[37 CFR 1.131(a)](mpep-9020-appx-r.html#aia_d0e323504)** 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)](mpep-9020-appx-r.html#aia_d0e323504)** is not appropriate to overcome the rejection.
+* (D) Filing an affidavit or declaration under **[37 CFR 1.132](mpep-9020-appx-r.html#d0e323552)**
+ 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)](s715.html#d0e90674)**,
+ **[715.01(c)](s715.html#d0e90779)**, and **[716.10](s716.html#d0e93797)**;
+* (E) Submitting and perfecting a claim to priority under
+ **[35 U.S.C.
+ 119(a)](mpep-9015-appx-l.html#d0e302921)** - **[(d)](mpep-9015-appx-l.html#d0e302947)**. See **[MPEP §
+ 216](s216.html#ch200_d1ff72_27189_3b)**;
+* (F) Submitting and perfecting a benefit claim under **[35 U.S.C.
+ 119(e)](mpep-9015-appx-l.html#d0e302921)** or **[120](mpep-9015-appx-l.html#d0e303023313)**. See **[MPEP §
+ 211](s211.html#ch200_d1ff71_1bd25_18b)** *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)](mpep-9015-appx-l.html#d0e302383)** 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](s2128.html#d0e202564)** 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)](mpep-9015-appx-l.html#d0e302383)** rejection should be made. See **[MPEP § 2136](s2136.html#d0e205544)** -
+ **[§
+ 2136.05](s2136.html#d0e206333)** for case law dealing with **[pre-AIA 35 U.S.C.
+ 102(e)](mpep-9015-appx-l.html#d0e302407)**.
+ 
+
+
+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)](mpep-9015-appx-l.html#d0e302383)**.
+ *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](mpep-9020-appx-r.html#d0e323552)** 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](mpep-9015-appx-l.html#d0e302886)**, 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)](mpep-9015-appx-l.html#d0e302383)** but the Board treated the issue the same as if it
+ had arisen under **[pre-AIA 35 U.S.C. 102(a)](mpep-9015-appx-l.html#d0e302383)**. See also case law dealing with
+ overcoming **[pre-AIA
+ 35 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302407)** rejections as presented in
+ **[MPEP §
+ 2136.05](s2136.html#d0e206333)**. 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)](mpep-9015-appx-l.html#d0e302383)**, applicant can overcome the rejection by swearing back of
+ the reference through the submission of an affidavit under **[37 CFR
+ 1.131](mpep-9020-appx-r.html#aia_d0e323504)**. *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](mpep-9020-appx-r.html#aia_d0e323504)** affidavit to antedate the reference or a
+ **[37 CFR
+ 1.132](mpep-9020-appx-r.html#d0e323552)** 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](s715.html#d0e89737)** for more information on when an affidavit under
+ **[37 CFR
+ 1.131](mpep-9020-appx-r.html#aia_d0e323504)** can be used to overcome a reference and what evidence is
+ required.
+ 
+
+
+
+[[top]](#top)
+
+
+, 
+# 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)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See
+ **[MPEP
+ § 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is
+ subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject to
+ those provisions. See **[MPEP § 2152](s2152.html#ch2100_d20033_18e23_3ce)** et seq. for a detailed
+ discussion of **[AIA 35 U.S.C. 102(a) and
+ (b)](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.*
+
+
+*"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](s2310.html#ch2300_d2988c_24ad0_c7)** et seq.]*
+
+
+In all applications, an applicant may overcome a
+ **[pre-AIA 35 U.S.C.
+ 102](mpep-9015-appx-l.html#d0e302383)** 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](mpep-9015-appx-l.html#d0e302383)** prior art depend on the applicable paragraph of
+ **[pre-AIA 35 U.S.C.
+ 102](mpep-9015-appx-l.html#d0e302383)**. See **[MPEP § 2133.02(a)](s2133.html#ch2100_d2c183_21092_1c6)** for overcoming a
+ rejection under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#al_d1d85b_11e7d_156)** and
+ **[MPEP §
+ 2136.05](s2136.html#d0e206333)***et seq.* for overcoming a rejection under **[pre-AIA 35 U.S.C.
+ 102(e)](mpep-9015-appx-l.html#d0e302407)**. 
+ 
+
+
+A rejection based on **[pre-AIA 35 U.S.C. 102(a)](mpep-9015-appx-l.html#d0e302383)** 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)](mpep-9020-appx-r.html#aia_d0e323504)** 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)](mpep-9020-appx-r.html#d0e359662)** (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](s715.html#d0e89737)** for
+ information on the requirements of **[37 CFR 1.131(a)](mpep-9020-appx-r.html#aia_d0e323504)** 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)](mpep-9020-appx-r.html#aia_d0e323504)** is not appropriate to overcome the rejection.
+* (D) Filing an affidavit or declaration under **[37 CFR 1.132](mpep-9020-appx-r.html#d0e323552)**
+ 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)](s715.html#d0e90674)**,
+ **[715.01(c)](s715.html#d0e90779)**, and **[716.10](s716.html#d0e93797)**;
+* (E) Submitting and perfecting a claim to priority under
+ **[35 U.S.C.
+ 119(a)](mpep-9015-appx-l.html#d0e302921)** - **[(d)](mpep-9015-appx-l.html#d0e302947)**. See **[MPEP §
+ 216](s216.html#ch200_d1ff72_27189_3b)**;
+* (F) Submitting and perfecting a benefit claim under **[35 U.S.C.
+ 119(e)](mpep-9015-appx-l.html#d0e302921)** or **[120](mpep-9015-appx-l.html#d0e303023313)**. See **[MPEP §
+ 211](s211.html#ch200_d1ff71_1bd25_18b)** *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)](mpep-9015-appx-l.html#d0e302383)** 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](s2128.html#d0e202564)** 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)](mpep-9015-appx-l.html#d0e302383)** rejection should be made. See **[MPEP § 2136](s2136.html#d0e205544)** -
+ **[§
+ 2136.05](s2136.html#d0e206333)** for case law dealing with **[pre-AIA 35 U.S.C.
+ 102(e)](mpep-9015-appx-l.html#d0e302407)**.
+ 
+
+
+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)](mpep-9015-appx-l.html#d0e302383)**.
+ *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](mpep-9020-appx-r.html#d0e323552)** 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](mpep-9015-appx-l.html#d0e302886)**, 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)](mpep-9015-appx-l.html#d0e302383)** but the Board treated the issue the same as if it
+ had arisen under **[pre-AIA 35 U.S.C. 102(a)](mpep-9015-appx-l.html#d0e302383)**. See also case law dealing with
+ overcoming **[pre-AIA
+ 35 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302407)** rejections as presented in
+ **[MPEP §
+ 2136.05](s2136.html#d0e206333)**. 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)](mpep-9015-appx-l.html#d0e302383)**, applicant can overcome the rejection by swearing back of
+ the reference through the submission of an affidavit under **[37 CFR
+ 1.131](mpep-9020-appx-r.html#aia_d0e323504)**. *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](mpep-9020-appx-r.html#aia_d0e323504)** affidavit to antedate the reference or a
+ **[37 CFR
+ 1.132](mpep-9020-appx-r.html#d0e323552)** 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](s715.html#d0e89737)** for more information on when an affidavit under
+ **[37 CFR
+ 1.131](mpep-9020-appx-r.html#aia_d0e323504)** can be used to overcome a reference and what evidence is
+ required.
+ 
+
+
+]

data/2100/s2134.html.txt

@@ -0,0 +1,98 @@
+[
+# 2134 Pre-AIA 35 U.S.C. 102(c) [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)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See **[MPEP §
+ 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is subject to
+ examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject to those
+ provisions.]*
+
+
+Under **[pre-AIA 35 U.S.C. 102(c)](mpep-9015-appx-l.html#d0e302383)**, abandonment of the "invention" (as
+ distinguished from abandonment of an application) results in loss of right to a patent.
+ 
+
+
+
+#### *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 -
+
+
+\*\*\*\*\*
+
+
+* (c) he has abandoned the invention.
+
+
+\*\*\*\*\*
+
+
+**I.** **UNDER 35 U.S.C. 102(c), AN ABANDONMENT MUST BE INTENTIONAL**"Actual abandonment under **[pre-AIA 35 U.S.C. 102(c)](mpep-9015-appx-l.html#d0e302383)** requires
+ that the inventor intend to abandon the invention, and intent can be implied from the
+ inventor’s conduct with respect to the invention. *In re Gibbs,*
+ 437 F.2d 486, 168 USPQ 578 (CCPA 1971). Such intent to abandon the invention will not be
+ imputed, and every reasonable doubt should be resolved in favor of the inventor."
+ *Ex parte Dunne,* 20 USPQ2d 1479 (Bd. Pat. App. & Inter.
+ 1991).
+ 
+
+**II.** **DELAY IN MAKING FIRST APPLICATION**Abandonment under **[pre-AIA 35 U.S.C. 102(c)](mpep-9015-appx-l.html#d0e302383)** requires a
+ deliberate, though not necessarily express, surrender of any rights to a patent. To
+ abandon the invention the inventor must intend a dedication to the public. Such
+ dedication may be either express or implied, by actions or inactions of the inventor.
+ *U.S. Rifle & Cartridge Co. v. Whitney Arms Co.,* 118 U.S. 22,
+ 25 (1886); *Consolidated Fruit–Jar Co. v. Wright,* 94 U.S. 92, 96
+ (1876). Delay alone is not sufficient to infer the requisite intent to abandon.
+ *Lovell v. Peer,* 148 F.2d 212, 214, 65 USPQ 127, 129 (CCPA 1945).
+ See also *Moore v. United**States,* 194 USPQ 423, 428 (Ct. Cl. 1977) (The drafting and retention
+ in his own files of two patent applications by inventor indicates an intent to retain
+ his invention; delay in filing the applications was not sufficient to establish
+ abandonment); but see *Davis Harvester Co., Inc. v. Long Mfg. Co.,* 252
+ F. Supp. 989, 1009-10, 149 USPQ 420, 435-436 (E.D. N.C. 1966) (Where the inventor does
+ nothing over a period of time to develop or patent his invention, ridicules the attempts
+ of another to develop that invention and begins to show active interest in promoting and
+ developing his invention only after successful marketing by another of a device
+ embodying that invention, the inventor has abandoned his invention under
+ **[pre-AIA 35 U.S.C.
+ 102(c)](mpep-9015-appx-l.html#d0e302383)**.).
+ 
+
+**III.** **DELAY IN REAPPLYING FOR PATENT AFTER ABANDONMENT OF PREVIOUS PATENT
+ APPLICATION**Where there is no evidence of expressed intent or conduct by inventor
+ to abandon the invention, delay in reapplying for patent after abandonment of a previous
+ application does not constitute abandonment under **[pre-AIA 35 U.S.C. 102(c)](mpep-9015-appx-l.html#d0e302383)**.
+ *Petersen v. Fee Int’l, Ltd.,* 381 F. Supp. 1071, 182 USPQ 264 (W.D.
+ Okla. 1974).
+ 
+
+**IV.** **DISCLOSURE WITHOUT CLAIMING IN A PRIOR ISSUED PATENT**Any inference of abandonment (i.e., intent to dedicate to the public)
+ of subject matter disclosed but not claimed in a previously issued patent is rebuttable
+ by an application filed at any time before a statutory bar arises. Accordingly, a
+ rejection of a claim of a patent application under **[pre-AIA 35 U.S.C. 102(c)](mpep-9015-appx-l.html#d0e302383)** predicated
+ solely on the issuance of a patent which discloses the subject matter of the claim in
+ the application without claiming it would be improper, regardless of whether there is
+ copendency between the application at issue and the application which issued as the
+ patent. *In re Gibbs,* 437 F.2d 486, 168 USPQ 578 (CCPA 1971).
+ 
+
+**V.** **ONLY WHEN THERE IS A PRIORITY CONTEST CAN A LAPSE OF TIME BAR A PATENT**The mere lapse of time will not bar a patent. The only exception is
+ when there is a priority contest under **[pre-AIA 35 U.S.C. 102(g)](mpep-9015-appx-l.html#d0e302383)** and
+ applicant abandons, suppresses or conceals the invention. *Panduit Corp. v.
+ Dennison Mfg.**Co.,* 774 F.2d 1082, 1101, 227 USPQ 337, 350 (Fed. Cir. 1985).
+ Abandonment, suppression and concealment are treated by the courts under
+ **[pre-AIA 35 U.S.C.
+ 102(g)](mpep-9015-appx-l.html#d0e302383)**. See **[MPEP § 2138.03](s2138.html#d0e207478)** for more information on
+ this issue.
+ 
+
+
+[[top]](#top)
+
+
+]

data/2100/s2135.html.txt

@@ -0,0 +1,446 @@
+[
+# 2135 Pre-AIA 35 U.S.C. 102(d) [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)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See **[MPEP §
+ 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is subject to
+ examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject to those
+ provisions.]*
+
+
+
+#### *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 -
+
+
+\*\*\*\*\*
+
+
+* (d) the invention was first patented or caused to be patented, or was
+ the subject of an inventor’s certificate, by the applicant or his legal
+ representatives or assigns in a foreign country prior to the date of the
+ application for patent in this country on an application for patent or inventor’s
+ certificate filed more than twelve months before the filing of the application in
+ the United States.
+
+
+\*\*\*\*\*
+
+
+**I.** **GENERAL REQUIREMENTS OF PRE-AIA 35 U.S.C. 102(d)****[Pre-AIA 35 U.S.C.
+ 102(d)](mpep-9015-appx-l.html#d0e302383)** establishes four conditions which, if all are present,
+ establish a statutory bar against the granting of a patent in this country:
+ 
+
+
+* (A) The foreign application must be filed more than 12 months before
+ the effective filing date of the claimed invention in the United States (see
+ **[MPEP § 2139.01](s2139.html#ch2100_d2c184_12530_2b6)** regarding determination of the effective
+ U.S. filing date when an application is subject to **[pre-AIA 35 U.S.C.
+ 102](mpep-9015-appx-l.html#d0e302383)**);
+* (B) The foreign and United States applications must have been filed
+ by the same applicant or by the same applicant's legal representatives or
+ assigns.
+* (C) The foreign application must have actually issued as a patent or
+ inventor’s certificate (e.g., granted by sealing of the papers in Great Britain)
+ before the filing in the United States. It need not be published but the patent
+ rights granted must be enforceable.
+* (D) The same invention must be involved.
+
+
+If such a foreign patent or inventor’s certificate is discovered by the
+ examiner, the rejection is made under **[pre-AIA 35 U.S.C. 102(d)](mpep-9015-appx-l.html#d0e302383)** on the
+ ground of statutory bar. See **[MPEP § 2135.01](s2135.html#d0e205339)** for further
+ clarification of each of the four requirements of **[pre-AIA 35 U.S.C. 102(d)](mpep-9015-appx-l.html#d0e302383)**.
+ 
+
+**II.** **SEARCHING FOR PRE-AIA 35 U.S.C. 102(d) PRIOR ART**The examiner should undertake a search for an issued foreign patent for
+ use as **[pre-AIA 35
+ U.S.C. 102(d)](mpep-9015-appx-l.html#d0e302383)** prior art only if there is a reasonable possibility
+ that a foreign patent covering the same subject matter as the U.S. application has been
+ granted to the same inventive entity before the U.S. effective filing date, i.e., the
+ time period between foreign and U.S. filings is greater than the usual time it takes for
+ a patent to issue in the foreign country. The document must be a patent or inventor’s
+ certificate and not merely a published or laid open application. Normally, the
+ probability of the inventor’s foreign patent issuing before the U.S. filing date is so
+ slight as to make such a search unproductive. However, it should be kept in mind that
+ the average pendency varies greatly between foreign countries. 
+ 
+
+
+The search for a granted patent can be accomplished on an electronic
+ database either by the examiner or by the staff of the Scientific and Technical
+ Information Center. See **[MPEP § 901.06(a)](s901.html#d0e113260)**, subsection IV.B., for more information on
+ online searching. Alternatively, if the examiner has a reasonable basis for concluding
+ that **[pre-AIA 35 U.S.C.
+ 102(d)](mpep-9015-appx-l.html#d0e302383)** prior art might exist, the examiner may make a requirement
+ for information under **[37 CFR 1.105](mpep-9020-appx-r.html#aia_d0e322262)**. See
+ **[MPEP §
+ 704.10](s704.html#d0e55758)***et seq.*
+
+
+
+# 2135.01 The Four Requirements of Pre-AIA 35 U.S.C. 102(d) [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)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See
+ **[MPEP
+ § 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is
+ subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject to
+ those provisions.]*
+
+**I.** **FOREIGN APPLICATION MUST BE FILED MORE THAN 12 MONTHS BEFORE THE EFFECTIVE
+ U.S. FILING DATE*** 
+
+***A.******An Anniversary Date Ending on a Weekend or Holiday Results in an
+ Extension to the Next Business Day***The U.S. application is filed in time to prevent a
+ **[pre-AIA
+ 35 U.S.C. 102(d)](mpep-9015-appx-l.html#d0e302383)** bar from arising if it is filed on the 1
+ year anniversary date of the filing date of the foreign application. If this day
+ is a Saturday, Sunday or federal holiday, the year would be extended to the
+ following business day. See *Ex parte Olah,* 131 USPQ 41 (Bd.
+ App. 1960). Despite changes to **[37 CFR 1.6(a)(2)](mpep-9020-appx-r.html#d0e313465)** and
+ **[37 CFR
+ 1.10](mpep-9020-appx-r.html#d0e313951)**, which require the USPTO to accord a filing date to an
+ application as of the date of deposit as Priority Express Mail® with the U.S.
+ Postal Service in accordance with **[37 CFR 1.10](mpep-9020-appx-r.html#d0e313951)** (e.g., a Saturday
+ filing date), the rule changes do not affect applicant’s concurrent right to defer
+ the filing of an application until the next business day when the last day for
+ "taking any action" falls on a Saturday, Sunday, or a federal holiday (e.g., the
+ last day of the 1-year grace period falls on a Saturday).
+ 
+
+***B.******A Continuation-in-Part Breaks the Chain of Priority as to Foreign as
+ Well as U.S. Parents***In the case where applicant files a foreign application, later
+ files a U.S. application claiming priority based on the foreign application, and
+ then files a continuation-in-part (CIP) application whose claims are not entitled
+ to the filing date of the U.S. parent, the effective filing date is the filing
+ date of the CIP and applicant cannot obtain the benefit of either the U.S. parent
+ or foreign application filing dates. *In re Van Langenhoven,* 458
+ F.2d 132, 137, 173 USPQ 426, 429 (CCPA 1972). If the foreign application issues
+ into a patent before the filing date of the CIP, it may be used in a
+ **[pre-AIA 35
+ U.S.C. 102(d)](mpep-9015-appx-l.html#d0e302383)**/**[103](mpep-9015-appx-l.html#d0e302450)** rejection if the subject
+ matter added to the CIP does not render the claims nonobvious over the foreign
+ patent. *Ex parte Appeal No. 242-47,* 196 USPQ 828 (Bd. App.
+ 1976) (Foreign patent can be combined with other prior art to bar a U.S. patent in
+ an obviousness rejection based on **[pre-AIA 35 U.S.C.
+ 102(d)](mpep-9015-appx-l.html#d0e302383)**/**[103](mpep-9015-appx-l.html#d0e302450)**).
+ 
+
+**II.** **FOREIGN APPLICATION MUST HAVE BEEN FILED BY SAME APPLICANT, HIS OR HER LEGAL
+ REPRESENTATIVE OR ASSIGNS**Note that where the U.S. application was made by two or more
+ inventors, it is permissible for these inventors to claim priority from separate
+ applications, each to one of the inventors or a subcombination of inventors. For
+ instance, a U.S. application naming inventors A and B may be entitled to priority
+ from one application to A and one to B filed in a foreign country.
+ 
+
+**III.** **THE FOREIGN PATENT OR INVENTOR’S CERTIFICATE WAS ACTUALLY GRANTED BEFORE THE
+ U.S. FILING DATE*** 
+
+***A.******To Be "Patented" an Exclusionary Right Must Be Awarded to the
+ Applicant***"Patented" means "a formal bestowal of patent rights from the
+ sovereign to the applicant." *In re Monks,* 588 F.2d 308, 310,
+ 200 USPQ 129, 131 (CCPA 1978); *American Infra-Red Radiant Co. v. Lambert
+ Indus.,* 360 F.2d 977, 149 USPQ 722 (8th Cir.), *cert.
+ denied,* 385 U.S. 920 (1966) (German Gebrauchsmuster petty patent was
+ held to be a patent usable in a **[pre-AIA 35 U.S.C. 102(d)](mpep-9015-appx-l.html#d0e302383)**
+ rejection. A Gebrauchsmuster petty patent is not examined and, at the time of the
+ decision, had only a 6-year patent term. However, except as to duration, the
+ exclusionary patent right granted is as extensive as in the U.S.).
+ 
+
+***B.******A Published Application Is Not a "Patent"***An application must issue into a patent before it can be applied
+ in a **[pre-AIA 35
+ U.S.C. 102(d)](mpep-9015-appx-l.html#d0e302383)** rejection. *Ex parte
+ Fujishiro,* 199 USPQ 36 (Bd. App. 1977) ("Patenting," within the
+ meaning of **[pre-AIA 35 U.S.C. 102(d)](mpep-9015-appx-l.html#d0e302383)**, does not occur upon laying open
+ of a Japanese utility model application (kokai or kohyo)); *Ex parte
+ Links,* 184 USPQ 429 (Bd. App. 1974) (German applications, which have
+ not yet been published for opposition, are published in the form of printed
+ documents called Offenlegungsschriften 18 months after filing. These applications
+ are unexamined or in the process of being examined at the time of publication. The
+ Board held that an Offenlegungsschrift is not a patent under **[pre-AIA 35 U.S.C.
+ 102(d)](mpep-9015-appx-l.html#d0e302383)** even though some provisional rights are granted. The
+ Board explained that the provisional rights are minimal and do not come into force
+ if the application is withdrawn or refused.).
+ 
+
+***C.******An Allowed Application Can Be a "Patent" for Purposes of Pre-AIA 35
+ U.S.C. 102(d) as of the Date Published for Opposition Even Though It Has Not
+ Yet Been Granted as a Patent***An examined application which has been allowed by the examiner
+ and published to allow the public to oppose the grant of a patent has been held to
+ be a "patent" for purposes of rejection under **[pre-AIA 35 U.S.C. 102(d)](mpep-9015-appx-l.html#d0e302383)** as of
+ the date of publication for opposition if substantial provisional enforcement
+ rights arise. *Ex parte Beik,* 161 USPQ 795 (Bd. App. 1968) (This
+ case dealt with examined German applications. After a determination that an
+ application is allowable, the application is published in the form of a printed
+ document called an Auslegeschrift. The publication begins a period of opposition
+ were the public can present evidence showing unpatentability. Provisional patent
+ rights are granted which are substantially the same as those available once the
+ opposition period is over and the patent is granted. The Board found that an
+ Auslegeschrift provides the legal effect of a patent for purposes of rejection
+ under **[pre-AIA 35
+ U.S.C. 102(d)](mpep-9015-appx-l.html#d0e302383)**.).
+ 
+
+***D.******Grant Occurs When Patent Becomes Enforceable***The critical date of a foreign patent as a reference under
+ **[pre-AIA 35
+ U.S.C. 102(d)](mpep-9015-appx-l.html#d0e302383)** is the date the patent becomes enforceable
+ (issued, sealed or granted). *In re Monks,* 588 F.2d 308, 310,
+ 200 USPQ 129, 131 (CCPA 1978) (British reference became available as prior art on
+ date the patent was "sealed" because as of this date applicant had the right to
+ exclude others from making, using or selling the claimed invention.). 
+ 
+
+***E.******Pre-AIA 35 U.S.C. 102(d) Applies as of Grant Date Even If There Is a
+ Period of Secrecy After Patent Grant*** A period of secrecy after granting the patent, as in Belgium and
+ Spain, has been held to have no effect in connection with **[pre-AIA 35 U.S.C.
+ 102(d)](mpep-9015-appx-l.html#d0e302383)**. These patents are usable in rejections under
+ **[pre-AIA 35
+ U.S.C. 102(d)](mpep-9015-appx-l.html#d0e302383)** as of the date patent rights are granted.
+ *In re Kathawala,* 9 F.3d 942, 28 USPQ2d 1789 (Fed. Cir. 1993)
+ (An invention is "patented" for purposes of **[pre-AIA 35 U.S.C. 102(d)](mpep-9015-appx-l.html#d0e302383)** when
+ the patentee’s rights under the patent become fixed. The fact that applicant’s
+ Spanish application was not published until after the U.S. filing date is
+ immaterial since the Spanish patent was granted before U.S. filing.);
+ *Gramme Elec. Co. v. Arnoux and Hochhausen Elec. Co.,* 17 F.
+ 838, 1883 C.D. 418 (S.D.N.Y. 1883) (Rejection made under a predecessor of
+ **[pre-AIA 35
+ U.S.C. 102(d)](mpep-9015-appx-l.html#d0e302383)** based on an Austrian patent granted an
+ exclusionary right for 1 year but was kept secret, at the option of the patentee,
+ for that period. The court held that the Austrian patent grant date was the
+ relevant date under the statute for purposes of **[pre-AIA 35 U.S.C.
+ 102(d)](mpep-9015-appx-l.html#d0e302383)** but that the patent could not have been used to in a
+ rejection under **[pre-AIA 35 U.S.C. 102(a) or (b)](mpep-9015-appx-l.html#d0e302383)**);  *In re
+ Talbott,* 443 F.2d 1397, 170 USPQ 281 (CCPA 1971) (Applicant cannot
+ avoid a **[pre-AIA
+ 35 U.S.C. 102(d)](mpep-9015-appx-l.html#d0e302383)** rejection by exercising an option to keep
+ the subject matter of a German Gebrauchsmuster (petty patent) in secrecy until
+ time of U.S. filing.). 
+ 
+
+**IV.** **THE SAME INVENTION MUST BE INVOLVED*** 
+
+***"Same Invention" Means That the Application Claims Could Have Been
+ Presented in the Foreign Patent***Under **[pre-AIA 35 U.S.C. 102(d)](mpep-9015-appx-l.html#d0e302383)**, the
+ "invention... patented" in the foreign country must be the same as the invention
+ sought to be patented in the U.S. When the foreign patent contains the same claims
+ as the U.S. application, there is no question that "the invention was first
+ patented... in a foreign country." *In re Kathawala,* 9 F.3d 942,
+ 945, 28 USPQ2d 1785, 1787 (Fed. Cir. 1993). However, the claims need not be
+ identical or even within the same statutory class. If applicant is granted a
+ foreign patent which fully discloses the invention and which gives applicant a
+ number of different claiming options in the U.S., the reference in
+ **[pre-AIA
+ 35 U.S.C. 102(d)](mpep-9015-appx-l.html#d0e302383)** to "‘invention... patented’ necessarily
+ includes all the disclosed aspects of the invention. Thus, the [pre-AIA] section
+ 102(d) bar applies regardless whether the foreign patent contains claims to less
+ than all aspects of the invention." 9 F.3d at 946, 28 USPQ2d at 1788. In essence,
+ a **[pre-AIA 35
+ U.S.C. 102(d)](mpep-9015-appx-l.html#d0e302383)** rejection applies if applicant’s foreign
+ application supports the subject matter of the U.S. claims. *Id.*
+ at 944, 947, 28 USPQ2d at 1786, 1789 (Applicant was granted a Spanish patent
+ claiming a method of making a composition. The patent disclosed compounds, methods
+ of use and processes of making the compounds. After the Spanish patent was
+ granted, the applicant filed a U.S. application with claims directed to the
+ compound but not the process of making it. The Federal Circuit held that it did
+ not matter that the claims in the U.S. application were directed to the
+ composition instead of the process because the foreign specification would have
+ supported claims to the composition. It was immaterial that the formulations were
+ unpatentable pharmaceutical compositions in Spain.).
+ 
+
+
+
+[[top]](#top)
+
+
+, 
+# 2135.01 The Four Requirements of Pre-AIA 35 U.S.C. 102(d) [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)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See
+ **[MPEP
+ § 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is
+ subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject to
+ those provisions.]*
+
+**I.** **FOREIGN APPLICATION MUST BE FILED MORE THAN 12 MONTHS BEFORE THE EFFECTIVE
+ U.S. FILING DATE*** 
+
+***A.******An Anniversary Date Ending on a Weekend or Holiday Results in an
+ Extension to the Next Business Day***The U.S. application is filed in time to prevent a
+ **[pre-AIA
+ 35 U.S.C. 102(d)](mpep-9015-appx-l.html#d0e302383)** bar from arising if it is filed on the 1
+ year anniversary date of the filing date of the foreign application. If this day
+ is a Saturday, Sunday or federal holiday, the year would be extended to the
+ following business day. See *Ex parte Olah,* 131 USPQ 41 (Bd.
+ App. 1960). Despite changes to **[37 CFR 1.6(a)(2)](mpep-9020-appx-r.html#d0e313465)** and
+ **[37 CFR
+ 1.10](mpep-9020-appx-r.html#d0e313951)**, which require the USPTO to accord a filing date to an
+ application as of the date of deposit as Priority Express Mail® with the U.S.
+ Postal Service in accordance with **[37 CFR 1.10](mpep-9020-appx-r.html#d0e313951)** (e.g., a Saturday
+ filing date), the rule changes do not affect applicant’s concurrent right to defer
+ the filing of an application until the next business day when the last day for
+ "taking any action" falls on a Saturday, Sunday, or a federal holiday (e.g., the
+ last day of the 1-year grace period falls on a Saturday).
+ 
+
+***B.******A Continuation-in-Part Breaks the Chain of Priority as to Foreign as
+ Well as U.S. Parents***In the case where applicant files a foreign application, later
+ files a U.S. application claiming priority based on the foreign application, and
+ then files a continuation-in-part (CIP) application whose claims are not entitled
+ to the filing date of the U.S. parent, the effective filing date is the filing
+ date of the CIP and applicant cannot obtain the benefit of either the U.S. parent
+ or foreign application filing dates. *In re Van Langenhoven,* 458
+ F.2d 132, 137, 173 USPQ 426, 429 (CCPA 1972). If the foreign application issues
+ into a patent before the filing date of the CIP, it may be used in a
+ **[pre-AIA 35
+ U.S.C. 102(d)](mpep-9015-appx-l.html#d0e302383)**/**[103](mpep-9015-appx-l.html#d0e302450)** rejection if the subject
+ matter added to the CIP does not render the claims nonobvious over the foreign
+ patent. *Ex parte Appeal No. 242-47,* 196 USPQ 828 (Bd. App.
+ 1976) (Foreign patent can be combined with other prior art to bar a U.S. patent in
+ an obviousness rejection based on **[pre-AIA 35 U.S.C.
+ 102(d)](mpep-9015-appx-l.html#d0e302383)**/**[103](mpep-9015-appx-l.html#d0e302450)**).
+ 
+
+**II.** **FOREIGN APPLICATION MUST HAVE BEEN FILED BY SAME APPLICANT, HIS OR HER LEGAL
+ REPRESENTATIVE OR ASSIGNS**Note that where the U.S. application was made by two or more
+ inventors, it is permissible for these inventors to claim priority from separate
+ applications, each to one of the inventors or a subcombination of inventors. For
+ instance, a U.S. application naming inventors A and B may be entitled to priority
+ from one application to A and one to B filed in a foreign country.
+ 
+
+**III.** **THE FOREIGN PATENT OR INVENTOR’S CERTIFICATE WAS ACTUALLY GRANTED BEFORE THE
+ U.S. FILING DATE*** 
+
+***A.******To Be "Patented" an Exclusionary Right Must Be Awarded to the
+ Applicant***"Patented" means "a formal bestowal of patent rights from the
+ sovereign to the applicant." *In re Monks,* 588 F.2d 308, 310,
+ 200 USPQ 129, 131 (CCPA 1978); *American Infra-Red Radiant Co. v. Lambert
+ Indus.,* 360 F.2d 977, 149 USPQ 722 (8th Cir.), *cert.
+ denied,* 385 U.S. 920 (1966) (German Gebrauchsmuster petty patent was
+ held to be a patent usable in a **[pre-AIA 35 U.S.C. 102(d)](mpep-9015-appx-l.html#d0e302383)**
+ rejection. A Gebrauchsmuster petty patent is not examined and, at the time of the
+ decision, had only a 6-year patent term. However, except as to duration, the
+ exclusionary patent right granted is as extensive as in the U.S.).
+ 
+
+***B.******A Published Application Is Not a "Patent"***An application must issue into a patent before it can be applied
+ in a **[pre-AIA 35
+ U.S.C. 102(d)](mpep-9015-appx-l.html#d0e302383)** rejection. *Ex parte
+ Fujishiro,* 199 USPQ 36 (Bd. App. 1977) ("Patenting," within the
+ meaning of **[pre-AIA 35 U.S.C. 102(d)](mpep-9015-appx-l.html#d0e302383)**, does not occur upon laying open
+ of a Japanese utility model application (kokai or kohyo)); *Ex parte
+ Links,* 184 USPQ 429 (Bd. App. 1974) (German applications, which have
+ not yet been published for opposition, are published in the form of printed
+ documents called Offenlegungsschriften 18 months after filing. These applications
+ are unexamined or in the process of being examined at the time of publication. The
+ Board held that an Offenlegungsschrift is not a patent under **[pre-AIA 35 U.S.C.
+ 102(d)](mpep-9015-appx-l.html#d0e302383)** even though some provisional rights are granted. The
+ Board explained that the provisional rights are minimal and do not come into force
+ if the application is withdrawn or refused.).
+ 
+
+***C.******An Allowed Application Can Be a "Patent" for Purposes of Pre-AIA 35
+ U.S.C. 102(d) as of the Date Published for Opposition Even Though It Has Not
+ Yet Been Granted as a Patent***An examined application which has been allowed by the examiner
+ and published to allow the public to oppose the grant of a patent has been held to
+ be a "patent" for purposes of rejection under **[pre-AIA 35 U.S.C. 102(d)](mpep-9015-appx-l.html#d0e302383)** as of
+ the date of publication for opposition if substantial provisional enforcement
+ rights arise. *Ex parte Beik,* 161 USPQ 795 (Bd. App. 1968) (This
+ case dealt with examined German applications. After a determination that an
+ application is allowable, the application is published in the form of a printed
+ document called an Auslegeschrift. The publication begins a period of opposition
+ were the public can present evidence showing unpatentability. Provisional patent
+ rights are granted which are substantially the same as those available once the
+ opposition period is over and the patent is granted. The Board found that an
+ Auslegeschrift provides the legal effect of a patent for purposes of rejection
+ under **[pre-AIA 35
+ U.S.C. 102(d)](mpep-9015-appx-l.html#d0e302383)**.).
+ 
+
+***D.******Grant Occurs When Patent Becomes Enforceable***The critical date of a foreign patent as a reference under
+ **[pre-AIA 35
+ U.S.C. 102(d)](mpep-9015-appx-l.html#d0e302383)** is the date the patent becomes enforceable
+ (issued, sealed or granted). *In re Monks,* 588 F.2d 308, 310,
+ 200 USPQ 129, 131 (CCPA 1978) (British reference became available as prior art on
+ date the patent was "sealed" because as of this date applicant had the right to
+ exclude others from making, using or selling the claimed invention.). 
+ 
+
+***E.******Pre-AIA 35 U.S.C. 102(d) Applies as of Grant Date Even If There Is a
+ Period of Secrecy After Patent Grant*** A period of secrecy after granting the patent, as in Belgium and
+ Spain, has been held to have no effect in connection with **[pre-AIA 35 U.S.C.
+ 102(d)](mpep-9015-appx-l.html#d0e302383)**. These patents are usable in rejections under
+ **[pre-AIA 35
+ U.S.C. 102(d)](mpep-9015-appx-l.html#d0e302383)** as of the date patent rights are granted.
+ *In re Kathawala,* 9 F.3d 942, 28 USPQ2d 1789 (Fed. Cir. 1993)
+ (An invention is "patented" for purposes of **[pre-AIA 35 U.S.C. 102(d)](mpep-9015-appx-l.html#d0e302383)** when
+ the patentee’s rights under the patent become fixed. The fact that applicant’s
+ Spanish application was not published until after the U.S. filing date is
+ immaterial since the Spanish patent was granted before U.S. filing.);
+ *Gramme Elec. Co. v. Arnoux and Hochhausen Elec. Co.,* 17 F.
+ 838, 1883 C.D. 418 (S.D.N.Y. 1883) (Rejection made under a predecessor of
+ **[pre-AIA 35
+ U.S.C. 102(d)](mpep-9015-appx-l.html#d0e302383)** based on an Austrian patent granted an
+ exclusionary right for 1 year but was kept secret, at the option of the patentee,
+ for that period. The court held that the Austrian patent grant date was the
+ relevant date under the statute for purposes of **[pre-AIA 35 U.S.C.
+ 102(d)](mpep-9015-appx-l.html#d0e302383)** but that the patent could not have been used to in a
+ rejection under **[pre-AIA 35 U.S.C. 102(a) or (b)](mpep-9015-appx-l.html#d0e302383)**);  *In re
+ Talbott,* 443 F.2d 1397, 170 USPQ 281 (CCPA 1971) (Applicant cannot
+ avoid a **[pre-AIA
+ 35 U.S.C. 102(d)](mpep-9015-appx-l.html#d0e302383)** rejection by exercising an option to keep
+ the subject matter of a German Gebrauchsmuster (petty patent) in secrecy until
+ time of U.S. filing.). 
+ 
+
+**IV.** **THE SAME INVENTION MUST BE INVOLVED*** 
+
+***"Same Invention" Means That the Application Claims Could Have Been
+ Presented in the Foreign Patent***Under **[pre-AIA 35 U.S.C. 102(d)](mpep-9015-appx-l.html#d0e302383)**, the
+ "invention... patented" in the foreign country must be the same as the invention
+ sought to be patented in the U.S. When the foreign patent contains the same claims
+ as the U.S. application, there is no question that "the invention was first
+ patented... in a foreign country." *In re Kathawala,* 9 F.3d 942,
+ 945, 28 USPQ2d 1785, 1787 (Fed. Cir. 1993). However, the claims need not be
+ identical or even within the same statutory class. If applicant is granted a
+ foreign patent which fully discloses the invention and which gives applicant a
+ number of different claiming options in the U.S., the reference in
+ **[pre-AIA
+ 35 U.S.C. 102(d)](mpep-9015-appx-l.html#d0e302383)** to "‘invention... patented’ necessarily
+ includes all the disclosed aspects of the invention. Thus, the [pre-AIA] section
+ 102(d) bar applies regardless whether the foreign patent contains claims to less
+ than all aspects of the invention." 9 F.3d at 946, 28 USPQ2d at 1788. In essence,
+ a **[pre-AIA 35
+ U.S.C. 102(d)](mpep-9015-appx-l.html#d0e302383)** rejection applies if applicant’s foreign
+ application supports the subject matter of the U.S. claims. *Id.*
+ at 944, 947, 28 USPQ2d at 1786, 1789 (Applicant was granted a Spanish patent
+ claiming a method of making a composition. The patent disclosed compounds, methods
+ of use and processes of making the compounds. After the Spanish patent was
+ granted, the applicant filed a U.S. application with claims directed to the
+ compound but not the process of making it. The Federal Circuit held that it did
+ not matter that the claims in the U.S. application were directed to the
+ composition instead of the process because the foreign specification would have
+ supported claims to the composition. It was immaterial that the formulations were
+ unpatentable pharmaceutical compositions in Spain.).
+ 
+
+
+]

data/2100/s2137.html.txt

@@ -0,0 +1,240 @@
+[
+# 2137 Pre-AIA 35 U.S.C. 102(f) [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)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See **[MPEP §
+ 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is subject to
+ examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject to those
+ provisions. See **[MPEP § 2157](s2157.html#ch2100_d20034_1bb92_e7)** for rejections based on
+ improper naming of the inventor in applications subject to the first inventor to file
+ provisions of the AIA.*
+
+
+*"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](s2310.html#ch2300_d2988c_24ad0_c7)** et seq.]*
+
+
+
+#### *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 -
+
+
+\*\*\*\*\*
+
+
+* (f) he did not himself invent the subject matter sought to be
+ patented.
+
+
+\*\*\*\*\*
+
+
+
+**[Pre-AIA 35 U.S.C.
+ 102(f)](mpep-9015-appx-l.html#d0e302383)** bars the issuance of a patent where an applicant did not
+ invent the subject matter being claimed and sought to be patented. Thus **[pre-AIA 35 U.S.C.
+ 102(f)](mpep-9015-appx-l.html#d0e302383)** requires that the correct inventor(s) of a claimed invention
+ be named in the patent application (and any subsequently issued patent). *In re
+ VerHoef,* 888 F.3d 1362, 1365, 126 USPQ2d 1561, 1563 (Fed. Cir. 2018);
+ *Pannu v. Iolab Corp.,* 155 F.3d 1344, 1349-50, 47 USPQ2d 1657, 1662
+ (Fed. Cir. 1998). See also **[35 U.S.C. 101](mpep-9015-appx-l.html#d0e302376)**, which requires that
+ whoever invents or discovers is the party who may obtain a patent for the particular
+ invention or discovery. 
+ 
+
+
+The examiner must presume the applicants are the proper
+ inventors unless there is evidence of record that another made the invention and that
+ applicant derived the invention from the true inventor. In the uncommon situation where it
+ is clear the application does not name the correct inventorship and there has been no
+ request to correct inventorship under **[37 CFR 1.48](mpep-9020-appx-r.html#d0e317930)**, the examiner should reject
+ the claims under **[pre-AIA
+ 35 U.S.C. 102(f)](mpep-9015-appx-l.html#d0e302383)**. *In re VerHoef,* 888 F.3d 1362,
+ 1368, 126 USPQ2d 1561, 1566 (Fed. Cir. 2018)(an affidavit by applicant made it clear that
+ he did not himself solely invent the subject matter sought to be patented because it
+ established that another person was a joint inventor of the claimed invention). 
+ 
+
+
+Where it can be shown that an inventor or at least one joint inventor
+ "derived" an invention from another, a rejection under **[pre-AIA 35 U.S.C. 102(f)](mpep-9015-appx-l.html#d0e302383)** is proper.
+ *Ex parte Kusko,* 215 USPQ 972, 974 (Bd. App. 1981) ("most, if not all,
+ determinations under **[section 102(f)](mpep-9015-appx-l.html#d0e302420)** involve the question of whether one party derived an
+ invention from another").
+ 
+
+
+While derivation will bar the issuance of a patent to the deriver, a
+ disclosure by the deriver, absent a bar under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**, will not bar
+ the issuance of a patent to the party from which the subject matter was derived.
+ *In re Costello,* 717 F.2d 1346, 1349, 219 USPQ 389, 390-91 (Fed. Cir.
+ 1983) ("[a] prior art reference that is not a statutory bar may be overcome [in an
+ application subject to **[pre-AIA 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**] by two generally recognized methods": an
+ affidavit under **[37
+ CFR 1.131](mpep-9020-appx-r.html#aia_d0e323504)**, or an attribution affidavit under **[37 CFR 1.132](mpep-9020-appx-r.html#d0e323552)**);
+ *In re Facius,* 408 F.2d 1396, 1407, 161 USPQ 294, 302 (CCPA 1969) (if
+ an inventor or at least one joint inventor "… invented the subject matter upon which the
+ relevant disclosure in the patent was based, then the patent may not be used as a reference
+ against him notwithstanding the patent's silence as to the patentee's [inventive entity’s]
+ source of that subject matter."). See **[MPEP §§ 715.01](s715.html#d0e90633)***et seq.* and **[716.10](s716.html#d0e93797)**
+
+
+Where there is a published article identifying the authorship
+ (**[MPEP §
+ 715.01(c)](s715.html#d0e90779)**) or a patent identifying the inventorship
+ (**[MPEP §
+ 715.01(a)](s715.html#d0e90674)**) that discloses subject matter being claimed in an
+ application undergoing examination, the designation of authorship or inventorship does not
+ raise a presumption of inventorship with respect to the subject matter disclosed in the
+ article or with respect to the subject matter disclosed but not claimed in the patent so as
+ to justify a rejection under **[pre-AIA 35 U.S.C. 102(f)](mpep-9015-appx-l.html#d0e302383)**. However, it
+ is incumbent upon the applicant of the application, in reply to an inquiry regarding the
+ appropriate inventorship under **[pre-AIA subsection (f)](mpep-9015-appx-l.html#d0e302420)**, or to rebut a
+ rejection under **[pre-AIA
+ 35 U.S.C. 102(a) or (e)](mpep-9015-appx-l.html#d0e302383)**, to provide a satisfactory showing by way of
+ affidavit under **[37 CFR
+ 1.132](mpep-9020-appx-r.html#d0e323552)** that the inventorship of the application is correct in that the
+ reference discloses subject matter invented by the inventor or at least one joint inventor
+ rather than derived from the author or inventive entity notwithstanding the authorship of
+ the article or the inventorship of the patent, respectively. *In re Katz,*
+ 687 F.2d 450, 455, 215 USPQ 14, 18 (CCPA 1982) (inquiry is appropriate to clarify any
+ ambiguity created by an article regarding inventorship, and it is then incumbent upon the
+ applicant to provide "a satisfactory showing that would lead to a reasonable conclusion
+ that [inventor or at least one joint inventor] is the…inventor" of the subject matter
+ disclosed in the article and claimed in the application).
+ 
+
+
+In addition, subject matter qualifying as prior art only under
+ **[pre-AIA 35 U.S.C.
+ 102(f)](mpep-9015-appx-l.html#d0e302383)** may also be the basis for an *ex parte*
+ rejection under **[pre‑AIA
+ 35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)** . However, **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)** states that
+ subsection (f) of **[pre-AIA
+ 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** will not preclude patentability where subject matter
+ developed by another person, that would otherwise qualify under **[pre-AIA 35 U.S.C.
+ 102(f)](mpep-9015-appx-l.html#d0e302383)**, and the claimed invention of an application under examination
+ were owned by the same person, subject to an obligation of assignment to the same person,
+ or involved in a joint research agreement, which meets the requirements of
+ **[pre-AIA 35 U.S.C.
+ 103(c)(2) and (c)(3)](mpep-9015-appx-l.html#d0e302450)**, at the time the invention was made. See
+ **[MPEP §
+ 2146](s2146.html#d0e213206)**.
+ 
+
+**I.** **DERIVATION REQUIRES COMPLETE CONCEPTION BY ANOTHER AND COMMUNICATION TO THE
+ ALLEGED DERIVER**"The mere fact that a claim recites the use of various components, each
+ of which can be argumentatively assumed to be old, does not provide a proper basis for a
+ rejection under **[pre-AIA 35 U.S.C. 102(f)](mpep-9015-appx-l.html#d0e302383)**." *Ex parte Billottet,*
+ 192 USPQ 413, 415 (Bd. App. 1976). Derivation requires complete conception by another
+ and communication of that conception by any means to the party charged with derivation
+ prior to any date on which it can be shown that the one charged with derivation
+ possessed knowledge of the invention. *Kilbey v. Thiele,* 199 USPQ 290,
+ 294 (Bd. Pat. Inter. 1978).
+ 
+
+
+ See also *Price v. Symsek,* 988 F.2d 1187, 1190,
+ 26 USPQ2d 1031, 1033 (Fed. Cir. 1993); *Hedgewick v. Akers,* 497 F.2d
+ 905, 908, 182 USPQ 167, 169 (CCPA 1974). "Communication of a complete conception must be
+ sufficient to enable one of ordinary skill in the art to construct and successfully
+ operate the invention." *Hedgewick,* 497 F.2d at 908, 182 USPQ at 169.
+ See also *Gambro Lundia AB v. Baxter Healthcare Corp.,* 110 F.3d 1573,
+ 1577, 42 USPQ2d 1378, 1383 (Fed. Cir. 1997) (Issue in proving derivation is "whether the
+ communication enabled one of ordinary skill in the art to make the patented
+ invention.").
+ 
+
+**II.** **PARTY ALLEGING DERIVATION DOES NOT HAVE TO PROVE AN ACTUAL REDUCTION TO PRACTICE,
+ DERIVATION OF PUBLIC KNOWLEDGE, OR DERIVATION IN THIS COUNTRY**The party alleging derivation "need not prove an actual reduction to
+ practice in order to show derivation." *Scott v. Brandenburger,* 216
+ USPQ 326, 327 (Bd. App. 1982). Furthermore, the application of **[subsection (f)](mpep-9015-appx-l.html#d0e302420)** is
+ not limited to public knowledge derived from another, and "the
+ site of derivation need not be in this country to bar a deriver from patenting the
+ subject matter." *Ex parte Andresen,* 212 USPQ 100, 102 (Bd. App.
+ 1981).
+ 
+
+**III.** **DERIVATION DISTINGUISHED FROM PRIORITY OF INVENTION**Although derivation and priority of invention both focus on
+ inventorship, derivation addresses originality (i.e., who invented the subject matter),
+ whereas priority focuses on which party first invented the subject matter.
+ *Price v. Symsek,* 988 F.2d 1187, 1190, 26 USPQ2d 1031, 1033 (Fed.
+ Cir. 1993).
+ 
+
+**IV.** **Pre-AIA 35 U.S.C. 102(f) MAY APPLY WHERE Pre-AIA 35 U.S.C. 102(a) AND Pre-AIA 35
+ U.S.C. 102(e) ARE NOT AVAILABLE STATUTORY GROUNDS FOR REJECTION****[Pre-AIA 35 U.S.C.
+ 102(f)](mpep-9015-appx-l.html#d0e302383)** does not require an inquiry into the relative dates of a
+ reference and the application, and therefore may be applicable where **[pre-AIA subsections (a) and
+ (e)](mpep-9015-appx-l.html#d0e302383)** are not available for references having an effective date
+ subsequent to the effective filing date of the application being examined. However, for
+ a reference having a date later than the effective filing date of the application some
+ evidence may exist that the subject matter of the reference was derived from the
+ inventor or at least one joint inventor in view of the relative dates. *Ex parte
+ Kusko,* 215 USPQ 972, 974 (Bd. App. 1981) (The relative dates of the events
+ are important in determining derivation; a publication dated more than a year after
+ applicant’s filing date that merely lists as literary coauthors individuals other than
+ the inventor is not the strong evidence needed to rebut a declaration by the inventor
+ that he is the sole inventor.).
+ 
+
+
+
+# 2137.01 [Reserved]
+
+
+*[Editor Note: Information pertaining to
+ inventorship has been moved to **[MPEP § 2109](s2109.html#ch2100_d2c183_22374_28b)**, and information
+ specific to joint inventorship has been moved to **[MPEP §
+ 2109.01](s2109.01.html#ch2100_d2c1f8_278a7_1e6)**.]*
+
+
+
+
+
+# 2137.02 [Reserved]
+
+
+*[Editor Note: Information pertaining to
+ the applicability of **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302521)** to
+ obviousness rejections relying on **[pre-AIA 35 U.S.C. 102(f)](mpep-9015-appx-l.html#d0e302420)** subject
+ matter has been moved to **[MPEP § 2137](s2137.html#d0e206570)**. Information regarding
+ inventorship "by another" has been moved to **[MPEP §
+ 2109](s2109.html#ch2100_d2c183_22374_28b)**, subsection V.]*
+
+
+
+[[top]](#top)
+
+
+, 
+# 2137.01 [Reserved]
+
+
+*[Editor Note: Information pertaining to
+ inventorship has been moved to **[MPEP § 2109](s2109.html#ch2100_d2c183_22374_28b)**, and information
+ specific to joint inventorship has been moved to **[MPEP §
+ 2109.01](s2109.01.html#ch2100_d2c1f8_278a7_1e6)**.]*
+
+
+
+, 
+# 2137.02 [Reserved]
+
+
+*[Editor Note: Information pertaining to
+ the applicability of **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302521)** to
+ obviousness rejections relying on **[pre-AIA 35 U.S.C. 102(f)](mpep-9015-appx-l.html#d0e302420)** subject
+ matter has been moved to **[MPEP § 2137](s2137.html#d0e206570)**. Information regarding
+ inventorship "by another" has been moved to **[MPEP §
+ 2109](s2109.html#ch2100_d2c183_22374_28b)**, subsection V.]*
+
+
+]

data/2100/s2140.html.txt

@@ -0,0 +1,9 @@
+[
+# 2140 [Reserved]
+
+
+
+[[top]](#top)
+
+
+]

data/2100/s2142.html.txt

@@ -0,0 +1,180 @@
+[
+# 2142 Legal Concept of *Prima Facie* Obviousness [R-10.2019]
+
+
+"During patent examination and reexamination, the concept of
+ prima facie obviousness establishes the framework for the obviousness determination and the
+ burdens the parties face. Under this framework, the patent examiner must first set forth a
+ prima facie case, supported by evidence, showing why the claims at issue would have been
+ obvious in light of the prior art. Once the examiner sets out this prima facie case, the
+ burden shifts to the patentee to provide evidence, in the prior art or beyond it, or
+ argument sufficient to rebut the examiner's evidence. The examiner then reaches the final
+ determination on obviousness by weighing the evidence establishing the prima facie case
+ with the rebuttal evidence." ACCO Brands Corp. v. Fellowes, Inc., 813 F.3d 1361, 1365–66,
+ 117 USPQ2d 1951, 1553-54 (Fed. Cir. 2016) (internal citations omitted). 
+ 
+
+
+The legal concept of *prima facie* obviousness is a
+ procedural tool of examination which applies broadly to all arts. It allocates who has the
+ burden of going forward with production of evidence in each step of the examination
+ process. See *In re Rinehart,* 531 F.2d 1048, 189 USPQ 143 (CCPA 1976);
+ *In re Lintner,* 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); *In
+ re Saunders,* 444 F.2d 599, 170 USPQ 213 (CCPA 1971); *In re
+ Tiffin,* 443 F.2d 394, 170 USPQ 88 (CCPA 1971), *amended,* 448
+ F.2d 791, 171 USPQ 294 (CCPA 1971); *In re Warner,* 379 F.2d 1011, 154
+ USPQ 173 (CCPA 1967), *cert. denied,* 389 U.S. 1057 (1968). The examiner
+ bears the initial burden of factually supporting any *prima facie*
+ conclusion of obviousness. If the examiner does not produce a *prima
+ facie* case, the applicant is under no obligation to submit secondary evidence
+ to show nonobviousness. If, however, the examiner does produce a *prima
+ facie* case, the burden of coming forward with evidence or arguments shifts to
+ the applicant who may submit additional evidence of nonobviousness, such as comparative
+ test data showing that the claimed invention possesses improved properties not expected by
+ the prior art. The decision of whether to submit evidence after a rejection should be
+ influenced by the goals of compact prosecution, which encourages the early submission of
+ such evidence. It is also noted that evidence submitted after final rejection may be denied
+ entry into the record.
+ 
+
+
+To reach a proper determination under **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)**, the examiner must step
+ backward in time and into the shoes worn by the hypothetical "person of ordinary skill in
+ the art" when the invention was unknown and just before it was made. In view of all factual
+ information, the examiner must then make a determination whether the claimed invention "as
+ a whole" would have been obvious at that time to a hypothetical person of ordinary skill in
+ the art. Knowledge of applicant’s disclosure must be put aside in reaching this
+ determination, yet kept in mind in order to determine the "differences," conduct the search
+ and evaluate the "subject matter as a whole" of the invention. The tendency to resort to
+ "hindsight" based upon applicant's disclosure is often difficult to avoid due to the very
+ nature of the examination process. However, impermissible hindsight must be avoided and the
+ legal conclusion must be reached on the basis of the facts gleaned from the prior art. 
+ 
+
+
+**[35 U.S.C.
+ 103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** authorizes a rejection where, to meet the claim, it is necessary
+ to modify a single reference or to combine it with one or more other references. After
+ indicating that the rejection is under **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)**, the examiner should set
+ forth in the Office action:
+ 
+
+
+* (A) the relevant teachings of the prior art relied upon, preferably with
+ reference to the relevant column or page number(s) and line number(s) where
+ appropriate,
+* (B) the difference or differences in the claim over the applied
+ reference(s),
+* (C) the proposed modification of the applied reference(s) necessary to
+ arrive at the claimed subject matter, and
+* (D) an explanation as to why the claimed invention would have been
+ obvious to one of ordinary skill in the art at the time the invention was made.
+
+
+"To support the conclusion that the claimed invention is directed to
+ obvious subject matter, either the references must expressly or impliedly suggest the
+ claimed invention or the examiner must present a convincing line of reasoning as to why the
+ artisan would have found the claimed invention to have been obvious in light of the
+ teachings of the references." *Ex parte Clapp,* 227 USPQ 972, 973 (Bd.
+ Pat. App. & Inter. 1985). 
+ 
+
+
+Where a reference is relied on to support a rejection, whether or not in a
+ minor capacity, that reference should be positively included in the statement of the
+ rejection. See *In re Hoch,* 428 F.2d 1341, 1342 n.3 166 USPQ 406, 407 n.
+ 3 (CCPA 1970).
+ 
+
+
+It is important for an examiner to properly communicate the basis for a
+ rejection so that the issues can be identified early and the applicant can be given fair
+ opportunity to reply. Furthermore, if an initially rejected application issues as a patent,
+ the rationale behind an earlier rejection may be important in interpreting the scope of the
+ patent claims. Since issued patents are presumed valid (**[35 U.S.C. 282](mpep-9015-appx-l.html#d0e305845)**) and constitute a
+ property right (**[35 U.S.C.
+ 261](mpep-9015-appx-l.html#d0e305441)**), the written record must be clear as to the basis for the grant.
+ Since patent examiners cannot normally be compelled to testify in legal proceedings
+ regarding their mental processes (see **[MPEP § 1701.01](s1701.html#d0e162459)**), it is important that the
+ written record clearly explain the rationale for decisions made during prosecution of the
+ application.
+ 
+
+
+See **[MPEP §§
+ 2141](s2141.html#d0e208143)** - **[2144.09](s2144.html#d0e212153)** generally for guidance on
+ patentability determinations under **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)**, including a discussion
+ of the requirements of  *Graham v. John Deere,* 383 U.S. 1, 148 USPQ 459
+ (1966). See **[MPEP
+ § 2145](s2145.html#d0e212553)** for consideration of applicant’s rebuttal arguments. See
+ **[MPEP §§
+ 2154](s2154.html#ch2100_d20033_274f5_338)** and **[2154.02](s2154.html#ch2100_d20034_139ac_31b)** for a discussion of exceptions to
+ prior art under **[35 U.S.C. 102(b)](mpep-9015-appx-l.html#al_d1d85b_11e7d_156)**, and **[MPEP §
+ 2156](s2156.html#ch2100_d20034_1b4ea_2c0)** for a discussion of **[35 U.S.C.
+ 102(c)](mpep-9015-appx-l.html#al_d1d85b_11e8f_148)** and references of joint researchers. See **[MPEP § 2146](s2146.html#d0e213206)***et seq.* for a discussion of prior art disqualified under
+ **[pre-AIA 35 U.S.C.
+ 103(a)](mpep-9015-appx-l.html#d0e302455)**. Note that **[MPEP § 2158](s2158.html#ch2100_d20034_1c351_73)**
+ provides a comparison of the provisions of **[AIA 35 U.S.C. 103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** and **[pre-AIA 35 U.S.C.
+ 103](mpep-9015-appx-l.html#d0e302450)**.
+ 
+
+**ESTABLISHING A *PRIMA FACIE* CASE OF OBVIOUSNESS**The key to supporting any rejection under **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)** is
+ the clear articulation of the reason(s) why the claimed invention would have been
+ obvious. The Supreme Court in *KSR Int'l Co. v. Teleflex Inc.,* 550
+ U.S. 398, 418, 82 USPQ2d 1385, 1396 (2007) noted that the analysis supporting a
+ rejection under **[35
+ U.S.C. 103](mpep-9015-appx-l.html#d0e302450)** should be made explicit. The Federal Circuit has stated
+ that "rejections on obviousness cannot be sustained with mere conclusory statements;
+ instead, there must be some articulated reasoning with some rational underpinning to
+ support the legal conclusion of obviousness." *In re Kahn,* 441 F.3d
+ 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006); see also *KSR,* 550
+ U.S. at 418, 82 USPQ2d at 1396 (quoting Federal Circuit statement with approval). 
+ 
+
+
+It remains true that "[t]he determination of obviousness is dependent
+ on the facts of each case." *Sanofi-Synthelabo v. Apotex, Inc.,* 550
+ F.3d 1075, 1089, 89 USPQ2d 1370, 1379 (Fed. Cir. 2008) (citing
+ *Graham,* 383 U.S. at 17-18, 148 USPQ 459, 467 (1966)). If the
+ examiner determines there is factual support for rejecting the claimed invention under
+ **[35 U.S.C.
+ 103](mpep-9015-appx-l.html#d0e302450)**, the examiner must then consider any evidence supporting the
+ patentability of the claimed invention, such as any evidence in the specification or any
+ other evidence submitted by the applicant. The ultimate determination of patentability
+ is based on the entire record, by a preponderance of evidence, with due consideration to
+ the persuasiveness of any arguments and any secondary evidence. *In re
+ Oetiker,* 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). The legal standard
+ of "a preponderance of evidence" requires the evidence to be more convincing than the
+ evidence which is offered in opposition to it. With regard to rejections under
+ **[35 U.S.C.
+ 103](mpep-9015-appx-l.html#d0e302450)**, the examiner must provide evidence which as a whole shows
+ that the legal determination sought to be proved (i.e., the reference teachings
+ establish a *prima facie* case of obviousness) is more probable than
+ not.
+ 
+
+
+When an applicant properly submits evidence, whether in the
+ specification as originally filed, prior to a rejection, or in reply to a rejection, the
+ examiner must consider the patentability of the claims in light of the evidence. The
+ decision on patentability must be made based upon consideration of all the evidence,
+ including the evidence submitted by the examiner and the evidence submitted by the
+ applicant. A decision to make or maintain a rejection in the face of all the evidence
+ must show that it was based on the totality of the evidence. Facts established by
+ rebuttal evidence must be evaluated along with the facts on which the conclusion of
+ obviousness was reached, not against the conclusion itself. *In re Eli Lilly
+ & Co.,* 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990).
+ 
+
+
+See *In re Piasecki,* 745 F.2d 1468, 223 USPQ 785
+ (Fed. Cir. 1984) for a discussion of the proper roles of the examiner’s *prima
+ facie* case and applicant’s rebuttal evidence in the final determination of
+ obviousness.
+ 
+
+
+[[top]](#top)
+
+
+]

data/2100/s2145.html.txt

@@ -0,0 +1,726 @@
+[
+# 2145 Consideration of Applicant’s Rebuttal Arguments [R-10.2019]
+
+
+*[Editor Note: This MPEP section is **applicable** to applications subject
+ to the first inventor to file (FITF) provisions of the AIA except that the relevant date
+ is the "effective filing date" of the claimed invention instead of the "time the
+ invention was made," which is only applicable to applications subject to
+ **[pre-AIA 35 U.S.C.
+ 102](mpep-9015-appx-l.html#d0e302383)**. See **[35 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)** and
+ **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq.]*
+
+
+If a *prima facie* case of obviousness is established,
+ the burden shifts to the applicant to come forward with arguments and/or evidence to rebut
+ the *prima facie* case. See, e.g., *In re Dillon,* 919
+ F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990) *(en banc).* Rebuttal
+ evidence and arguments can be presented in the specification, *In re
+ Soni,* 54 F.3d 746, 750, 34 USPQ2d 1684, 1687 (Fed. Cir. 1995), by counsel,
+ *In re Chu,* 66 F.3d 292, 299, 36 USPQ2d 1089, 1094-95 (Fed. Cir.
+ 1995), or by way of an affidavit or declaration under **[37 CFR 1.132](mpep-9020-appx-r.html#d0e323552)**, e.g.,
+ *Soni,* 54 F.3d at 750, 34 USPQ2d at 1687; *In re
+ Piasecki,* 745 F.2d 1468, 1474, 223 USPQ 785, 789-90 (Fed. Cir. 1984). However,
+ arguments of counsel cannot take the place of factually supported objective evidence. See,
+ e.g., *In re Huang,* 100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir.
+ 1996); *In re De Blauwe,* 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir.
+ 1984).
+ 
+
+
+Office personnel should consider all rebuttal arguments and evidence
+ presented by applicants. See, e.g.,  *Soni,* 54 F.3d at 750, 34 USPQ2d at
+ 1687 (error not to consider evidence presented in the specification). *C.f., In re
+ Alton,* 76 F.3d 1168, 37 USPQ2d 1578 (Fed. Cir. 1996) (error not to consider
+ factual evidence submitted to counter a **[35 U.S.C. 112](mpep-9015-appx-l.html#d0e302824)** rejection); *In
+ re Beattie,* 974 F.2d 1309, 1313, 24 USPQ2d 1040, 1042-43 (Fed. Cir. 1992)
+ (Office personnel should consider declarations from those skilled in the art praising the
+ claimed invention and opining that the art teaches away from the invention.);
+ *Piasecki,* 745 F.2d at 1472, 223 USPQ at 788 ("[Rebuttal evidence] may
+ relate to any of the *Graham* factors including the so-called secondary
+ considerations."). 
+ 
+
+
+Rebuttal evidence may include evidence of "secondary considerations," such
+ as "commercial success, long felt but unsolved needs, [and] failure of others."
+ *Graham v. John Deere Co.,* 383 U.S. 1, 148 USPQ 4459, 467. See also,
+ e.g., *In re Piasecki,* 745 F.2d 1468, 1473, 223 USPQ 785, 788 (Fed. Cir.
+ 1984) (commercial success). Rebuttal evidence may also include evidence that the claimed
+ invention yields unexpectedly improved properties or properties not present in the prior
+ art. Rebuttal evidence may consist of a showing that the claimed compound possesses
+ unexpected properties. *Dillon,* 919 F.2d at 692-93, 16 USPQ2d at 1901. A
+ showing of unexpected results must be based on evidence, not argument or speculation.
+ *In re Mayne,* 104 F.3d 1339, 1343-44, 41 USPQ2d 1451, 1455-56 (Fed.
+ Cir. 1997) (conclusory statements that claimed compound possesses unusually low immune
+ response or unexpected biological activity that is unsupported by comparative data held
+ insufficient to overcome *prima facie* case of obviousness). Rebuttal
+ evidence may include evidence that the claimed invention was copied by others. See, e.g.,
+ *In re GPAC,* 57 F.3d 1573, 1580, 35 USPQ2d 1116, 1121 (Fed. Cir.
+ 1995); *Hybritech Inc.**v. Monoclonal Antibodies,* 802 F.2d 1367, 1380, 231 USPQ 81, 90 (Fed.
+ Cir. 1986). It may also include evidence of the state of the art, the level of skill in the
+ art, and the beliefs of those skilled in the art. See, e.g., *In re Oelrich,* 579 F.2d 86, 91-92, 198 USPQ 210, 214 (CCPA 1978) (Expert opinions regarding the
+ level of skill in the art were probative of the nonobviousness of the claimed invention.);
+ *Piasecki,* 745 F.2d at 1471, 1473-74, 223 USPQ at 790 (Evidence of
+ nontechnological nature is pertinent to the conclusion of obviousness. The declarations of
+ those skilled in the art regarding the need for the invention and its reception by the art
+ were improperly discounted by the Board.); *Beattie,* 974 F.2d at 1313, 24
+ USPQ2d at 1042-43 (Seven declarations provided by music teachers opining that the art
+ teaches away from the claimed invention must be considered, but were not probative because
+ they did not contain facts and did not deal with the specific prior art that was the
+ subject of the rejection.). For example, rebuttal evidence may include a showing that the
+ prior art fails to disclose or render obvious a method for making the compound, which would
+ preclude a conclusion of obviousness of the compound. A conclusion of obviousness requires
+ that the reference(s) relied upon together with the knowledge of a person skilled in the
+ art be enabling in that it put the public in possession of the claimed invention.
+ *In re Hoeksema,* 399 F.2d 269, 273, 158 USPQ 596, 600 (CCPA 1968)
+ (citing *In re Le Grice,* 301 F.2d 929, 936, 133 USPQ 365, 372 (1962)).
+ The *Hoeksema,* court stated: 
+ 
+
+
+
+> 
+>  Thus, upon careful reconsideration it is our view that if the prior
+>  art of record fails to disclose or render obvious a method for making a claimed
+>  compound, at the time the invention was made, it may not be legally concluded that the
+>  compound itself is in the possession of the public. [footnote omitted.] In this context,
+>  we say that the absence of a known or obvious process for making the claimed compounds
+>  overcomes a presumption that the compounds are obvious, based on close relationships
+>  between their structures and those of prior art compounds.
+>  
+> 
+> 
+> 
+
+
+The *Hoeksema* court further noted that once a
+ *prima facie* case of obviousness is made by the USPTO through citation
+ of references, the burden is on the applicant to produce contrary evidence establishing
+ that the reference being relied on would not enable a skilled artisan to produce the
+ different compounds claimed. *Id.* at 274-75, 158 USPQ at 601. See also
+ *Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,* 776 F.2d
+ 281, 295, 297, 227 USPQ 657, 666, 667 (Fed. Cir. 1985) (citing *Hoeksema*
+ for the proposition above); *In re Grose,* 592 F.2d 1161, 1168, 201 USPQ
+ 57, 63-64 (CCPA 1979) (
+ "One of the assumptions
+ underlying a prima facie obviousness rejection based upon a structural relationship
+ between compounds, such as adjacent homologs, is that a method disclosed for producing
+ one would provide those skilled in the art with a method for producing the other...
+ Failure of the prior art to disclose or render obvious a method for making any
+ composition of matter, whether a compound or a mixture of compounds like a zeolite,
+ precludes a conclusion that the composition would have been
+ obvious."
+ 
+ 
+ ).
+ 
+
+
+Consideration of rebuttal evidence and arguments requires Office personnel
+ to weigh the proffered evidence and arguments. *Id.;* see also *In
+ re Alton,* 76 F.3d 1168, 1174-75, 37 USPQ2d 1578, 1582-83 (Fed. Cir. 1996).
+ Office personnel should avoid giving no weight to evidence submitted by applicant, except
+ in rare circumstances. However, to be entitled to substantial weight, the applicant should
+ establish a nexus between the rebuttal evidence and the claimed invention, i.e., objective
+ evidence of nonobviousness must be attributable to the claimed invention. The Federal
+ Circuit has acknowledged that applicant bears the burden of establishing nexus,
+ stating:
+ 
+
+
+
+> 
+> In the *ex parte* process of examining a patent
+>  application, however, the PTO lacks the means or resources to gather evidence which
+>  supports or refutes the applicant’s assertion that the sales constitute commercial
+>  success. *C.f. Ex parte Remark,* 15 USPQ2d 1498, 1503 ([BPAI] 1990)
+>  (evidentiary routine of shifting burdens in civil proceedings inappropriate in
+>  *ex parte* prosecution proceedings because examiner has no available
+>  means for adducing evidence). Consequently, the PTO must rely upon the applicant to
+>  provide hard evidence of commercial success.
+>  
+> 
+> 
+> 
+
+
+*In re Huang,* 100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir.
+ 1996). See also *GPAC,* 57 F.3d at 1580, 35 USPQ2d at 1121; *In re
+ Paulsen,* 30 F.3d 1475, 1482, 31 USPQ2d 1671, 1676 (Fed. Cir. 1994) (Evidence
+ of commercial success of articles not covered by the claims subject to the
+ **[35 U.S.C.
+ 103](mpep-9015-appx-l.html#d0e302450)** rejection was not probative of nonobviousness.). Additionally,
+ the evidence must be reasonably commensurate in scope with the claimed invention. See,
+ e.g., *In re Kulling,* 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed.
+ Cir. 1990); *In re Grasselli,* 713 F.2d 731, 743, 218 USPQ 769, 777 (Fed.
+ Cir. 1983). *In re Soni,* 54 F.3d 746, 34 USPQ2d 1684 (Fed. Cir. 1995)
+ does not change this analysis. In *Soni,* the court declined to consider
+ the Office’s argument that the evidence of nonobviousness was not commensurate in scope
+ with the claim because it had not been raised by the examiner *Id.* 54
+ F.3d at 751, 34 USPQ2d at 1688. 
+ 
+
+
+When considering whether proffered evidence is commensurate in scope with
+ the claimed invention, Office personnel should not require the applicant to show
+ unexpected results over the entire range of properties possessed by a chemical compound or
+ composition. See, e.g., *In re Chupp,* 816 F.2d 643, 646, 2 USPQ2d 1437,
+ 1439 (Fed. Cir. 1987). Evidence that the compound or composition possesses superior and
+ unexpected properties in one of a spectrum of common properties can be sufficient to rebut
+ a *prima facie* case of obviousness. *Id.*
+
+
+For example, a showing of unexpected results for a single member of a
+ claimed subgenus, or a narrow portion of a claimed range would be sufficient to rebut a
+ *prima facie* case of obviousness if a skilled artisan "could ascertain
+ a trend in the exemplified data that would allow him to reasonably extend the probative
+ value thereof." *In re Clemens,* 622 F.2d 1029, 1036, 206 USPQ 289, 296
+ (CCPA 1980) (Evidence of the nonobviousness of a broad range can be proven by a narrower
+ range when one skilled in the art could ascertain a trend that would allow him to
+ reasonably extend the probative value thereof.). But see, *Grasselli,* 713
+ F.2d at 743, 218 USPQ at 778 (evidence of superior properties for sodium containing
+ composition insufficient to establish the non-obviousness of broad claims for a catalyst
+ with "an alkali metal" where it was well known in the catalyst art that different alkali
+ metals were not interchangeable and applicant had shown unexpected results only for sodium
+ containing materials); *In re Greenfield,* 571 F.2d 1185, 1189, 197 USPQ
+ 227, 230 (CCPA 1978) (evidence of superior properties in one species insufficient to
+ establish the nonobviousness of a subgenus containing hundreds of compounds); *In
+ re Lindner,* 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972) (one test not
+ sufficient where there was no adequate basis for concluding the other claimed compounds
+ would behave the same way). However, an exemplary showing may be sufficient to establish a
+ reasonable correlation between the showing and the entire scope of the claim, when viewed
+ by a skilled artisan. See, e.g., *Chupp,* 816 F.2d at 646, 2 USPQ2d at
+ 1439; *Clemens,* 622 F.2d at 1036, 206 USPQ at 296. On the other hand,
+ evidence of an unexpected property may not be sufficient regardless of the scope of the
+ showing. Usually, a showing of unexpected results is sufficient to overcome a
+ *prima facie* case of obviousness. See, e.g., *In re
+ Albrecht,* 514 F.2d 1389, 1396, 185 USPQ 585, 590 (CCPA 1975). However, where
+ the claims are not limited to a particular use, and where the prior art provides other
+ motivation to select a particular species or subgenus, a showing of a new use may not be
+ sufficient to confer patentability. See *Dillon,* 919 F.2d at 692, 16
+ USPQ2d at 1900-01. Accordingly, each case should be evaluated individually based on the
+ totality of the circumstances. 
+ 
+
+
+ Evidence pertaining to secondary considerations must be taken into
+ account whenever present; however, it does not necessarily control the obviousness
+ conclusion. See, e.g., *Pfizer, Inc. v. Apotex, Inc.,* 480 F.3d 1348,
+ 1372, 82 USPQ2d 1321, 1339 (Fed. Cir. 2007) ("the record establish [ed] such a strong case
+ of obviousness" that allegedly unexpectedly superior results were ultimately insufficient
+ to overcome obviousness conclusion); *Leapfrog Enterprises Inc. v. Fisher-Price
+ Inc.,* 485 F.3d 1157, 1162, 82 USPQ2d 1687, 1692 (Fed. Cir. 2007) ("given the
+ strength of the *prima facie* obviousness showing, the evidence on
+ secondary considerations was inadequate to overcome a final conclusion" of obviousness);
+ and *Newell Cos., Inc. v. Kenney Mfg. Co.,* 864 F.2d 757, 768, 9 USPQ2d
+ 1417, 1426 (Fed. Cir. 1988). Office personnel should not evaluate rebuttal evidence for its
+ "knockdown" value against the *prima facie* case,
+ *Piasecki,* 745 F.2d at 1473, 223 USPQ at 788, or summarily dismiss it
+ as not compelling or insufficient. If the evidence is deemed insufficient to rebut the
+ *prima facie* case of obviousness, Office personnel should specifically
+ set forth the facts and reasoning that justify this conclusion. See **[MPEP § 716](s716.html#d0e92085)** -
+ **[§
+ 716.10](s716.html#d0e93797)** for additional information pertaining to the evaluation of
+ rebuttal evidence submitted under **[37 CFR 1.132](mpep-9020-appx-r.html#d0e323552)**.
+ 
+
+
+Many basic approaches that a practitioner may use to
+ demonstrate nonobviousness also continue to apply in the post-*KSR* era.
+ Since it is now clear that a strict teaching-suggestion-motivation approach is not the only
+ way to establish a *prima facie* case of obviousness, it is true that
+ practitioners have been required to shift the emphasis of their nonobviousness arguments to
+ a certain degree. However, familiar lines of argument still apply, including teaching away
+ from the claimed invention by the prior art, lack of a reasonable expectation of success,
+ and unexpected results. Indeed, they may have even taken on added importance in view of the
+ recognition in *KSR* of a variety of possible rationales. 
+ 
+
+
+The following cases exemplify the continued application of
+ the principle that when evidence has been presented to rebut an obviousness rejection, it
+ should not be evaluated simply for its "knockdown" value. Rather, all evidence must be
+ reweighed to determine whether the claims are nonobvious.
+ 
+
+
+**Example 1:**The claims at issue in *PharmaStem Therapeutics,
+ Inc. v. Viacell, Inc.,* 491 F.3d 1342, 83 USPQ2d 1289 (Fed. Cir. 2007), were
+ directed to compositions comprising hematopoietic stem cells from umbilical cord or
+ placental blood, and to methods of using such compositions for treatment of blood and
+ immune system disorders. The composition claims required that the stem cells be present
+ in an amount sufficient to effect hematopoietic reconstitution when administered to a
+ human adult. The trial court had found that PharmaStem’s patents were infringed and not
+ invalid on obviousness or other grounds. On appeal, the Federal Circuit reversed the
+ district court, determining that the claims were invalid for obviousness. 
+ 
+
+
+The Federal Circuit discussed the evidence presented at
+ trial. It pointed out that the patentee, PharmaStem, had not invented an entirely new
+ procedure or new composition. Rather, PharmaStem’s own specification acknowledged that
+ it was already known in the prior art that umbilical cord and placental blood-based
+ compositions contained hematopoietic stem cells, and that hematopoietic stem cells were
+ useful for the purpose of hematopoietic reconstitution. PharmaStem’s contribution was to
+ provide experimental proof that umbilical cord and placental blood could be used to
+ effect hematopoietic reconstitution in mice. By extrapolation, one of ordinary skill in
+ the art would have expected this reconstitution method to work in humans as well. 
+ 
+
+
+The court rejected PharmaStem’s expert testimony that
+ hematopoietic stem cells had not been proved to exist in cord blood prior to the
+ experiments described in PharmaStem’s patents. The court explained that the expert
+ testimony was contrary to the inventors’ admissions in the specification, as well as
+ prior art teachings that disclosed stem cells in cord blood. In this case, PharmaStem’s
+ evidence of nonobviousness was outweighed by contradictory evidence. 
+ 
+
+
+Despite PharmaStem’s useful experimental validation of
+ hematopoietic reconstitution using hematopoietic stem cells from umbilical cord and
+ placental blood, the Federal Circuit found that the claims at issue would have been
+ obvious. There had been ample suggestion in the prior art that the claimed method would
+ have worked. Absolute predictability is not a necessary prerequisite to a case of
+ obviousness. Rather, a degree of predictability that one of ordinary skill would have
+ found to be reasonable is sufficient. The Federal Circuit concluded that "[g]ood science
+ and useful contributions do not necessarily result in patentability."
+ *Id.* at 1364, 83 USPQ2d at 1304.
+ 
+
+
+
+**Example 2:**It was found to be an error in *In re
+ Sullivan,* 498 F.3d 1345, 84 USPQ2d 1034 (Fed. Cir. 2007), for the Board to
+ fail to consider evidence submitted to rebut a *prima facie* case of
+ obviousness. 
+ 
+
+
+The claimed invention was directed to an antivenom
+ composition comprising F(ab) fragments used to treat venomous rattlesnake bites. The
+ composition was created from antibody molecules that include three fragments, F(ab)2,
+ F(ab) and F(c), which have separate properties and utilities. There have been
+ commercially available antivenom products that consisted of whole antibodies and F(ab)2
+ fragments, but researchers had not experimented with antivenoms containing only F(ab)
+ fragments because it was believed that their unique properties would prevent them from
+ decreasing the toxicity of snake venom. The inventor, Sullivan, discovered that F(ab)
+ fragments are effective at neutralizing the lethality of rattlesnake venom, while
+ reducing the occurrence of adverse immune reactions in humans. On appeal of the
+ examiner’s rejection, the Board held that the claim was obvious because all the elements
+ of the claimed composition were accounted for in the prior art, and that the composition
+ taught by that prior art would have been expected by a person of ordinary skill in the
+ art at the time the invention was made to neutralize the lethality of the venom of a
+ rattlesnake. 
+ 
+
+
+Rebuttal evidence had not been considered by the Board
+ because it considered the evidence to relate to the intended use of the claimed
+ composition as an antivenom, rather than the composition itself. Appellant successfully
+ argued that even if the Board had shown a *prima facie* case of
+ obviousness, the extensive rebuttal evidence must be considered. The evidence included
+ three expert declarations submitted to show that the prior art taught away from the
+ claimed invention, an unexpected property or result from the use of F(ab) fragment
+ antivenom, and why those having ordinary skill in the art expected antivenoms comprising
+ F(ab) fragments to fail. The declarations related to more than the use of the claimed
+ composition. While a statement of intended use may not render a known composition
+ patentable, the claimed composition was not known, and whether it would have been
+ obvious depends upon consideration of the rebuttal evidence. Appellant did not concede
+ that the only distinguishing factor of its composition is the statement of intended use
+ and extensively argued that its claimed composition exhibits the unexpected property of
+ neutralizing the lethality of rattlesnake venom while reducing the occurrence of adverse
+ immune reactions in humans. The Federal Circuit found that such a use and unexpected
+ property cannot be ignored – the unexpected property is relevant and thus the
+ declarations describing it should have been considered. 
+ 
+
+
+Nonobviousness can be shown when a person of ordinary
+ skill in the art would not have reasonably predicted the claimed invention based on the
+ prior art, and the resulting invention would not have been expected. All evidence must
+ be considered when properly presented. 
+ 
+
+
+
+**Example 3:** The case of *Hearing Components, Inc. v. Shure
+ Inc.,* 600 F.3d 1357, 94 USPQ2d 1385 (Fed. Cir. 2010), involved a disposable
+ protective covering for the portion of a hearing aid that is inserted into the ear
+ canal. The covering was such that it could be readily replaced by a user as needed. 
+ 
+
+
+At the district court, Shure had argued that Hearing
+ Components’ patents were obvious over one or more of three different combinations of
+ prior art references. The jury disagreed, and determined that the claims were
+ nonobvious. The district court upheld the jury verdict, stating that in view of the
+ conflicting evidence presented by the parties as to the teachings of the references,
+ motivation to combine, and secondary considerations, the nonobviousness verdict was
+ sufficiently grounded in the evidence. 
+ 
+
+
+Shure appealed to the Federal Circuit, but the Federal
+ Circuit agreed with the district court that the jury’s nonobviousness verdict had been
+ supported by substantial evidence. Although Shure had argued before the jury that the
+ Carlisle reference taught an ear piece positioned inside the ear canal, Hearing
+ Components’ credible witness countered that only the molded duct and not the ear piece
+ itself was taught by Carlisle as being inside the ear canal. On the issue of combining
+ references, Shure’s witness had given testimony described as "rather sparse, and lacking
+ in specific details." *Id.* at 1364, 94 USPQ2d at 1397. In
+ contradistinction, Hearing Components’ witness "described particular reasons why one
+ skilled in the art would not have been motivated to combine the references."
+ *Id.* Finally, as to secondary considerations, the Federal Circuit
+ determined that Hearing Components had shown a nexus between the commercial success of
+ its product and the patent by providing evidence that "the licensing fee for a covered
+ product was more than cut in half immediately upon expiration" of the patent. 
+ 
+
+
+Although the Hearing Components case involves substantial
+ evidence of nonobviousness in a jury verdict, it is nevertheless instructive for Office
+ personnel on the matter of weighing evidence. Office personnel routinely must consider
+ evidence in the form of prior art references, statements in the specification, or
+ declarations under **[37 CFR 1.131](mpep-9020-appx-r.html#aia_d0e323504)** or **[1.132](mpep-9020-appx-r.html#d0e323552)** . Other forms of evidence may
+ also be presented during prosecution. Office personnel are reminded that evidence that
+ has been presented in a timely manner should not be ignored, but rather should be
+ considered on the record. However, not all evidence need be accorded the same weight. In
+ determining the relative weight to accord to rebuttal evidence, considerations such as
+ whether a nexus exists between the claimed invention and the proffered evidence, and
+ whether the evidence is commensurate in scope with the claimed invention, are
+ appropriate. The mere presence of some credible rebuttal evidence does not dictate that
+ an obviousness rejection must always be withdrawn. See **[MPEP § 2145](s2145.html#d0e212553)**. Office
+ personnel must consider the appropriate weight to be accorded to each piece of evidence.
+ An obviousness rejection should be made or maintained only if evidence of obviousness
+ outweighs evidence of nonobviousness. See **[MPEP § 706](s706.html#d0e57969)**, subsection I. ("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.").
+ **[MPEP §
+ 716.01(d)](s716.html#d0e92769)** provides further guidance on weighing evidence in
+ making a determination of patentability. 
+ 
+
+
+**I.** **ARGUMENT DOES NOT REPLACE EVIDENCE WHERE EVIDENCE IS NECESSARY**Attorney argument is not evidence unless it is an admission, in which
+ case, an examiner may use the admission in making a rejection. See **[MPEP § 2129](s2129.html#d0e202844)** and
+ **[§
+ 2144.03](s2144.html#d0e210752)** for a discussion of admissions as prior art. 
+ 
+
+
+The arguments of counsel cannot take the place of evidence in the
+ record. *In re* *Schulze,* 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965);
+ *In re Geisler,* 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) ("An
+ assertion of what seems to follow from common experience is just attorney argument and
+ not the kind of factual evidence that is required to rebut a *prima
+ facie* case of obviousness."). See **[MPEP § 716.01(c)](s716.html#d0e92659)** for examples of
+ attorney statements which are not evidence and which must be supported by an appropriate
+ affidavit or declaration.
+ 
+
+**II.** **ARGUING ADDITIONAL ADVANTAGES OR LATENT PROPERTIES*** 
+
+***Prima Facie Obviousness Is Not Rebutted by Merely Recognizing Additional
+ Advantages or Latent Properties Present But Not Recognized in the Prior
+ Art***Mere recognition of latent properties in the prior art does not
+ render nonobvious an otherwise known invention. *In re Wiseman,* 596
+ F.2d 1019, 201 USPQ 658 (CCPA 1979) (Claims were directed to grooved carbon disc
+ brakes wherein the grooves were provided to vent steam or vapor during a braking
+ action. A prior art reference taught noncarbon disc brakes which were grooved for the
+ purpose of cooling the faces of the braking members and eliminating dust. The court
+ held the prior art references when combined would overcome the problems of dust and
+ overheating solved by the prior art and would inherently overcome the steam or vapor
+ cause of the problem relied upon for patentability by applicants. Granting a patent
+ on the discovery of an unknown but inherent function (here venting steam or vapor)
+ "would remove from the public that which is in the public domain by virtue of its
+ inclusion in, or obviousness from, the prior art." 596 F.2d at 1022, 201 USPQ at
+ 661.); *In re Baxter Travenol Labs.,* 952 F.2d 388, 21 USPQ2d 1281
+ (Fed. Cir. 1991) (Appellant argued that the presence of DEHP as the plasticizer in a
+ blood collection bag unexpectedly suppressed hemolysis and therefore rebutted any
+ *prima facie* showing of obviousness, however the closest prior
+ art utilizing a DEHP plasticized blood collection bag inherently achieved same
+ result, although this fact was unknown in the prior art.).
+ 
+
+
+"The fact that appellant has recognized another advantage which
+ would flow naturally from following the suggestion of the prior art cannot be the
+ basis for patentability when the differences would otherwise be obvious." *Ex
+ parte Obiaya,* 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985) (The
+ prior art taught combustion fluid analyzers which used labyrinth heaters to maintain
+ the samples at a uniform temperature. Although appellant showed an unexpectedly
+ shorter response time was obtained when a labyrinth heater was employed, the Board
+ held this advantage would flow naturally from following the suggestion of the prior
+ art.). See also *Lantech Inc.**v. Kaufman Co. of Ohio Inc.,* 878 F.2d 1446, 12 USPQ2d 1076, 1077
+ (Fed. Cir. 1989), *cert. denied,* 493 U.S. 1058 (1990) (unpublished
+ — not citable as precedent) ("The recitation of an additional advantage associated
+ with doing what the prior art suggests does not lend patentability to an otherwise
+ unpatentable invention.").
+ 
+
+
+*In re Lintner,* 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) and
+ *In re Dillon,* 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990)
+ discussed in **[MPEP
+ § 2144](s2144.html#d0e210576)** are also pertinent to this issue.
+ 
+
+
+See **[MPEP § 716.02](s716.html#d0e92844)** - **[§ 716.02(g)](s716.html#d0e93296)** for a discussion of
+ declaratory evidence alleging unexpected results.
+ 
+
+**III.** **ARGUING THAT PRIOR ART DEVICES ARE NOT PHYSICALLY COMBINABLE**"The test for obviousness is not whether the features of a secondary
+ reference may be bodily incorporated into the structure of the primary reference....
+ Rather, the test is what the combined teachings of those references would have suggested
+ to those of ordinary skill in the art." *In re**Keller,* 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). See also
+ *In re**Sneed,* 710 F.2d 1544, 1550, 218 USPQ 385, 389 (Fed. Cir. 1983) ("[I]t
+ is not necessary that the inventions of the references be physically combinable to
+ render obvious the invention under review."); and *In re**Nievelt,* 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973) ("Combining the
+ teachings of references does not involve an ability to combine
+ their specific structures.").
+ 
+
+
+However, the claimed combination cannot change the principle of
+ operation of the primary reference or render the reference inoperable for its intended
+ purpose. See **[MPEP
+ § 2143.01](s2143.html#d0e210245)**. 
+ 
+
+**IV.** **ARGUING AGAINST REFERENCES INDIVIDUALLY** **One cannot show nonobviousness by attacking references individually where the
+ rejections are based on combinations of references**. *In re**Keller,* 642 F.2d 413, 208 USPQ 871 (CCPA 1981); *In
+ re**Merck & Co., Inc.,* 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
+ Where a rejection of a claim is based on two or more references, a reply that is limited
+ to what a subset of the applied references teaches or fails to teach, or that fails to
+ address the combined teaching of the applied references may be considered to be an
+ argument that attacks the reference(s) individually. Where an applicant’s reply
+ establishes that each of the applied references fails to teach a limitation and
+ addresses the combined teachings and/or suggestions of the applied prior art, the reply
+ as a whole does not attack the references individually as the phrase is used in
+ *Keller* and reliance on *Keller* would not be
+ appropriate. This is because "[T]he test for obviousness is what the combined teachings
+ of the references would have suggested to [a PHOSITA]." *In re
+ Mouttet,* 686 F.3d 1322, 1333, 103 USPQ2d 1219, 1226 (Fed. Cir. 2012).
+ 
+
+**V.** **ARGUING ABOUT THE NUMBER OF REFERENCES COMBINED**Reliance on a large number of references in a rejection does not,
+ without more, weigh against the obviousness of the claimed invention. *In
+ re**Gorman,* 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991) (Court affirmed
+ a rejection of a detailed claim to a candy sucker shaped like a thumb on a stick based
+ on thirteen prior art references.).
+ 
+
+**VI.** **ARGUING LIMITATIONS WHICH ARE NOT CLAIMED** Although the claims are interpreted in light of the specification,
+ limitations from the specification are not read into the claims. *In
+ re**Van Geuns,* 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993) (Claims to
+ a superconducting magnet which generates a "uniform magnetic field" were not limited to
+ the degree of magnetic field uniformity required for Nuclear Magnetic Resonance (NMR)
+ imaging. Although the specification disclosed that the claimed magnet may be used in an
+ NMR apparatus, the claims were not so limited.); *Constant**v. Advanced Micro-Devices, Inc.,* 848 F.2d 1560, 1571-72, 7 USPQ2d
+ 1057, 1064-1065 (Fed. Cir.), *cert. denied,* 488 U.S. 892 (1988)
+ (Various limitations on which appellant relied were not stated in the claims; the
+ specification did not provide evidence indicating these limitations must be read into
+ the claims to give meaning to the disputed terms.); *Ex parte**McCullough,* 7 USPQ2d 1889, 1891 (Bd. Pat. App. & Inter. 1987)
+ (Claimed electrode was rejected as obvious despite assertions that electrode functions
+ differently than would be expected when used in nonaqueous battery since "although the
+ demonstrated results may be germane to the patentability of a battery containing
+ appellant’s electrode, they are not germane to the patentability of the invention
+ claimed on appeal.").
+ 
+
+
+See **[MPEP
+ § 2111](s2111.html#d0e200352)** - **[§ 2116.01](s2116.html#d0e201660)**, for additional case law
+ relevant to claim interpretation.
+ 
+
+**VII.** **ARGUING ECONOMIC INFEASIBILITY** The fact that a "combination would not be made by businessmen for
+ economic reasons" does not mean that a person of ordinary skill in the art would not
+ make the combination because of some technological incompatibility. *In
+ re**Farrenkopf,* 713 F.2d 714, 718, 219 USPQ 1, 4 (Fed. Cir. 1983) (Prior
+ art reference taught that addition of inhibitors to radioimmunoassay is the most
+ convenient, but costliest solution to stability problem. The court held that the
+ additional expense associated with the addition of inhibitors would not discourage one
+ of ordinary skill in the art from seeking the convenience expected therefrom.).
+ 
+
+**VIII.** **ARGUING ABOUT THE AGE OF REFERENCES** "The mere age of the references is not persuasive of the unobviousness
+ of the combination of their teachings, absent evidence that, notwithstanding knowledge
+ of the references, the art tried and failed to solve the problem." *In
+ re**Wright,* 569 F.2d 1124, 1127, 193 USPQ 332, 335 (CCPA 1977) (100 year
+ old patent was properly relied upon in a rejection based on a combination of
+ references.). See also *Ex parte**Meyer,* 6 USPQ2d 1966 (Bd. Pat. App. & Inter. 1988) (length of
+ time between the issuance of prior art patents relied upon (1920 and 1976) was not
+ persuasive of nonobviousness).
+ 
+
+**IX.** **ARGUING THAT PRIOR ART IS NONANALOGOUS**See **[MPEP
+ § 2141.01(a)](s2141.html#d0e208985)** for case law pertaining to analogous art.
+ 
+
+**X.** **ARGUING IMPROPER RATIONALES FOR COMBINING REFERENCES*** 
+
+***A.******Impermissible Hindsight***Applicants may argue that the examiner’s conclusion of obviousness
+ is based on improper hindsight reasoning. However, "[a]ny judgment on obviousness is
+ in a sense necessarily a reconstruction based on hindsight reasoning, but so long as
+ it takes into account only knowledge which was within the level of ordinary skill in
+ the art at the time the claimed invention was made and does not include knowledge
+ gleaned only from applicant’s disclosure, such a reconstruction is proper."
+ *In re**McLaughlin,* 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971).
+ Applicants may also argue that the combination of two or more references is
+ "hindsight" because "express" motivation to combine the references is lacking.
+ However, there is no requirement that an "express, written motivation to combine must
+ appear in prior art references before a finding of obviousness." See *Ruiz v.
+ A.B. Chance Co.,* 357 F.3d 1270, 1276, 69 USPQ2d 1686, 1690 (Fed. Cir.
+ 2004). See **[MPEP §
+ 2141](s2141.html#d0e208143)** and **[§ 2143](s2143.html#d0e209516)** for guidance regarding
+ establishment of a *prima facie*  case of obviousness.
+ 
+
+***B.******Obvious To Try Rationale***An applicant may argue the examiner is applying an improper "obvious
+ to try" rationale in support of an obviousness rejection. 
+ 
+
+
+An "obvious to try" rationale may support a conclusion that a claim
+ would have been obvious where one skilled in the art is choosing from a finite number
+ of identified, predictable solutions, with a reasonable expectation of success. " [A]
+ person of ordinary skill has good reason to pursue the known options within his or
+ her technical grasp. If this leads to the anticipated success, it is likely that
+ product [was] not of innovation but of ordinary skill and common sense. In that
+ instance the fact that a combination was obvious to try might show that it was
+ obvious under **[§
+ 103](mpep-9015-appx-l.html#d0e302450)**." *KSR Int'l Co. v. Teleflex Inc.,* 550
+ U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007).
+ 
+
+
+"The admonition that ‘obvious to try’ is not the standard under
+ **[§
+ 103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** has been directed mainly at two kinds of error. In some
+ cases, what would have been ‘obvious to try’ would have been to vary all parameters
+ or try each of numerous possible choices until one possibly arrived at a successful
+ result, where the prior art gave either no indication of which parameters were
+ critical or no direction as to which of many possible choices is likely to be
+ successful.... In others, what was ‘obvious to try’ was to explore a new technology
+ or general approach that seemed to be a promising field of experimentation, where the
+ prior art gave only general guidance as to the particular form of the claimed
+ invention or how to achieve it." *In re**O’Farrell,* 853 F.2d 894, 903, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988)
+ (citations omitted) (The court held the claimed method would have been obvious over
+ the prior art relied upon because one reference contained a detailed enabling
+ methodology, a suggestion to modify the prior art to produce the claimed invention,
+ and evidence suggesting the modification would be successful.). 
+ 
+
+***C.******Lack of Suggestion To Combine References***A suggestion or motivation to combine references is an appropriate
+ method for determining obviousness, however it is just one of a number of valid
+ rationales for doing so. The Court in *KSR* identified several
+ exemplary rationales to support a conclusion of obviousness which are consistent with
+ the proper "functional approach" to the determination of obviousness as laid down in
+ *Graham.**KSR,* 550 U.S. at 415-21, 82 USPQ2d at 1395-97. See
+ **[MPEP §
+ 2141](s2141.html#d0e208143)** and **[§ 2143](s2143.html#d0e209516)**.
+ 
+
+***D.******References Teach Away from the Invention or Render Prior Art
+ Unsatisfactory for Intended Purpose***In addition to the material below, see **[MPEP § 2141.02](s2141.html#d0e209106)**
+ (prior art must be considered in its entirety, including disclosures that teach away
+ from the claims) and **[MPEP § 2143.01](s2143.html#d0e210245)** (proposed modification cannot render the
+ prior art unsatisfactory for its intended purpose or change the principle of
+ operation of a reference).
+ 
+
+**1.** **The Nature of the Teaching Is Highly
+ Relevant**A prior art reference that "teaches away" from the claimed
+ invention is a significant factor to be considered in determining obviousness;
+ however, "the nature of the teaching is highly relevant and must be weighed in
+ substance. A known or obvious composition does not become patentable simply
+ because it has been described as somewhat inferior to some other product for the
+ same use." *In re**Gurley,* 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994)
+ (Claims were directed to an epoxy resin based printed circuit material. A prior
+ art reference disclosed a polyester-imide resin based printed circuit material,
+ and taught that although epoxy resin based materials have acceptable stability and
+ some degree of flexibility, they are inferior to polyester-imide resin based
+ materials. The court held the claims would have been obvious over the prior art
+ because the reference taught epoxy resin based material was useful for applicant’s
+ purpose, applicant did not distinguish the claimed epoxy from the prior art epoxy,
+ and applicant asserted no discovery beyond what was known to the art.).
+ 
+
+
+Furthermore, "the prior art’s mere disclosure of more than one
+ alternative does not constitute a teaching away from any of these alternatives
+ because such disclosure does not criticize, discredit, or otherwise discourage the
+ solution claimed…." *In re Fulton,* 391 F.3d 1195, 1201, 73
+ USPQ2d 1141, 1146 (Fed. Cir. 2004).
+ 
+
+**2.** **References Cannot Be Combined Where Reference Teaches Away from Their
+ Combination**It is improper to combine references where the references teach
+ away from their combination. *In re Grasselli,* 713 F.2d 731,
+ 743, 218 USPQ 769, 779 (Fed. Cir. 1983) (The claimed catalyst which contained both
+ iron and an alkali metal was not suggested by the combination of a reference which
+ taught the interchangeability of antimony and alkali metal with the same
+ beneficial result, combined with a reference expressly excluding antimony from,
+ and adding iron to, a catalyst.). 
+ 
+
+**3.** **Proceeding Contrary to Accepted Wisdom Is Evidence of Nonobviousness**The totality of the prior art must be considered, and proceeding
+ contrary to accepted wisdom in the art is evidence of nonobviousness. *In
+ re Hedges,* 783 F.2d 1038, 228 USPQ 685 (Fed. Cir. 1986) (Applicant’s
+ claimed process for sulfonating diphenyl sulfone at a temperature above 127ºC was
+ contrary to accepted wisdom because the prior art as a whole suggested using lower
+ temperatures for optimum results as evidenced by charring, decomposition, or
+ reduced yields at higher temperatures.).
+ 
+
+
+Furthermore, "[k]nown disadvantages in old devices which would
+ naturally discourage search for new inventions may be taken into account in
+ determining obviousness." *United States v. Adams,* 383 U.S. 39,
+ 52, 148 USPQ 479, 484 (1966).
+ 
+
+***E.******Applicability of KSR to All Technologies***At the time the *KSR* decision was
+ handed down, some observers questioned whether the principles discussed were intended
+ by the Supreme Court to apply to all fields of inventive endeavor. Arguments were
+ made that because the technology at issue in KSR involved the relatively
+ well-developed and predictable field of vehicle pedal assemblies, the decision was
+ relevant only to such fields. The Federal Circuit has soundly repudiated such a
+ notion, stating that *KSR* applies across technologies:
+ 
+
+
+
+> 
+> This court also declines to cabin KSR to the
+>  "predictable arts" (as opposed to the "unpredictable art" of biotechnology). In
+>  fact, this record shows that one of skill in this advanced art would find these
+>  claimed "results" profoundly "predictable." 
+>  
+> 
+> 
+> 
+
+
+*In re Kubin,* 561 F.3d 1351, 1360, 90 USPQ2d 1417, 1424 (Fed. Cir.
+ 2009). Thus, Office personnel should not withdraw any rejection solely on the basis
+ that the invention lies in a technological area ordinarily considered to be
+ unpredictable. 
+ 
+
+**XI.** **FORM PARAGRAPHS** See **[MPEP
+ § 707.07(f)](s707.html#d0e74561)** for form paragraphs **[7.37](#fp7.37)** through **[7.38](#fp7.38)** which may be used where applicant’s
+ arguments are not persuasive or are moot.
+ 
+
+
+[[top]](#top)
+
+
+]

data/2100/s2147.html.txt

@@ -0,0 +1,149 @@
+[
+# 2147 Biotechnology Process Applications; Pre-AIA 35
+ U.S.C. 103(b) [R-10.2019]
+
+
+*[Editor Note: This MPEP section is **not 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)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)** and **[MPEP §
+ 2159](s2159.html#ch2100_d20034_1dc34_1dd)**.]*
+
+
+
+#### *Pre-AIA 35 U.S.C. 103   
+ Conditions for patentability; non-obvious
+ subject matter.*
+
+
+\*\*\*\*\*
+
+
+* (b)
+	+ (1) Notwithstanding subsection (a), and upon timely election by
+	 the applicant for patent to proceed under this subsection, a
+	 biotechnological process using or resulting in a composition of matter that
+	 is novel under **[section 102](mpep-9015-appx-l.html#d0e302383)** and
+	 nonobvious under subsection (a) of this section shall be considered
+	 nonobvious if-
+		- (A) claims to the process and the composition of matter
+		 are contained in either the same application for patent or in separate
+		 applications having the same effective filing date; and
+		- (B) the composition of matter, and the process at the time
+		 it was invented, were owned by the same person or subject to an
+		 obligation of assignment to the same person.
+	+ (2) A patent issued on a process under paragraph (1)-
+		- (A) shall also contain the claims to the composition of
+		 matter used in or made by that process, or
+		- (B) shall, if such composition of matter is claimed in
+		 another patent, be set to expire on the same date as such other
+		 patent, notwithstanding **[section 154](mpep-9015-appx-l.html#al_d1fbe1_19854_1ee)**.
+	+ (3) For purposes of paragraph (1), the term "biotechnological
+	 process" means-
+		- (A) a process of genetically altering or otherwise
+		 inducing a single- or multi-celled organism to-
+			* (i) express an exogenous nucleotide sequence,
+			* (ii) inhibit, eliminate, augment, or alter expression
+			 of an endogenous nucleotide sequence, or
+			* (iii) express a specific physiological characteristic
+			 not naturally associated with said organism;
+		- (B) cell fusion procedures yielding a cell line that
+		 expresses a specific protein, such as a monoclonal antibody; and
+		- (C) a method of using a product produced by a process
+		 defined by subparagraph (A) or (B), or a combination of subparagraphs
+		 (A) and (B).
+
+
+\*\*\*\*\*
+
+
+
+**[Pre-AIA 35 U.S.C.
+ 103(b)](mpep-9015-appx-l.html#d0e302450)** is applicable to biotechnological processes only.
+ **[Pre-AIA 35 U.S.C.
+ 103(b)](mpep-9015-appx-l.html#d0e302450)** precludes a rejection of process claims which involve the use
+ or making of certain nonobvious biotechnological compositions of matter under
+ **[pre-AIA 35 U.S.C.
+ 103(a)](mpep-9015-appx-l.html#d0e302450)**. Only applications subject to **[pre-AIA 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**
+ are subject to **[pre-AIA 35
+ U.S.C. 103(b)](mpep-9015-appx-l.html#d0e302462)**. See **[MPEP §
+ 2159](s2159.html#ch2100_d20034_1dc34_1dd)**.
+ 
+
+
+**[Pre-AIA 35 U.S.C.
+ 103(b)](mpep-9015-appx-l.html#d0e302450)** requires that:
+ 
+
+
+* (A) the biotechnological process and composition of matter be contained
+ in either the same application or in separate applications having the same effective
+ filing date;
+* (B) both the biotechnological process and composition of matter be owned
+ or subject to an assignment to the same person at the time the process was
+ invented;
+* (C) a patent issued on the process also contain the claims to the
+ composition of matter used in or made by the process, or, if the process and
+ composition of matter are in different patents, the patents expire on the same
+ date;
+* (D) the biotechnological process falls within the definition set forth in
+ **[pre-AIA 35
+ U.S.C. 103(b)](mpep-9015-appx-l.html#d0e302450)**; and
+* (E) a timely election be made to proceed under the provisions of
+ **[pre-AIA 35
+ U.S.C. 103(b)](mpep-9015-appx-l.html#d0e302450)**.
+
+
+An election to proceed under **[pre-AIA 35 U.S.C. 103(b)](mpep-9015-appx-l.html#d0e302450)** shall be made
+ by way of petition under **[37 CFR 1.182](mpep-9020-appx-r.html#d0e324988)**. The petition must establish that all the requirements
+ set forth in **[pre-AIA
+ 35 U.S.C. 103(b)](mpep-9015-appx-l.html#d0e302450)** have been satisfied.
+ 
+
+
+An election will normally be considered timely if it is made no later than
+ the earlier of either the payment of the issue fee or the filing of an appeal brief in an
+ application which contains a composition of matter claim which has not been rejected under
+ **[pre-AIA 35 U.S.C.
+ 102](mpep-9015-appx-l.html#d0e302383)** or **[103](mpep-9015-appx-l.html#d0e302450)**.
+ 
+
+
+In an application where at least one composition of matter claim has not
+ been rejected under **[pre-AIA 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** or **[103](mpep-9015-appx-l.html#d0e302450)**, a **[pre-AIA 35 U.S.C.
+ 103(b)](mpep-9015-appx-l.html#d0e302450)** election may be made by submitting the petition and an
+ amendment requesting entry of process claims which correspond to the composition of matter
+ claim.
+ 
+
+
+For applications pending on or after November 1, 1995, in which the issue
+ fee has been paid prior to March 26, 1996, the timeliness requirement for an election under
+ **[pre-AIA 35 U.S.C.
+ 103(b)](mpep-9015-appx-l.html#d0e302450)** will be considered satisfied if the conditions of 37 CFR
+ 1.312(b) are met. However, if a patent is granted on an application entitled to the benefit
+ of **[pre-AIA 35 U.S.C.
+ 103(b)](mpep-9015-appx-l.html#d0e302450)** without an election having been made as a result of error,
+ patentees may file a reissue application to permit consideration of process claims which
+ qualify for **[pre-AIA 35
+ U.S.C. 103(b)](mpep-9015-appx-l.html#d0e302450)** treatment. See **[MPEP § 1412.02](s1412.html#d0e136811)**, subsection II.
+ 
+
+
+See **[MPEP §
+ 2116.01](s2116.html#d0e201660)** for a discussion of the Federal Circuit’s decisions in
+ *In re Ochiai,* 71 F.3d 1565, 37 USPQ 1127 (Fed. Cir. 1995) and
+ *In re Brouwer,* 77 F.3d 422, 37 USPQ2d 1663 (Fed. Cir. 1996)
+ which address the general issue of whether an otherwise conventional process could be
+ patented if it were limited to making or using a nonobvious product. In view of the Federal
+ Circuit’s decisions in *Ochiai* and *Brouwer*, an
+ applicant’s need to rely upon **[pre-AIA 35 U.S.C. 103(b)](mpep-9015-appx-l.html#d0e302450)** should be
+ rare. See also 1184 OG 86 (Comm’r Pat. 1996). See **[35 U.S.C. 282](mpep-9015-appx-l.html#d0e305845)** for the effect of a
+ determination of nonobviousness under **[pre-AIA 35 U.S.C. 103(b)(1)](mpep-9015-appx-l.html#d0e302450)** on the
+ presumption of validity.
+ 
+
+
+[[top]](#top)
+
+
+]

data/2100/s2148.html.txt

@@ -0,0 +1,603 @@
+[
+# 2148 Form Paragraphs for Use in Rejections Under
+ Pre-AIA 35 U.S.C. 103 [R-10.2019]
+
+
+The following form paragraphs should be used in making the
+ appropriate rejections under **[pre-AIA 35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)**.
+ 
+
+
+# ¶ 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](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)** and **[103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** (or as subject to **[pre-AIA 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**
+ and **[103](mpep-9015-appx-l.html#d0e302450)**)
+ is incorrect, any correction of the statutory basis 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.
+
+
+
+# ¶ 7.20.fti Statement of Statutory Basis, Pre-AIA 35 U.S.C.
+ 103(a)
+
+
+The following is a quotation of **[pre-AIA 35 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302455)**
+ which forms the basis for all obviousness rejections set forth in this Office action:
+ 
+
+
+
+> 
+> (a) A patent may not be obtained though the invention is not
+>  identically disclosed or described as set forth in section **[102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**, if the
+>  differences between the subject matter sought to be patented and the prior art are such
+>  that the subject matter as a whole would have been obvious at the time the invention was
+>  made to a person having ordinary skill in the art to which said subject matter pertains.
+>  Patentability shall not be negatived by the manner in which the invention was made. 
+>  
+> 
+> 
+> 
+
+
+### Examiner Note:
+
+ * 1. The statute is not to be cited in
+ all Office actions. It is only required in first actions on
+ the merits employing **[pre-AIA 35 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302455)** and final
+ rejections. Where the statute is being applied, but is not cited in an action on the
+ merits, use paragraph **[7.103](#fp7.103)**.
+* 2. This form paragraph should only be used ONCE in a
+ given Office action.
+* 3. This form paragraph must precede form paragraphs
+ **[7.20.01.fti](#fp7.20.01.fti)** - **[7.22.fti](#fp7.22.fti)** when this form paragraph is
+ used to cite the statute in first actions and final rejections.
+
+
+
+# ¶ 7.20.01.fti Pre-AIA 103(a) Rejection Using Prior Art Under Pre-AIA 102(e),
+ (f), or (g) That Is Not Disqualified Under Pre-AIA 35 U.S.C. 103(c) Because Reference Is Prior
+ Art Under Another Subsection of Pre-AIA 35 U.S.C. 102
+
+
+Applicant has provided a submission in this file that the invention
+ was owned by, or subject to an obligation of assignment to, the same entity as
+ **[1]** at the time this invention was made, or was subject to a joint research
+ agreement at the time this invention was made. However, reference **[2]** qualifies
+ as prior art under another subsection of **[pre-AIA 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**, and therefore is
+ not disqualified as prior art under **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302521)**.
+ 
+
+
+Applicant may overcome the applied art either by a showing
+ under **[37 CFR
+ 1.132](mpep-9020-appx-r.html#d0e323552)** that the invention disclosed therein was derived from the inventor
+ of this application, and is therefore, not the invention "by another," or by antedating the
+ applied art under **[37 CFR 1.131(a)](mpep-9020-appx-r.html#aia_d0e323512)**.
+ 
+
+
+### Examiner Note:
+
+ * 1. This form paragraph must be included following form paragraph
+ 7.20.fti in all actions containing rejections under **[pre-AIA 35 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302455)** using art
+ that is disqualified under **[pre-AIA 103(c)](mpep-9015-appx-l.html#d0e302521)** using
+ **[pre-AIA
+ 102(e)](mpep-9015-appx-l.html#d0e302407)**, **[(f)](mpep-9015-appx-l.html#d0e302420)**, or **[(g)](mpep-9015-appx-l.html#d0e302424)**, but which
+ qualifies under another section of **[pre-AIA 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.
+* 2. In bracket 1, identify the common
+ assignee.
+* 3. In bracket 2, identify the reference which has been
+ disqualified.
+
+
+
+# ¶ 7.20.02.fti Joint Inventors, Common Ownership Presumed
+
+
+This application currently names joint inventors. In considering
+ patentability of the claims under pre-AIA **[35 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302455)**, the examiner presumes
+ that the subject matter of the various claims was commonly owned at the time any inventions
+ covered therein were made absent any evidence to the contrary. Applicant is advised of the
+ obligation under **[37 CFR
+ 1.56](mpep-9020-appx-r.html#aia_d0e319407)** to point out the inventor and invention dates of each claim that
+ was not commonly owned at the time a later invention was made in order for the examiner to
+ consider the applicability of **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302521)** and potential
+ **[pre-AIA 35 U.S.C.
+ 102(e)](mpep-9015-appx-l.html#d0e302407)**, **[(f)](mpep-9015-appx-l.html#d0e302420)** or **[(g)](mpep-9015-appx-l.html#d0e302424)** prior art under pre-AIA
+ **[35 U.S.C.
+ 103(a)](mpep-9015-appx-l.html#d0e302455)**.
+ 
+
+
+### Examiner Note:
+
+ * This paragraph must be used in all applications with
+ joint inventors (unless the claims are clearly restricted to only one claimed invention,
+ e.g., only a single claim is presented in the application).
+
+
+
+# ¶ 7.20.04.fti Pre-AIA 103(a) Rejection Using Prior Art Under Pre-AIA 102(e),
+ (f), or (g) That Is Attempted To Be Disqualified Under pre-AIA 35 U.S.C. 103(c) Using the
+ Common Ownership or Assignment Provision
+
+
+Applicant has attempted to disqualify reference **[1]** under
+ **[pre-AIA 35 U.S.C.
+ 103(c)](mpep-9015-appx-l.html#d0e302521)** by showing that the invention was owned by, or subject to an
+ obligation of assignment to, the same entity as **[2]** at the time this invention
+ was made. However, applicant has failed to provide a statement that the application and the
+ reference were owned by, or subject to an obligation of assignment to, the same person at the
+ time the invention was made in a conspicuous manner, and therefore, the reference is not
+ disqualified as prior art under **[pre-AIA 35 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302455)**. Applicant must
+ file the required submission in order to properly disqualify the reference under
+ **[pre-AIA 35 U.S.C.
+ 103(c)](mpep-9015-appx-l.html#d0e302521)**. See **[MPEP § 2146.02](s2146.html#ch2100_d2c184_12765_27)**, subsection II.
+ 
+
+
+In addition, applicant may overcome the applied art either
+ by a showing under **[37
+ CFR 1.132](mpep-9020-appx-r.html#d0e323552)** that the invention disclosed therein was derived from the
+ inventor of this application, and is therefore not the invention "by another," or by
+ antedating the applied art under **[37 CFR 1.131(a)](mpep-9020-appx-r.html#aia_d0e323512)**.
+ 
+
+
+### Examiner Note:
+
+ * 1. This form paragraph must be included in all actions containing
+ rejections under **[pre-AIA 35 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302455)** where an attempt has been made to
+ disqualify the reference under **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302521)**, but where
+ the applicant has not provided a proper statement indicating common ownership or
+ assignment **at the time the invention was made**.
+* 2. In brackets 1 and 2, identify the commonly owned
+ applied art (e.g., patent or co-pending application).
+
+
+
+# ¶ 7.20.05.fti Pre-AIA 103(a) Rejection Using Prior Art Under Pre-AIA 102(e),
+ (f), or (g) That Is Attempted To Be Disqualified Under Pre-AIA 35 U.S.C. 103(c) Using the
+ Joint Research Agreement Provisions
+
+
+Applicant has attempted to disqualify reference **[1]** under
+ **[pre-AIA 35 U.S.C.
+ 103(c)](mpep-9015-appx-l.html#d0e302521)** by showing that the invention was subject to a joint research
+ agreement at the time this invention was made. However, applicant has failed to
+ **[2]**. Applicant must file the missing requirements in order to properly
+ disqualify the reference under **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302521)**. See
+ **[37 CFR
+ 1.71(g)](mpep-9020-appx-r.html#d0e320173)** and **[1.104(c)](mpep-9020-appx-r.html#d0e322163)** and **[MPEP §
+ 2146.02](s2146.html#ch2100_d2c184_12765_27)**, subsection III.
+ 
+
+
+In addition, applicant may overcome the applied art either
+ by a showing under **[37
+ CFR 1.132](mpep-9020-appx-r.html#d0e323552)** that the invention disclosed therein was derived from the
+ inventor of this application, and is therefore, not the invention "by another," or by
+ antedating the applied art under **[37 CFR 1.131(a)](mpep-9020-appx-r.html#aia_d0e323512)**.
+ 
+
+
+### Examiner Note:
+
+ * 1. This form paragraph must be included in all actions containing
+ rejections under **[pre-AIA 35 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302455)** where an attempt has been made to
+ disqualify the reference under **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302521)** using the
+ joint research agreement provisions but the disqualification attempt is ineffective.
+* 2. In bracket 1, identify the reference which is sought to be
+ disqualified under **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302521)**.
+* 3. In bracket 2, identify the reason(s) why the disqualification
+ attempt is ineffective. The reason(s) could be noncompliance with the statutory
+ requirements of **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302521)** or rule requirements relating to the
+ CREATE Act, such as failure to submit the required statement or failure to amend the
+ specification to include the names of the parties to the joint research agreement. See
+ **[37 CFR
+ 1.104(c)(5)(ii)](mpep-9020-appx-r.html#d0e322235)**.
+
+
+
+# ¶ 7.21.fti Rejection, Pre-AIA 35 U.S.C. 103(a)
+
+
+Claim **[1]** is/are rejected under **[pre-AIA 35 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302455)**
+ as being unpatentable over **[2]**. 
+ 
+
+
+### Examiner Note:
+
+ * 1. This paragraph must be preceded by either form
+ paragraph **[7.20.fti](#fp7.20.fti)** or form paragraph **[7.103](#fp7.103)**.
+* 2. An explanation of the rejection must follow this form paragraph.
+ See **[MPEP §
+ 2144](s2144.html#d0e210576)**.
+* 3. If the rejection relies upon prior art under **[pre-AIA 35 U.S.C.
+ 102(e)](mpep-9015-appx-l.html#d0e302407)**, use **[pre-AIA 35 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302407)** as amended
+ by the American Inventors Protection Act to determine the reference’s prior art date,
+ unless the reference is a U.S. patent issued directly, or indirectly, from an
+ international application which has an international filing date prior to November 29,
+ 2000. In other words, use **[pre-AIPA 35 U.S.C.
+ 102(e)](s2139.html#ch700_d222ef_29c79_2c1)** only if the reference is a U.S. patent issued directly
+ or indirectly from either a national stage of an international application (application
+ under **[35 U.S.C.
+ 371](mpep-9015-appx-l.html#d0e307164)**) which has an international filing date prior to November 29,
+ 2000 or a continuing application claiming benefit under **[35 U.S.C. 120](mpep-9015-appx-l.html#d0e303023313p)**,
+ **[121](mpep-9015-appx-l.html#d0e303040)** or **[365(c)](mpep-9015-appx-l.html#d0e307053)** to an international
+ application having an international filing date prior to November 29, 2000. See the
+ Examiner Notes for form paragraphs **[7.12.fti](#fp7.12.fti)** and **[7.12.01.fti](#fp7.12.01.fti)** to assist in the
+ determination of the reference’s **[35 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302407)** date.
+* 4. If the applicability of this rejection (e.g., the availability
+ of the prior art as a reference under **[pre-AIA 35 U.S.C. 102(a)](mpep-9015-appx-l.html#d0e302391)** or
+ **[pre-AIA 35 U.S.C.
+ 102(b)](mpep-9015-appx-l.html#d0e302395)**) prevents the reference from being disqualified under
+ **[pre-AIA 35 U.S.C.
+ 103(c)](mpep-9015-appx-l.html#d0e302521)**, form paragraph **[7.20.01.fti](#fp7.20.01.fti)** must follow this form
+ paragraph.
+* 5. If this rejection is a provisional **[pre-AIA 35 U.S.C.
+ 103(a)](mpep-9015-appx-l.html#d0e302455)** rejection based upon a copending application that would
+ comprise prior art under **[pre-AIA 35 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302407)** if patented
+ or published, use form paragraph **[7.21.01.fti](#fp7.21.01.fti)**  instead of this paragraph.
+* 6. In bracket 1, insert the claim numbers which are
+ under rejection.
+* 7. In bracket 2, insert the prior art relied
+ upon.
+
+
+
+# ¶ 7.21.01.fti Provisional Rejection, Pre-AIA 35 U.S.C. 103(a), Common
+ Assignee, Common Applicant, or at Least One Common Joint Inventor
+
+
+Claim **[1]** is/are provisionally rejected under
+ **[pre-AIA 35 U.S.C.
+ 103(a)](mpep-9015-appx-l.html#d0e302391)** as being obvious over copending Application No. **[2]**
+ which has a common **[3]** with the instant application. Based upon the earlier
+ effective U.S. filing date of the copending application, it would constitute prior art under
+ **[pre-AIA 35 U.S.C.
+ 102(e)](mpep-9015-appx-l.html#d0e302407)** if published or patented. This provisional rejection under
+ **[pre-AIA 35 U.S.C.
+ 103(a)](mpep-9015-appx-l.html#d0e302455)** is based upon a presumption of future publication or patenting of
+ the copending application. **[4]**
+
+
+This provisional rejection might be overcome either by a showing under
+ **[37 CFR
+ 1.132](mpep-9020-appx-r.html#d0e323552)** that any invention disclosed but not claimed in the copending
+ application was derived from the inventor or joint inventors (i.e., the inventive entity) of
+ this application and is thus not the invention "by another," or by a showing of a date of
+ invention for the instant application prior to the effective U.S. filing date of the copending
+ application under **[37 CFR
+ 1.131(a)](mpep-9020-appx-r.html#aia_d0e323512)**. This rejection might also be overcome by showing that the
+ copending application is disqualified under **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302521)** as prior art in a
+ rejection under **[pre-AIA 35
+ U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302455)**.
+ See
+ **[MPEP §
+ 2146](s2146.html#d0e213206)** et seq.
+ 
+
+
+### Examiner Note:
+
+ * 1. This paragraph is used to provisionally reject claims not
+ patentably distinct from the disclosure in a copending application having an earlier
+ U.S. filing date and also having either a common assignee, a common applicant
+ (**[35 U.S.C.
+ 118](mpep-9015-appx-l.html#d0e302910912)**), or at least one common joint inventor. This form paragraph
+ should not be used when the copending application is disqualified under
+ **[pre-AIA 35 U.S.C.
+ 103(c)](mpep-9015-appx-l.html#d0e302521)** as prior art in a **[pre-AIA 35 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302455)** rejection.
+ 
+ See **[MPEP §
+ 2146.03(a)](s2146.html#ch2100_d2c184_12851_21a)**.
+* 2. Use **[pre-AIA 35 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302407)** as amended
+ by the American Inventors Protection Act (AIPA) to determine the copending application's
+ prior art date, unless the copending application is based directly, or indirectly, from
+ an international application which has an international filing date prior to November
+ 29, 2000. If the copending application is either a national stage of an international
+ application (application under **[35 U.S.C. 371](mpep-9015-appx-l.html#d0e307164)**) which has an
+ international filing date prior to November 29, 2000, or a continuing application
+ claiming benefit under **[35 U.S.C. 120](mpep-9015-appx-l.html#d0e303023313p)**, **[121](mpep-9015-appx-l.html#d0e303040)**,
+ **[365(c)](mpep-9015-appx-l.html#d0e307053)**, or **[386(c)](mpep-9015-appx-l.html#al_d225a2_29a9c_1b3)** to an international
+ application having an international filing date prior to November 29, 2000, use
+ **[pre-AIPA 35
+ U.S.C. 102(e)](mpep-0700.html#ch700_d222ef_29cdb_3ac)** to determine the copending application’s prior art
+ date. See the Examiner Notes for form paragraphs **[7.12.fti](#fp7.12.fti)** and
+ **[7.12.01.fti](#fp7.12.01.fti)** to assist in the determination of the
+ reference’s pre-AIA and pre-AIPA 35 U.S.C. 102(e) dates, respectively.
+* 3. If the claimed invention is fully disclosed in the
+ copending application, use paragraph **[7.15.01.fti](#fp7.15.01.fti)**.
+* 4. In bracket 1, insert the claim number(s) which
+ is/are under rejection.
+* 5. In bracket 2, insert the application
+ number.
+* 6. In bracket 3, insert --assignee--, --applicant--, or
+ --joint inventor--.
+* 7. In bracket 4, insert an explanation of obviousness.
+ See **[MPEP §
+ 2144](s2144.html#d0e210576)**.
+* 8. If the claimed invention is not patentably distinct
+ from the invention claimed in the copending application, a provisional obviousness
+ double patenting rejection should additionally be made using form paragraphs
+ **[8.33](#fp8.33)** and
+ **[8.37](#fp8.37)**.
+* 9. A rejection should additionally be made under **[pre-AIA 35 U.S.C.
+ 103(a)](mpep-9015-appx-l.html#d0e302455)** using form paragraph **[7.21.fti](#fp7.21.fti)** if:
+	+ evidence indicates that the copending application is
+	 also prior art under **[pre-AIA 35 U.S.C. 102(f)](mpep-9015-appx-l.html#d0e302420)** or
+	 **[(g)](mpep-9015-appx-l.html#d0e302424)** (e.g., applicant has named the prior inventor in response
+	 to a requirement made using form paragraph **[8.28.fti](#fp8.28.fti)**); and
+	+ the copending application has not been
+	 disqualified as prior art in a **[pre-AIA 35 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302455)**
+	 rejection pursuant to **[pre-AIA 35 U.S.C.
+	 103(c)](mpep-9015-appx-l.html#d0e302521)**.
+
+
+
+# ¶ 7.21.02.fti Rejection, pre-AIA 35 U.S.C. 103(a), Common Assignee, Common
+ Applicant, or at Least One Common Joint Inventor
+
+
+Claim **[1]** is/are rejected under **[pre-AIA 35 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302455)**
+ as being obvious over **[2]**.
+ 
+
+
+The applied reference has a common **[3]** with the instant
+ application. Based upon the earlier effective U.S. filing date of the reference, it
+ constitutes prior art under **[pre-AIA 35 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302407)**. This rejection under **[pre-AIA 35 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302455)**
+ might be overcome by: (1) a showing under **[37 CFR 1.132](mpep-9020-appx-r.html#d0e323552)** that any invention disclosed
+ but not claimed in the reference was derived from the inventor of this application and is thus
+ not an invention "by another"; (2) a showing of a date of invention for the claimed subject
+ matter of the application which corresponds to subject matter disclosed but not claimed in the
+ reference, prior to the effective U.S. filing date of the reference under **[37 CFR 1.131(a)](mpep-9020-appx-r.html#aia_d0e323512)**; or
+ (3) an oath or declaration under **[37 CFR 1.131(c)](mpep-9020-appx-r.html#ar_d1fc99_2983e_8a)** stating that the
+ application and reference are currently owned by the same party and that the inventor or joint
+ inventors (i.e., the inventive entity) named in the application is the prior inventor under
+ **[pre-AIA 35 U.S.C.
+ 104](mpep-9015-appx-l.html#al_d1fbe1_197a5_8)** as in effect on March 15, 2013, together with a terminal disclaimer
+ in accordance with **[37 CFR
+ 1.321(c)](mpep-9020-appx-r.html#d0e326532)**. This rejection might also be overcome by showing that the
+ reference is disqualified under **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302521)** as prior art in a
+ rejection under **[pre-AIA 35
+ U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302455)**.
+ See
+ **[MPEP §
+ 2146](s2146.html#d0e213206)** et seq. **[4]**
+
+
+### Examiner Note:
+
+ * 1. This paragraph is used to reject over a reference (patent or
+ published application) with an earlier filing date that discloses the claimed invention,
+ and that only qualifies as prior art under **[pre-AIA 35 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302407)**. If the
+ reference qualifies as prior art under **[pre-AIA 35 U.S.C. 102(a)](mpep-9015-appx-l.html#d0e302391)** or
+ **[(b)](mpep-9015-appx-l.html#al_d1d85b_11e7d_156)**, then this form paragraph should not be used (form paragraph
+ **[7.21.fti](#fp7.21.fti)**
+ should be used instead). The reference must have either a common assignee, a common
+ applicant (**[35
+ U.S.C. 118](mpep-9015-appx-l.html#d0e302910912)**), or at least one common joint inventor. This form
+ paragraph should not be used in applications when the reference is disqualified under
+ **[pre-AIA 35 U.S.C.
+ 103(c)](mpep-9015-appx-l.html#d0e302521)** as prior art in a **[pre-AIA 35 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302455)** rejection.
+ See
+ **[MPEP §
+ 2146.03](s2146.html#ch2100_d2c184_127cc_34b)**.
+* 2. **[Pre-AIA 35 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302407)** as amended
+ by the American Inventors Protection Act of 1999 (AIPA) must be applied if the reference
+ is by another and is one of the following:
+	+ a U.S. patent or a publication of a U.S.
+	 application for patent filed under **[35 U.S.C. 111(a)](mpep-9015-appx-l.html#d0e302678aia)**;
+	+ a U.S. patent issued directly or indirectly from,
+	 or a U.S. or WIPO publication of, an international application (PCT) if the
+	 international application has **an international filing date on or after November
+	 29, 2000**;
+	+ a U.S. patent issued from, or a WIPO publication of, an
+	 international design application that designates the United States.See the Examiner Notes for form paragraph
+ **[7.12.fti](#fp7.12.fti)**
+ to assist in the determination of the **[pre-AIA 35 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302407)** date of the
+ reference.
+* 3. **[Pre-AIPA 35 U.S.C. 102(e)](s2139.html#ch700_d222ef_29c79_2c1)** must be applied if
+ the reference is a U.S. patent issued directly, or indirectly, from an international
+ application filed prior to November 29, 2000. See the Examiner Notes for form paragraph
+ **[7.12.01.fti](#fp7.12.01.fti)** to assist in the determination of the
+ **[pre-AIPA 35 U.S.C. 102(e)](s2139.html#ch700_d222ef_29c79_2c1)** date of the
+ reference.
+* 4. In bracket 1, insert the claim number(s) which
+ is/are under rejection.
+* 5. In bracket 2, insert the prior art reference(s)
+ relied upon for the obviousness rejection.
+* 6. In bracket 3, insert --assignee--, --applicant--, or
+ --joint inventor--.
+* 7. In bracket 4, insert an explanation of obviousness.
+ See **[MPEP §
+ 2144](s2144.html#d0e210576)**.
+
+
+
+# ¶ 7.22.fti Rejection, pre-AIA 35 U.S.C. 103(a), Further in View
+ Of
+
+
+Claim **[1]** rejected under **[pre-AIA 35 U.S.C.
+ 103(a)](mpep-9015-appx-l.html#d0e302455)** as being unpatentable over **[2]** as applied to claim
+ **[3]** above, and further in view of **[4]**.
+ 
+
+
+### Examiner Note:
+
+ * 1. This form paragraph must be preceded by form
+ paragraph **[7.21.fti](#fp7.21.fti)**.
+* 2. An explanation of the rejection must follow this form paragraph.
+ See **[MPEP §
+ 2144](s2144.html#d0e210576)**.
+* 3. If the rejection relies upon prior art under **[pre-AIA 35 U.S.C.
+ 102(e)](mpep-9015-appx-l.html#d0e302407)**, use **[pre-AIA 35 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302407)** as amended
+ by the American Inventors Protection Act to determine the reference’s prior art date,
+ unless the reference is a U.S. patent issued directly, or indirectly, from an
+ international application which has an international filing date prior to November 29,
+ 2000. In other words, use pre-AIPA 35 U.S.C. 102(e) only if the reference is a U.S.
+ patent issued directly or indirectly from either a national stage of an international
+ application (application under **[35 U.S.C. 371](mpep-9015-appx-l.html#d0e307164)**) which has an
+ international filing date prior to November 29, 2000 or a continuing application
+ claiming benefit under **[35 U.S.C. 120](mpep-9015-appx-l.html#d0e303023313)**, **[121](mpep-9015-appx-l.html#d0e303040912)**,
+ **[365(c)](mpep-9015-appx-l.html#d0e307053)** or **[386(c)](mpep-9015-appx-l.html#al_d225a2_29a9c_1b3)** to an international
+ application having an international filing date prior to November 29, 2000. See the
+ Examiner Notes for form paragraphs **[7.12.fti](#fp7.12.fti)** and **[7.12.01.fti](#fp7.12.01.fti)** to assist in the
+ determination of the reference’s **[35 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302407)** date.
+
+
+
+# ¶ 7.23.fti Test for Obviousness
+
+
+The factual inquiries for establishing a background for determining
+ obviousness under **[pre-AIA 35
+ U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302455)** are summarized as follows:
+ 
+
+
+* 1. Determining the scope and contents of the prior art.
+* 2. Ascertaining the differences between the prior art and the
+ claims at issue.
+* 3. Resolving the level of ordinary skill in the pertinent
+ art.
+* 4. Considering objective evidence present in the application
+ indicating obviousness or nonobviousness.
+
+
+### Examiner Note:
+
+
+This form paragraph may be used, if appropriate, in response to an
+ argument regarding the applicability of the factors for determining obviousness.
+ 
+
+
+
+# ¶ 7.27.fti Rejection, pre-AIA 35 U.S.C. 102 or pre-AIA 103(a)
+
+
+Claim(s) **[1]** is/are rejected under **[pre-AIA 35 U.S.C.
+ 102](mpep-9015-appx-l.html#d0e302383)**(**[2]**) as anticipated by or, in the alternative, under
+ **[pre-AIA 35 U.S.C.
+ 103(a)](mpep-9015-appx-l.html#d0e302455)** as obvious over **[3]**. 
+ 
+
+
+### Examiner Note:
+
+ * 1. This form paragraph is NOT intended to be commonly
+ used as a substitute for a rejection under **[pre-AIA 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**. In other
+ words, a single rejection under either **[pre-AIA 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** or
+ **[pre-AIA 35 U.S.C.
+ 103(a)](mpep-9015-appx-l.html#d0e302455)** should be made whenever possible using appropriate form
+ paragraphs **[7.15.fti](#fp7.15.fti)** to **[7.19.fti](#fp7.19.fti)**, **[7.21.fti](#fp7.21.fti)** and
+ **[7.22.fti](#fp7.22.fti)**.
+ Examples of circumstances where this paragraph may be used are as
+ follows:
+	+ When the interpretation of the claim(s) is or may
+	 be in dispute, i.e., given one interpretation, a rejection under **[pre-AIA 35 U.S.C.
+	 102](mpep-9015-appx-l.html#d0e302383)** is appropriate and given another interpretation, a
+	 rejection under **[pre-AIA 35 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302455)** is appropriate. See
+	 **[MPEP §§
+	 2111](s2111.html#d0e200352)** -  **[2116.01](s2116.html#d0e201660)** for guidelines on claim
+	 interpretation.
+	+ When the reference discloses all the limitations
+	 of a claim except a property or function, and the examiner cannot determine whether
+	 or not the reference inherently possesses properties which anticipate or render
+	 obvious the claimed invention but has basis for shifting the burden of proof to
+	 applicant as in *In re Fitzgerald*, 619 F.2d 67, 205 USPQ 594 (CCPA
+	 1980). See **[MPEP §§
+	 2112](s2112.html#d0e201036)** - **[2112.02](s2112.html#d0e201360)**.
+	+ When the reference teaches a small genus which
+	 places a claimed species in the possession of the public as in *In re
+	 Schaumann*, 572 F.2d 312, 197 USPQ 5 (CCPA 1978), and the species would
+	 have been obvious even if the genus were not sufficiently small to justify a
+	 rejection under **[35
+	 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**. See **[MPEP §§ 2131.02](s2131.html#d0e203166)** and
+	 **[2144.08](s2144.html#d0e211596)** for more information on anticipation and
+	 obviousness of species by a disclosure of a genus.
+	+ When the reference teaches a product that appears
+	 to be the same as, or an obvious variant of, the product set forth in a
+	 product-by-process claim although produced by a different process. See *In re
+	 Marosi*, 710 F.2d 799, 218 USPQ 289 (Fed. Cir. 1983) and *In re
+	 Thorpe*, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). See also
+	 **[MPEP §
+	 2113](s2113.html#d0e201450)**.
+	+ When the reference teaches all claim limitations except a
+	 means plus function limitation and the examiner is not certain whether the element
+	 disclosed in the reference is an equivalent of the claimed element and therefore
+	 anticipatory, or whether the prior art element is an obvious variant of the claimed
+	 element. See **[MPEP §§
+	 2183](s2183.html#d0e220121)** - **[2184](s2184.html#d0e220302)**.
+	+ When the ranges disclosed in the reference and
+	 claimed by applicant overlap in scope but the reference does not contain a specific
+	 example within the claimed range. See the concurring opinion in *Ex parte
+	 Lee*, 31 USPQ2d 1105 (Bd. Pat. App. & Inter. 1993). See
+	 **[MPEP §
+	 2131.03](s2131.html#d0e203269)**.
+* 2. If the interpretation of the claim(s) renders the
+ claim(s) indefinite, a rejection under **[35 U.S.C. 112(b)](mpep-9015-appx-l.html#al_d1d85b_2ae65_215)** or
+ **[pre-AIA 35 U.S.C.
+ 112](mpep-9015-appx-l.html#d0e302824)**, 2nd paragraph, may be appropriate.
+* 3. In bracket 1, insert the claim number(s) which is/are
+ under rejection.
+* 4. In bracket 2, insert the appropriate paragraph
+ letter(s) in parenthesis.
+* 5. In bracket 3, insert the prior art reference relied upon for the
+ rejection.
+* 6. A full explanation should follow this form
+ paragraph.
+* 7. If the rejection relies upon prior art under **[pre-AIA 35 U.S.C.
+ 102(e)](mpep-9015-appx-l.html#d0e302407)**, use **[pre-AIA 35 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302407)** as amended
+ by the American Inventors Protection Act (AIPA) to determine the reference’s prior art
+ date, unless the reference is a U.S. patent issued directly, or indirectly, from an
+ international application which has an international filing date prior to November 29,
+ 2000. In other words, use **[pre-AIPA 35 U.S.C. 102(e)](s2139.html#ch700_d222ef_29c79_2c1)** only
+ if the reference is a U.S. patent issued directly or indirectly from either a national
+ stage of an international application (application under **[35 U.S.C. 371](mpep-9015-appx-l.html#d0e307164)**)
+ which has an international filing date prior to November 29, 2000, or a continuing
+ application claiming benefit under **[35 U.S.C. 120](mpep-9015-appx-l.html#d0e303023313)** , **[121](mpep-9015-appx-l.html#d0e303040912)** or
+ **[365(c)](mpep-9015-appx-l.html#d0e307053)**, or **[386(c)](mpep-9015-appx-l.html#al_d225a2_29a9c_1b3)** to an international
+ application having an international filing date prior to November 29, 2000. See the
+ Examiner Notes for form paragraphs **[7.12.fti](#fp7.12.fti)** and **[7.12.01.fti](#fp7.12.01.fti)** to assist in the
+ determination of the reference’s pre-AIA and pre-AIPA **[35 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302407)**
+ dates, respectively.
+* 8. This form paragraph must be preceded by
+ **[7.07.fti](#fp7.07.fti)**,
+ one or more of form paragraphs **[7.08.fti](#fp7.08.fti)** to **[7.14.fti](#fp7.14.fti)** as appropriate, and form paragraph
+ **[7.20.fti](#fp7.20.fti)**
+ or by form paragraph **[7.103](#fp7.103)**.
+* 9. For applications with an actual filing date on or
+ after March 16, 2013, that claim priority to, or the benefit of, an application filed
+ before March 16, 2013, this form paragraph must be preceded by form paragraph
+ **[7.06](#fp7.06)**.
+
+
+
+[[top]](#top)
+
+
+]

data/2100/s2149.html.txt

@@ -0,0 +1,9 @@
+[
+# 2149 [Reserved]
+
+
+
+[[top]](#top)
+
+
+]

data/2100/s2150.html.txt

@@ -0,0 +1,51 @@
+[
+# 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 [R-11.2013]
+
+
+*[Editor Note: See **[MPEP § 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine
+ whether an application is subject to examination under the FITF provisions, and
+ **[MPEP §
+ 2131](s2131.html#d0e202959)**-**[MPEP § 2138](s2138.html#d0e207005)** for examination of
+ applications subject to **[pre-AIA 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**.]*
+
+
+Continued Applicability of **[pre-AIA 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**
+ and **[103](mpep-9015-appx-l.html#d0e302450)**: The Leahy-Smith America Invents Act (AIA) revised
+ **[35 U.S.C.
+ 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)** and thereby, the standard to determine what prior art is
+ available during examination of an application. See Public Law 112-29, 125 Stat. 284
+ (2011). The changes to **[35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)** and **[103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** in the
+ AIA do not apply to any application filed before March 16, 2013. Thus, any application
+ filed before March 16, 2013, is governed by **[pre-AIA 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** and
+ **[103](mpep-9015-appx-l.html#d0e302450)**
+ (i.e., the application is a pre-AIA (first to invent) application (hereinafter "pre-AIA
+ application")). Note that neither the filing of a request for continued examination, nor
+ entry into the national stage under **[35 U.S.C. 371](mpep-9015-appx-l.html#d0e307164)**, constitutes the filing
+ of a new application. Accordingly, even if a request for continued examination under
+ **[37 CFR
+ 1.114](mpep-9020-appx-r.html#d0e322625)** is filed on or after March 16, 2013, in an application that was
+ filed before March 16, 2013, the application remains subject to **[pre-AIA 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**
+ and **[103](mpep-9015-appx-l.html#d0e302450)**. Submission of an amendment including a claim that includes new
+ matter on or after March 16, 2013, also does not affect an application’s status as a
+ pre-AIA application. See **[35 U.S.C. 132(a)](mpep-9015-appx-l.html#d0e303192)**. Similarly, a PCT application filed under
+ **[35 U.S.C.
+ 363](mpep-9015-appx-l.html#d0e306994313)** before March 16, 2013, is subject to **[pre-AIA 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**
+ and **[103](mpep-9015-appx-l.html#d0e302450)**, regardless of whether the application enters the national stage
+ under **[35 U.S.C.
+ 371](mpep-9015-appx-l.html#d0e307164)** before or after March 16, 2013. Applications filed on or after
+ March 16, 2013 are also subject to **[pre-AIA 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** if the
+ application has never contained a claim with an effective filing date on or after March 16,
+ 2013 and has never claimed the benefit of an application that ever contained such a claim.
+ **[MPEP §§
+ 2131](s2131.html#d0e202959)**-**[2138](s2138.html#d0e207005)** provide examination guidance on the
+ prior art available in the examination of applications subject to **[pre-AIA 35 U.S.C.
+ 102](mpep-9015-appx-l.html#d0e302383)**.
+ 
+
+
+[[top]](#top)
+
+
+]

data/2100/s2151.html.txt

@@ -0,0 +1,324 @@
+[
+# 2151 Overview of the Changes to 35 U.S.C. 102 and 103 in
+ the AIA [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)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See **[MPEP §
+ 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is subject to
+ examination under the FITF provisions, and **[MPEP § 2131](s2131.html#d0e202959)**-**[MPEP § 2138](s2138.html#d0e207005)** for
+ examination of applications subject to **[pre-AIA 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**.]*
+
+
+After the AIA, **[35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)** continues to set forth
+ the scope of prior art that will preclude the grant of a patent on a claimed invention, but
+ revises what qualifies as prior art. Specifically, **[AIA 35 U.S.C.
+ 102(a)(1)](mpep-9015-appx-l.html#al_d1d85b_11e72_307)** and **[(a)(2)](mpep-9015-appx-l.html#al_d1d85b_11e72_315)** set forth what qualifies as
+ prior art. **[AIA
+ 35 U.S.C. 102(a)(1)](mpep-9015-appx-l.html#al_d1d85b_11e72_307)** provides that a person is not entitled to a
+ patent if 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. **[AIA 35 U.S.C. 102(a)(2)](mpep-9015-appx-l.html#al_d1d85b_11e72_315)** provides that a
+ person is not entitled to a patent if the claimed invention was described in a patent
+ issued under **[35 U.S.C.
+ 151](mpep-9015-appx-l.html#d0e303440)**, or in an application for patent published or deemed published
+ under **[35 U.S.C.
+ 122(b)](mpep-9015-appx-l.html#d0e303063)**, 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. **[AIA
+ 35 U.S.C. 102(b)](mpep-9015-appx-l.html#al_d1d85b_11e7d_156)** sets forth exceptions to prior art established in
+ **[AIA 35
+ U.S.C. 102(a)](mpep-9015-appx-l.html#al_d1d85b_11e72_2ee)**. Specifically, **[AIA 35 U.S.C.
+ 102(b)(1)](mpep-9015-appx-l.html#al_d1d85b_11e7d_172)** sets forth exceptions to prior art established in
+ **[AIA 35
+ U.S.C. 102(a)(1)](mpep-9015-appx-l.html#al_d1d85b_11e72_307)**, and **[AIA 35 U.S.C. 102(b)(2)](mpep-9015-appx-l.html#al_d1d85b_11e7d_19a)** sets forth
+ exceptions to prior art established in **[AIA 35 U.S.C. 102(a)(2)](mpep-9015-appx-l.html#al_d1d85b_11e72_315)**.
+ 
+
+
+The AIA also provides definitions in **[35 U.S.C. 100](mpep-9015-appx-l.html#d0e302338313)** of
+ the meaning of the terms "claimed invention," "effective filing date," "inventor," and
+ "joint inventor" (or "coinventor"). The AIA defines the term "claimed invention" in
+ **[35 U.S.C.
+ 100(j)](mpep-9015-appx-l.html#al_d1d85b_11e22_345)** as the subject matter defined by a claim in a patent or an
+ application for a patent. 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) in **[35 U.S.C. 100(i)(1)](mpep-9015-appx-l.html#al_d1d85b_11e1a_3b9)** as meaning the
+ earlier 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 provisional,
+ nonprovisional, international (PCT), or foreign patent application to which the patent or
+ application is entitled to benefit or priority as to such claimed invention. The AIA
+ defines the term "inventor" in **[35 U.S.C. 100(f)](mpep-9015-appx-l.html#d0e302367313)** as the individual or,
+ if a joint invention, the individuals collectively who invented or discovered the subject
+ matter of the invention, and in **[35 U.S.C. 100(g)](mpep-9015-appx-l.html#al_d1d85b_11e0c_133)** defines the term
+ "joint inventor" and "coinventor" to mean any one of the individuals who invented or
+ discovered the subject matter of a joint invention.
+ 
+
+
+As discussed previously, **[AIA 35 U.S.C.
+ 102(a)(1)](mpep-9015-appx-l.html#al_d1d85b_11e72_307)** provides that a person is not entitled to a patent if 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. Under **[pre-AIA
+ 35 U.S.C. 102(a)](mpep-9015-appx-l.html#d0e302391)** and **[(b)](mpep-9015-appx-l.html#d0e302395)**, knowledge or use of the invention
+ (**[pre-AIA 35 U.S.C.
+ 102(a)](mpep-9015-appx-l.html#d0e302391)**), or public use or sale of the invention (**[pre-AIA 35 U.S.C.
+ 102(b)](mpep-9015-appx-l.html#d0e302395)**), was required to be in the United States to qualify as a
+ prior art activity. Under the AIA, a prior public use, sale activity, or other disclosure
+ has no geographic requirement (i.e., need not be in the United States) to qualify as prior
+ art.
+ 
+
+
+**[AIA 35 U.S.C.
+ 102(b)(1)](mpep-9015-appx-l.html#al_d1d85b_11e7d_172)** provides that certain disclosures made one year or less
+ before the effective filing date of a claimed invention shall not be prior art under
+ **[35 U.S.C.
+ 102(a)(1)](mpep-9015-appx-l.html#al_d1d85b_11e72_307)** with respect to the claimed invention if: (1) The
+ disclosure was made by the inventor or joint inventor or by another who obtained the
+ subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
+ (2) the subject matter disclosed had, before such disclosure, been publicly disclosed 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. Thus, **[AIA 35 U.S.C.
+ 102(b)(1)](mpep-9015-appx-l.html#al_d1d85b_11e7d_172)** effectively provides a one-year grace period (grace period)
+ after a first inventor-originated disclosure of an invention within which the inventor,
+ assignee, obligated assignee, or other party having sufficient interest may file a patent
+ application which is not subject to such disclosure and certain other disclosures as prior
+ art. The one-year grace period in **[AIA 35 U.S.C. 102(b)(1)](mpep-9015-appx-l.html#al_d1d85b_11e7d_172)** is measured
+ from the filing date of the earliest U.S. or foreign patent application to which a proper
+ benefit or priority claim to such invention has been asserted in the patent or application
+ and the earlier application supports the claimed invention in the manner required by
+ **[35 U.S.C.
+ 112(a)](mpep-9015-appx-l.html#al_d1d85b_2ae60_3d5)**. Under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**, the one-year
+ grace period is measured from the filing date of the earliest application filed in the
+ United States (directly or through the PCT) and not from the dates of earlier filed foreign
+ patent applications.
+ 
+
+
+The date of invention is not relevant under
+ **[AIA 35 U.S.C.
+ 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**. Thus, a prior art disclosure could not be disqualified or
+ antedated by showing that the inventor invented the claimed invention prior to the
+ effective date of the prior art disclosure of the subject matter (e.g., under the
+ provisions of **[37 CFR
+ 1.131](mpep-9020-appx-r.html#aia_d0e323504)**).
+ 
+
+
+As discussed previously, **[AIA 35 U.S.C.
+ 102(a)(2)](mpep-9015-appx-l.html#al_d1d85b_11e72_315)** provides that a person is not entitled to a patent if the
+ claimed invention was described in a U.S. patent, a U.S. patent application publication, or
+ an application for patent deemed published under **[35 U.S.C. 122(b)](mpep-9015-appx-l.html#d0e303063)** (collectively referred
+ to as "U.S. patent documents"), that names another inventor and was effectively filed
+ before the effective filing date of the claimed invention. Under **[35 U.S.C. 374](mpep-9015-appx-l.html#d0e307311313)**, a
+ World Intellectual Property Organization (WIPO) publication of a Patent Cooperation Treaty
+ (PCT) international application that designates the United States is an application for
+ patent deemed published under **[35 U.S.C. 122(b)](mpep-9015-appx-l.html#d0e303063)** for purposes of
+ **[AIA 35
+ U.S.C. 102(a)(2)](mpep-9015-appx-l.html#al_d1d85b_11e72_315)**. Thus, under the AIA, WIPO publications of PCT
+ applications that designate the United States are treated as U.S. patent application
+ publications for prior art purposes, regardless of the international filing date, whether
+ they are published in English, or whether the PCT international application enters the
+ national stage in the United States. Accordingly, a WIPO publication of a PCT application
+ (WIPO published application) that designates the United States, a U.S. patent, or a U.S.
+ patent application publication that names another inventor and was effectively filed before
+ the effective filing date of the claimed invention, is prior art under **[AIA 35 U.S.C.
+ 102(a)(2)](mpep-9015-appx-l.html#al_d1d85b_11e72_315)**. Under **[pre-AIA 35 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302407)**, a WIPO
+ published application designating the United States is treated as a U.S. patent application
+ publication only if the PCT application was filed on or after November 29, 2000, and
+ published under **[PCT
+ Article 21(2)](mpep-9025-appx-t.html#d0e363634)** in the English language. See **[MPEP § 2136.03](s2136.html#d0e205924)**,
+ subsection III.
+ 
+
+
+**[AIA 35 U.S.C.
+ 102(d)](mpep-9015-appx-l.html#al_d1d85b_11ecb_1d1)** defines "effectively filed" for the purpose of determining
+ whether a particular U.S. patent document is prior art under **[AIA 35 U.S.C.
+ 102(a)(2)](mpep-9015-appx-l.html#al_d1d85b_11e72_315)** to a claimed invention. A U.S. patent document is
+ considered to have been effectively filed for purposes of its prior art effect under
+ **[35 U.S.C.
+ 102(a)(2)](mpep-9015-appx-l.html#al_d1d85b_11e72_315)** with respect to any subject matter it describes on the
+ earlier of: (1) The actual filing date of the patent or the application for patent; or (2)
+ if the patent or application for patent is entitled to claim the benefit of, or priority
+ to, the filing date of an earlier U.S. provisional, U.S. nonprovisional, international
+ (PCT), or foreign patent application, the filing date of the earliest such application that
+ describes the subject matter of the claimed invention. Thus, a U.S. patent document is
+ effective as prior art as of the filing date of the earliest application to which benefit
+ or priority is claimed and which describes the subject matter relied upon, regardless of
+ whether the earliest such application is a U.S. provisional or nonprovisional application,
+ an international (PCT) application, or a foreign patent application.
+ 
+
+
+**[AIA 35 U.S.C.
+ 102(b)(2)(A)](mpep-9015-appx-l.html#al_d1d85b_11e7d_1a7)** and **[(B)](mpep-9015-appx-l.html#al_d1d85b_11e7d_1b3)** provide that a disclosure shall not
+ be prior art to a claimed invention under **[35 U.S.C. 102(a)(2)](mpep-9015-appx-l.html#al_d1d85b_11e72_315)** if: (1) The subject
+ matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
+ or (2) the subject matter disclosed had, before such subject matter was effectively filed
+ under **[35 U.S.C.
+ 102(a)(2)](mpep-9015-appx-l.html#al_d1d85b_11e72_315)**, 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. Thus, under the AIA, a U.S. patent document that was not
+ issued or published more than one year before the effective filing date of the claimed
+ invention is not prior art to the claimed invention if: (1) The U.S. patent document was by
+ another who obtained the subject matter disclosed from the inventor or a joint inventor; or
+ (2) the inventor or a joint inventor, or another who obtained the subject matter disclosed
+ from an inventor or joint inventor, had publicly disclosed the subject matter before the
+ **[35 U.S.C.
+ 102(d)](mpep-9015-appx-l.html#al_d1d85b_11ecb_1d1)** ("effectively filed") date of the U.S. patent document. 
+ 
+
+
+Additionally, **[AIA 35 U.S.C. 102(b)(2)(C)](mpep-9015-appx-l.html#al_d1d85b_11e7d_1bf)** provides
+ that a disclosure made in a U.S. patent document shall not be prior art to a claimed
+ invention under **[35 U.S.C. 102(a)(2)](mpep-9015-appx-l.html#al_d1d85b_11e72_315)** if, not later than the effective filing date of
+ the claimed invention, the subject matter disclosed and the claimed invention were owned by
+ the same person or subject to an obligation of assignment to the same person. This
+ provision replaces the exception in **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302521)** that applied
+ only in the context of an obviousness analysis under **[35 U.S.C.
+ 103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** to prior art that was commonly owned at the time the claimed
+ invention was made, and which qualified as prior art only under **[pre-AIA 35 U.S.C.
+ 102(e)](mpep-9015-appx-l.html#d0e302407)**, **[(f)](mpep-9015-appx-l.html#d0e302420)**, and/or **[(g)](mpep-9015-appx-l.html#d0e302424)**. Thus, the AIA
+ provides that certain prior patents and published patent applications of co-workers and
+ collaborators are not prior art either for purposes of determining novelty
+ (**[35 U.S.C.
+ 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**) or nonobviousness (**[35 U.S.C. 103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)**). This exception,
+ however, only removes disclosures as prior art under **[AIA 35 U.S.C.
+ 102(a)(2)](mpep-9015-appx-l.html#al_d1d85b_11e72_315)**, namely, U.S. patent documents that were not published, but
+ that were effectively filed, before the effective filing date of the claimed invention.
+ This exception is not effective to except prior art that is also available under
+ **[35 U.S.C.
+ 102(a)(1)](mpep-9015-appx-l.html#al_d1d85b_11e72_307)**, that is, patents, printed publications, public uses, sale
+ activities, or other publicly available disclosures published or occurring before the
+ effective filing date of the claimed invention. A prior disclosure, as defined in
+ **[AIA 35
+ U.S.C. 102(a)(1)](mpep-9015-appx-l.html#al_d1d85b_11e72_307)**, by a co-worker or collaborator is prior art under
+ **[AIA 35
+ U.S.C. 102(a)(1)](mpep-9015-appx-l.html#al_d1d85b_11e72_307)** unless it falls within an exception under
+ **[AIA 35
+ U.S.C. 102(b)(1)](mpep-9015-appx-l.html#al_d1d85b_11e7d_172)**, regardless of whether the subject matter of the
+ prior disclosure and the claimed invention was commonly owned not later than the effective
+ filing date of the claimed invention.
+ 
+
+
+The AIA eliminates the provisions in **[pre-AIA 35 U.S.C.
+ 102(c)](mpep-9015-appx-l.html#d0e302399)** (abandonment of the invention), **[102(d)](mpep-9015-appx-l.html#d0e302403)** (premature
+ foreign patenting), **[102(f)](mpep-9015-appx-l.html#d0e302420)** (derivation), and **[102(g)](mpep-9015-appx-l.html#d0e302424)** (prior invention by another, but
+ see below for discussion of continued limited applicability). Under the AIA, abandonment of
+ the invention or premature foreign patenting is not relevant to patentability. Prior
+ invention by another is likewise not relevant to patentability under the AIA unless there
+ is a prior disclosure or filing of an application by another. A situation in which an
+ application names a person who is not the actual inventor as the inventor
+ (**[pre-AIA 35 U.S.C.
+ 102(f)](mpep-9015-appx-l.html#d0e302420)**) will be handled in a derivation proceeding under
+ **[35 U.S.C.
+ 135](mpep-9015-appx-l.html#al_d1fbe1_19834_19b)**, by a correction of inventorship under **[37 CFR 1.48](mpep-9020-appx-r.html#d0e317930)** to name
+ the actual inventor, or through a rejection under **[35 U.S.C. 101](mpep-9015-appx-l.html#d0e302376)** and **[35 U.S.C. 115](mpep-9015-appx-l.html#d0e302875912)**. See
+ **[MPEP §
+ 2157](s2157.html#ch2100_d20034_1bb92_e7)**.
+ 
+
+
+**[AIA 35 U.S.C.
+ 102(c)](mpep-9015-appx-l.html#al_d1d85b_11e8f_148)** provides for common ownership of subject matter made pursuant
+ to joint research agreements. Under **[35 U.S.C. 100(h)](mpep-9015-appx-l.html#al_d1d85b_11e10_359)**, the term "joint
+ research agreement" as used in **[AIA 35 U.S.C. 102(c)](mpep-9015-appx-l.html#al_d1d85b_11e8f_148)** is defined as a
+ written contract, grant, or cooperative agreement entered into by two or more persons or
+ entities for the performance of experimental, developmental, or research work in the field
+ of the claimed invention. **[AIA 35 U.S.C. 102(c)](mpep-9015-appx-l.html#al_d1d85b_11e8f_148)** specifically
+ provides that subject matter disclosed and a claimed invention shall be deemed to have been
+ owned by the same person or subject to an obligation of assignment to the same person in
+ applying the provisions of **[AIA 35 U.S.C. 102(b)(2)(C)](mpep-9015-appx-l.html#al_d1d85b_11e7d_1bf)** if: (1) The
+ subject matter disclosed was developed and the claimed invention was made by, or on behalf
+ of, one or more parties to a joint research agreement that was in effect on or before the
+ effective filing date of the claimed invention; (2) the claimed invention was made as a
+ result of activities undertaken within the scope of the joint research agreement; and (3)
+ the application for patent for the claimed invention discloses or is amended to disclose
+ the names of the parties to the joint research agreement.
+ 
+
+
+**[AIA 35 U.S.C.
+ 103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** provides that a patent for a claimed invention may not be
+ obtained, notwithstanding that the claimed invention is not identically disclosed as set
+ forth in **[35
+ U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**, if the differences between the claimed invention and the
+ prior art are such that the claimed invention as a whole would have been obvious before the
+ effective filing date of the claimed invention to a person having ordinary skill in the art
+ to which the claimed invention pertains. In addition, **[AIA 35 U.S.C.
+ 103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** provides that patentability shall not be negated by the manner in
+ which the invention was made. This provision tracks **[pre-AIA 35 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302455)**, except that
+ the temporal focus for the obviousness inquiry is before the effective filing date of the
+ claimed invention, rather than at the time of the invention. The provisions of
+ **[pre-AIA 35 U.S.C.
+ 103(c)](mpep-9015-appx-l.html#d0e302521)** have been replaced with **[AIA 35 U.S.C.
+ 102(b)(2)(C)](mpep-9015-appx-l.html#al_d1d85b_11e7d_1bf)** and **[(c)](mpep-9015-appx-l.html#al_d1d85b_11e8f_148)**, and the provisions of
+ **[pre-AIA 35 U.S.C.
+ 103(b)](mpep-9015-appx-l.html#d0e302462)** pertaining to biotechnological processes have been
+ eliminated.
+ 
+
+
+**[AIA 35 U.S.C.
+ 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)** and **[103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** took effect on March 16, 2013.
+ These new provisions apply to any patent application that contains or contained at any
+ time: (1) a claim to a claimed invention that has an effective filing date as defined in
+ **[35 U.S.C.
+ 100(i)](mpep-9015-appx-l.html#al_d1d85b_11e1a_39f)** that is on or after March 16, 2013; or (2) a designation as a
+ continuation, divisional, or continuation-in-part of an application that contains or
+ contained at any time a claim to a claimed invention that has an effective filing date that
+ is on or after March 16, 2013. Such an application is referred to as an AIA (first inventor
+ to file) application (hereinafter "AIA application"). **[AIA 35 U.S.C.
+ 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)** and **[103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** also apply to any patent resulting
+ from an AIA application. See Public Law 112-29, § 3(n)(1), 125 Stat. at 293. See also
+ **[MPEP §
+ 2159](s2159.html#ch2100_d20034_1dc34_1dd)***et seq.* for guidance in determining whether an application is subject to
+ **[AIA 35 U.S.C.
+ 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)** and **[103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)**.
+ 
+
+
+The AIA provides that the provisions of **[pre-AIA 35 U.S.C.
+ 102(g)](mpep-9015-appx-l.html#d0e302424)** apply to each claim of an AIA application for patent if the
+ patent application: (1) contains or contained at any time a claim to a claimed invention
+ having an effective filing date as defined in **[35 U.S.C. 100(i)](mpep-9015-appx-l.html#al_d1d85b_11e1a_39f)** that occurs before
+ March 16, 2013; or (2) is ever designated as a continuation, divisional, or
+ continuation-in-part of an application that contains or contained at any time a claim to a
+ claimed invention that has an effective filing date before March 16, 2013. Public Law
+ 112-29, § 3(n)(2), 125 Stat. at 293. **[Pre-AIA 35 U.S.C. 102(g)](mpep-9015-appx-l.html#d0e302424)** also applies
+ to any patent resulting from an AIA application to which **[pre-AIA 35 U.S.C.
+ 102(g)](mpep-9015-appx-l.html#d0e302424)** applied. See **[MPEP § 2138](s2138.html#d0e207005)** for guidance on application of
+ **[pre-AIA 35 U.S.C.
+ 102(g)](mpep-9015-appx-l.html#d0e302424)**  and form paragraph **[7.14.aia](#fp7.14.aia)**. 
+ 
+
+
+If an application (1) contains or contained at any time a
+ claimed invention having an effective filing date that is before March 16, 2013, or ever
+ claimed the benefit of an earlier filing date under **[35 U.S.C. 120](mpep-9015-appx-l.html#d0e303023313)**, **[121](mpep-9015-appx-l.html#d0e303040912)**, or
+ **[365(c)](mpep-9015-appx-l.html#d0e307053)** based upon an earlier application that ever contained a
+ claimed invention having an effective filing date as defined in **[35 U.S.C.
+ 100(i)](mpep-9015-appx-l.html#al_d1d85b_11e1a_39f)** that is before March 16, 2013, and (2) also contains or
+ contained at any time any claimed invention having an effective filing date as defined in
+ **[35 U.S.C.
+ 100(i)](mpep-9015-appx-l.html#al_d1d85b_11e1a_39f)** that is on or after March 16, 2013, or ever claimed the
+ benefit of an earlier filing date under **[35 U.S.C. 119](mpep-9015-appx-l.html#d0e302921)** , **[120](mpep-9015-appx-l.html#d0e303023313)**,
+ **[121](mpep-9015-appx-l.html#d0e303040912)**, **[365](mpep-9015-appx-l.html#d0e307034)** or **[386](mpep-9015-appx-l.html#al_d225a2_27b56_2ab)** based
+ upon an earlier application that ever contained a claimed invention having an effective
+ filing date as defined in **[35 U.S.C. 100(i)](mpep-9015-appx-l.html#al_d1d85b_11e1a_39f)** that is on or after
+ March 16, 2013, then **[AIA 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)** and **[103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** apply to
+ the application, and each claimed invention in the application is also subject to
+ **[pre-AIA 35 U.S.C.
+ 102(g)](mpep-9015-appx-l.html#d0e302424)**.
+ 
+
+
+[[top]](#top)
+
+
+]