Editing MPEP 706

<noinclude>{{MPEP Section|705|700|707}}</noinclude>

==[[MPEP 706|706 Rejection of Claims]]==

<noinclude><div class="noautonum">__TOC__</div></noinclude>

After the application has been read and the claimed 
invention understood, a prior art search for the 
claimed invention is made. With the results of the 
prior art search, including any references provided by 
the applicant, the patent application should be 
reviewed and analyzed in conjunction with the state 
of the prior art to determine whether the claims define 
a useful, novel, nonobvious, and enabled invention 
that has been clearly described in the specification. 
The goal of examination is to clearly articulate any 
rejection early in the prosecution process so that the 
applicant has the opportunity to provide evidence of 
patentability and otherwise reply completely at the 
earliest opportunity. The examiner then reviews all 
the evidence, including arguments and evidence 
responsive to any rejection, before issuing the next 
Office action. Where the examiner determines that 
information reasonably necessary for the examination 
should be required from the applicant under 37 CFR 
1.105, such a requirement should generally be made 
either prior to or with the first Office action on the 
merits and should follow the procedures in MPEP 
§ 704.10 et seq.

Although this part of the Manual explains the procedure 
in rejecting claims, the examiner should never 
overlook the importance of his or her role in allowing 
claims which properly define the invention.

{{Statute|37 CFR 1.104 Nature of examination.}}
{{Ellipsis}}
(c)Rejection of claims.

(1)If the invention is not considered patentable, or not 
considered patentable as claimed, the claims, or those considered 
unpatentable will be rejected.

(2)In rejecting claims for want of novelty or for obviousness, 
the examiner must cite the best references at his or her command. 
When a reference is complex or shows or describes 
inventions other than that claimed by the applicant, the particular 
part relied on must be designated as nearly as practicable. The 
pertinence of each reference, if not apparent, must be clearly 
explained and each rejected claim specified.

(3)In rejecting claims the examiner may rely upon 
admissions by the applicant, or the patent owner in a reexamination 
proceeding, as to any matter affecting patentability and, insofar 
as rejections in applications are concerned, may also rely upon 
facts within his or her knowledge pursuant to paragraph (d)(2) of 
this section.

(4)Subject matter which is developed by another person 
which qualifies as prior art only under 35 U.S.C. 102(e), (f) or (g) 
may be used as prior art under 35 U.S.C. 103 against a claimed 
invention unless the entire rights to the subject matter and the 
claimed invention were commonly owned by the same person or 
subject to an obligation of assignment to the same person at the 
time the claimed invention was made.

(i)Subject matter developed by another person and a 
claimed invention shall be deemed to have been commonly owned 
by the same person or subject to an obligation of assignment to the 
same person in any application and in any patent granted on or 
after December 10, 2004, if: 

(A)The claimed invention and the subject matter 
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.

(ii)For purposes of paragraph (c)(4)(i) of this section, 
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.

(iii)To overcome a rejection under 35 U.S.C. 103(a) 
based upon subject matter which qualifies as prior art under only 
one or more of 35 U.S.C. 102(e), (f) or (g) via 35 U.S.C. 
103(c)(2), the applicant must provide a statement to the effect that 
the prior art and the claimed invention were made by or on the 
behalf of parties to a joint research agreement, within the meaning 
of 35 U.S.C. 103(c)(3) and paragraph (c)(4)(ii) of this section, that 
was in effect on or before the date the claimed invention was 
made, and that the claimed invention was made as a result of 
activities undertaken within the scope of the joint research agreement.

(5)The claims in any original application naming an 
inventor will be rejected as being precluded by a waiver in a published 
statutory invention registration naming that inventor if the 
same subject matter is claimed in the application and the statutory 
invention registration. The claims in any reissue application naming 
an inventor will be rejected as being precluded by a waiver in 
a published statutory invention registration naming that inventor if 
the reissue application seeks to claim subject matter:

(i)Which was not covered by claims issued in the 
patent prior to the date of publication of the statutory invention 
registration; and

(ii)Which was the same subject matter waived in the 
statutory invention registration.
|}

I. UNIFORM APPLICATION OF THE PATENTABILITY 
STANDARD

The standards of patentability applied in the examination 
of claims must be the same throughout the 
Office. In every art, whether it be considered "complex," 
"newly developed," "crowded," or "competitive," 
all of the requirements for patentability (e.g., 
novelty, usefulness and unobviousness, as provided in 
35 U.S.C. 101, 102, and 103) must be met before a 
claim is allowed. The mere fact that a claim recites in 
detail all of the features of an invention (i.e., is a "picture" 
claim) is never, in itself, justification for the 
allowance of such a claim. 

An application should not be allowed, unless and 
until issues pertinent to patentability have been raised 
and resolved in the course of examination and prosecution, 
since otherwise the resultant patent would not 
justify the statutory presumption of validity (35 
U.S.C. 282), nor would it “strictly adhere” to the 
requirements laid down by Congress in the 1952 Act 
as interpreted by the Supreme Court. The standard to 
be applied in all cases is the “preponderance of the 
evidence” test. In other words, an examiner should 
reject a claim if, in view of the prior art and evidence 
of record, it is more likely than not that the claim is 
unpatentable. 

II. DEFECTS IN FORM OR OMISSION OF A 
LIMITATION; CLAIMS OTHERWISE ALLOWABLE

When an application discloses patentable subject 
matter and it is apparent from the claims and the 
applicant's arguments that the claims are intended to 
be directed to such patentable subject matter, but the 
claims in their present form cannot be allowed 
because of defects in form or omission of a limitation, 
the examiner should not stop with a bare objection or 
rejection of the claims. The examiner’s action should 
be constructive in nature and when possible should 
offer a definite suggestion for correction.

III.PATENTABLE SUBJECT MATTER DISCLOSED 
BUT NOT CLAIMED

If the examiner is satisfied after the search has been 
completed that patentable subject matter has been disclosed 
and the record indicates that the applicant 
intends to claim such subject matter, he or she may 
note in the Office action that certain aspects or features 
of the patentable invention have not been 
claimed and that if properly claimed such claims may 
be given favorable consideration.

IV.RECONSIDERATION OF CLAIMS AFTER 
REPLY BY APPLICANT

{{Statute|37 CFR 1.112 Reconsideration before final action.}}
After reply by applicant or patent owner (§ 1.111 or § 1.945) to 
a non-final action and any comments by an inter partes reexamination 
requester (§ 1.947), the application or the patent under 
reexamination will be reconsidered and again examined. The 
applicant, or in the case of a reexamination proceeding the patent 
owner and any third party requester, will be notified if claims are 
rejected, objections or requirements made, or decisions favorable 
to patentability are made, in the same manner as after the first 
examination (§ 1.104). Applicant or patent owner may reply to 
such Office action in the same manner provided in § 1.111 or § 
1.945, with or without amendment, unless such Office action indicates 
that it is made final (§ 1.113) or an appeal (§ 41.31 of this 
title) has been taken (§ 1.116), or in an inter partes reexamination, 
that it is an action closing prosecution (§ 1.949) or a right of 
appeal notice (§ 1.953).
|}

37 CFR 1.112 provides for the reconsideration and 
continued examination of an application after reply by 
the applicant, and for the reconsideration and continued 
examination of a reexamination proceeding after 
a response by the patent owner. If claims are rejected, 
or objections or requirements are made, the applicant 
or patent owner will be notified in the same manner as 
notification was provided after the first examination. 
Applicant or patent owner may reply to such Office 
action (with or without amendment) in the same manner 
provided in 37 CFR 1.111, or 37 CFR 1.945 for an 
inter partes reexamination, unless such Office action 
indicates that it is made final (37 CFR 1.113), or an 
appeal under 37 CFR 41.31 has been taken (37 CFR 
1.116), or such Office action indicates in an inter 
partes reexamination that it is an action closing prosecution 
(37 CFR 1.949) or a right of appeal notice (37 
CFR 1.953). Once an appeal has been taken in an 
application or in an ex parte reexamination proceeding, 
any amendment (filed prior to an appeal brief) is 
subject to the provisions of 37 CFR 1.116(b) and (c), 
even if the appeal is in reply to a non-final Office 
action. See 37 CFR 41.33(b) for amendments filed 
with or after the filing of an appeal brief.

V. REJECTIONS IN STATUTORY INVENTION 
REGISTRATIONS

See [[MPEP 1100]] for rejection of claims in 
an application for a Statutory Invention Registration.

===706.01 Contrasted With Objections===

The refusal to grant claims because the subject matter 
as claimed is considered unpatentable is called a 
“rejection.” The term “rejected” must be applied to 
such claims in the examiner’s action. If the form of 
the claim (as distinguished from its substance) is 
improper, an “objection” is made. An example of a 
matter of form as to which objection is made is dependency 
of a claim on a rejected claim, if the dependent 
claim is otherwise allowable. See MPEP § 608.01(n). 
The practical difference between a rejection and an 
objection is that a rejection, involving the merits of 
the claim, is subject to review by the Board of Patent 
Appeals and Interferences, while an objection, if persisted, 
may be reviewed only by way of petition to the 
Director of the USPTO. 

Similarly, the Board will not hear or decide issues 
pertaining to objections and formal matters which are 
not properly before the Board. These formal matters 
should not be combined in appeals to the Board.

===706.02 Rejection on Prior Art===

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


{{Statute|35 U.S.C. 103. Conditions for patentability; non-obvious subject matter.}}
(a)A patent may not be obtained though the invention is not 
identically disclosed or described as set forth in section 102 of 
this 
title, 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 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.

(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 of this title, 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.
|}

By far the most frequent ground of rejection is on 
the ground of unpatentability in view of the prior art, 
that is, that the claimed subject matter is either not 
novel under 35 U.S.C. 102, or else it is obvious under 
35 U.S.C. 103. The language to be used in rejecting 
claims should be unequivocal. See MPEP 
§ 707.07(d).

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 or 103 rejection 
depends on a particular interpretation of a claim; 

(B)a claim is met only in terms by a reference 
which does not disclose the inventive concept 
involved; or 

(C)the most pertinent reference seems likely to 
be antedated by a 37 CFR 1.131 affidavit or declaration. 

Such rejections should be backed up by the best 
other art rejections available. 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.

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 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, 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.

When both the abstract and the underlying document 
qualify as prior art, the underlying document 
should normally be used to support a rejection. 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. Whether the next Office action may be made 
final is governed by MPEP § 706.07(a).

III. REEXAMINATION 

For scope of rejections in ex parte reexamination 
proceedings, see MPEP § 2258 and in inter partesreexamination, see MPEP § 2658. 

IV.DISTINCTION BETWEEN 35 U.S.C. 102 
AND 103 

The distinction between rejections based on 
35 U.S.C. 102 and those based on 35 U.S.C. 103 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, 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, 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 at the time the invention was 
made. See MPEP § 2131 - § 2146 for guidance on patentability 
determinations under 35 U.S.C. 102 and 
103.

V.DETERMINING THE EFFECTIVE FILING 
DATE OF THE APPLICATION 

The effective filing date of a U.S. application may 
be determined as follows:

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

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

(C)If the application claims foreign priority 
under 35 
U.S.C. 119(a)-(d) or 365(a)or (b), the 
effective filing date is the filing date of the U.S. application, 
unless situation (A) or (B) as set forth above 
applies. The filing date of the foreign priority document 
is not the effective filing date, although the filing 
date of the foreign priority document may be used 
to overcome certain references. See MPEP 
§ 706.02(b) and § 2136.05.

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

See MPEP § 1893.03(b) for determining the effective 
filing date of an application under 35 U.S.C. 371. 
See MPEP § 201.11(a) and § 1895 for additional 
information on determining the effective filing date of 
a continuation, divisional, or continuation-in-part of a 
PCT application designating the U.S. See also MPEP 
§ 1895.01 and § 1896 which discuss differences 
between applications filed under 35 U.S.C. 111(a) and 
international applications that enter national stage 
under 35 
U.S.C. 371.

====706.02(a)Rejections Under 35 U.S.C. 102(a), (b), or (e); Printed Publication or Patent====

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), (b), or (e).

In order to determine which section of 35 U.S.C. 
102 applies, the effective filing date of the application 
must be determined and compared with the date of the 
reference. See MPEP § 706.02 regarding determination 
of effective filing date of the application.

I.DETERMINING THE REFERENCE ISSUE 
OR PUBLICATION DATE 

The examiner must determine the issue or publication 
date of the reference so that a proper comparison 
between the application and reference dates can be 
made. A magazine is effective as a printed publication 
under 35 U.S.C. 102(b) as of the date it reached the 
addressee and not the date it was placed in the mail. 
Protein Foundation Inc. v. Brenner, 260 F. Supp. 519, 
151 USPQ 561 (D.D.C. 1966). See MPEP 
§ 707.05(f). For foreign patents see MPEP § 901.05. 
See MPEP § 2124, § 2126, and § 2128 - § 2128.02 for 
case law relevant to reference date determination.

II.DETERMINING WHETHER TO APPLY 
35 U.S.C. 102(a), (b), or (e) 

A.35 U.S.C. 102(b)

First, the examiner should consider whether the reference 
qualifies as prior art under 35 U.S.C. 102(b)
because this section results in a statutory bar to 
obtaining a patent. If the publication or issue date of 
the reference is more than 1 year prior to the effective 
filing date of the application (MPEP § 706.02), the 
reference qualifies as prior art under 35 U.S.C. 
102(b).

Where the last day of the year dated from the date 
of publication falls on a Saturday, Sunday or Federal 
holiday, the publication is not a statutory bar under 
35 U.S.C. 102(b) if the application was filed on the 
next succeeding business day.

B.35 U.S.C. 102(e)

If the publication or issue date of the reference is 
too recent for 35 U.S.C. 102(b) to apply, then the 
examiner should consider 35 U.S.C. 102(e). 

In order to apply a reference under 35 U.S.C. 
102(e), the inventive entity of the application must be 
different than that of the reference. Note that, where 
there are joint inventors, only one inventor needs 
to be different for the inventive entities to be different 
and a rejection under 35 U.S.C. 102(e) is applicable 
even if there are some inventors in common 
between the application and the reference.

Revised 35 U.S.C. 102(e), as amended by the 
American Inventors Protection Act of 1999 (AIPA) 
(Pub. L. 106-113, 113 Stat. 1501 (1999)), and as further 
amended by the Intellectual Property and High 
Technology Technical Amendments Act of 2002 
(Pub. L. 107-273, 116 Stat. 1758 (2002)), applies in 
the examination of all applications, whenever filed, 
and the reexamination of, or other proceedings to contest, 
all patents. The filing date of the application 
being examined is no longer relevant in determining 
what version of 35 U.S.C. 102(e) to apply in determining 
the patentability of that application, or the 
patent resulting from that application. The revised 
statutory provisions supersede all previous versions of 
35 U.S.C. 102(e) and 374, with only one exception, 
which is when the potential reference is based on an 
international application filed prior to November 29, 
2000 (discussed further below). Furthermore, the provisions 
amending 35 U.S.C. 102(e) and 374 in Pub. L. 
107-273 are completely retroactive to the effective 
date of the relevant provisions in the AIPA (November 
29, 2000). See MPEP § 706.02(f)(1) for examination 
guidelines on the application of 35 U.S.C. 102(e).

{{Statute|35 U.S.C. 102. Conditions for patentability; novelty and loss of right to patent.}}
{{Ellipsis}}
(e)the invention was described in — (1) an application for 
patent, published under section 122(b), 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) 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) of such treaty in the English language; 
or
{{Ellipsis}}
|}

As mentioned above, references based on international 
applications that were filed prior to November 
29, 2000 are subject to the former (pre-AIPA) version 
of 35 U.S.C. 102(e) as set forth below.

{{Statute|Former 35 U.S.C. 102. Conditions for patentability; novelty and loss of right to patent.}}
A person shall be entitled to a patent unless-
{{Ellipsis}}
(e)the invention was described in a patent granted on an 
application for patent by another filed in the United States before 
the invention thereof by the applicant for patent, or on an international 
application by another who has fulfilled the requirements of 
paragraphs (1), (2), and (4) of section 371(c) of this title before the 
invention thereof by the applicant for patent. 
|}

Revised 35 U.S.C. 102(e) has two separate clauses, 
namely, 35 U.S.C. 102(e)(1) for publications of 
patent applications and 35 U.S.C. 102(e)(2) for U.S. 
patents. 35 U.S.C. 102(e)(1), in combination with 
amended 35 U.S.C. 374, created a new category of 
prior art by providing prior art effect for certain publications 
of patent applications, including certain international 
applications, as of their effective United 
States filing dates (which will include certain international 
filing dates). Under revised 35 U.S.C. 102(e), 
an international filing date which is on or after 
November 29, 2000 is a United States filing date if the 
international application designated the United States 
and was published by the World Intellectual Property 
Organization (WIPO) under the Patent Cooperation 
Treaty (PCT) Article 21(2) in the English language. 
Therefore, the prior art date of a reference under 
35 
U.S.C. 102(e) may be the international filing date 
(if all three conditions noted above are met) or an earlier 
U.S. filing date for which priority or benefit is 
properly claimed. Publication under PCT Article 
21(2) may result from a request for early publication 
by an applicant of an international application or after 
the expiration of 18-months after the earliest claimed 
filing date in an international application. An applicant 
of an international application that has designated 
only the U.S. would continue to be required to 
request publication from WIPO as the reservation 
under PCT Article 64(3) continues to be in effect 
for such applicants. International applications, which: 
(1) were filed prior to November 29, 2000, or (2) did 
not designate the U.S., or (3) were not published in 
English under PCT Article 21(2) by WIPO, may not 
be used to reach back (bridge) to an earlier filing date 
through a priority or benefit claim for prior art purposes 
under 35 
U.S.C. 102(e). 

Revised 35 U.S.C. 102(e) eliminated the reference 
to fulfillment of the 35 
U.S.C. 371(c)(1), (2) and (4) 
requirements. As a result, United States patents issued directly from international applications filed on 
or after November 29, 2000 will no longer be available 
as prior art under 35 U.S.C. 102(e) as of the date 
the requirements of 35 
U.S.C. 371(c)(1), (2) and (4) 
have been satisfied. Under 35 
U.S.C. 102(e)(2), as 
amended by the AIPA and Pub. L. 107-273, an international 
filing date which is on or after November 29, 
2000 is a United States filing date for purposes of 
determining the earliest effective prior art date of a 
patent if the international application designated the 
United States and was published in the English language 
under PCT Article 21(2) by WIPO.

No international filing dates prior to November 29, 
2000 may be relied upon as a prior art date under 
35 
U.S.C. 102(e) in accordance with the last sentence 
of the effective date provisions of Pub. L. 107-273. 
Patents issued directly, or indirectly, from international 
applications filed before November 29, 2000 
may only be used as prior art based on the provisions 
of 35 U.S.C. 102(e) in effect before November 29, 
2000. Thus, the 35 U.S.C. 102(e) date of such a prior 
art patent is the earliest of the date of compliance with 
35 
U.S.C. 371(c)(1), (2) and (4), or the filing date of 
the later-filed U.S. continuing application that 
claimed the benefit of the international application. 
Publications of international applications filed before 
November 29, 2000 (which would include WIPO 
publications and U.S. publications of the national 
stage (35 
U.S.C. 371)) do not have a 35 U.S.C. 102(e)
date at all (however, such publications are available as 
prior art under 35 U.S.C. 102(a) or (b) as of the publication 
date). Specifically, under revised 35 
U.S.C. 
374, the international application must be filed on or 
after November 29, 2000 for its WIPO publication to 
be “deemed a publication under section 122(b)” and 
thus available as a possible prior art reference under 
35 U.S.C. 102(e) as amended by the AIPA.

C.35 U.S.C. 102(a)

Even if the reference is prior art under 35 
U.S.C. 
102(e), the examiner should still consider 35 
U.S.C. 
102(a) for two reasons. First, if the reference is a U.S. 
patent or patent application publication of, or claims 
benefit of, an international application, the publication 
of the international application under PCT Article 
21(2) may be the earliest prior art date under 
35 
U.S.C. 102(a) for the disclosure. Second, references 
that are only prior art under 35 
U.S.C. 102(e), 
(f), or (g) and applied in a rejection under 35 
U.S.C. 
103(a) are subject to being disqualified under 
35 
U.S.C. 103(c) if the reference and the application 
were commonly owned, or subject to an obligation of 
common assignment, at the time the invention was 
made. For 35 
U.S.C. 102(a) to apply, the reference 
must have a publication date earlier in time than the 
effective filing date of the application, and must not 
be applicant’s own work. 

====706.02(b) Overcoming a 35 U.S.C. 102 Rejection Based on a Printed Publication or Patent====

A rejection based on 35 U.S.C. 102(b) 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)Perfecting benefit under 35 U.S.C. 120, 
within the time period set in 37 CFR 1.78(a) or filing 
a grantable petition under 37 CFR 1.78(a), by amending 
the specification of the application to contain a 
specific reference to a prior application or by filing an 
application data sheet under 37 CFR 1.76 which contains 
a specific reference to a prior application in 
accordance with 37 CFR 1.78(a), and by establishing 
that the prior application satisfies the enablement and 
written description requirements of 35 U.S.C. 112, 
first paragraph. See MPEP § 201.11 and § 706.02; or

(D)Perfecting benefit claim under 35 U.S.C. 
119(e) by complying with the requirements of 37 CFR 
1.78(a) (see item (C) above). Since a provisional 
application could not have been filed more than one 
year prior to the filing of a nonprovisional application 
that claims benefit to the provisional application, in 
order to overcome a rejection under 35 U.S.C. 102(b), 
there must be at least one intermediate application 
between the provisional application and the nonprovisional 
application under examination, e.g., chain of 
prior applications. In order to overcome the rejection 
under 35 U.S.C. 102(b), benefit claim must be 
perfected for the chain of prior applications (35 
U.S.C. 119(e) and 120 must be perfected). See MPEP 
§ 201.11.

A rejection based on 35 U.S.C. 102(e) 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 1.132 showing that the reference invention is 
not by 
“another.” See MPEP § 715.01(a), § 715.01(c), 
and § 716.10; 

(D)Filing an affidavit or declaration under 
37 CFR 1.131 showing prior invention, if the reference 
is not a U.S. patent or a U.S. patent application 
publication claiming the same patentable invention as 
defined in 37 
CFR 41.203(a). See MPEP § 715 for 
more information on 37 CFR 1.131 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 is not 
an acceptable method of overcoming the rejection. 
Under these circumstances, the examiner must determine 
whether a double patenting rejection or interference 
is appropriate. If there is a common assignee or 
inventor between the application and patent, a double 
patenting rejection must be made. See MPEP § 804. If 
there is no common assignee or inventor and the 
rejection under 35 U.S.C. 102(e) is the only possible 
rejection, the examiner must determine whether an 
interference should be declared. See MPEP Chapter 
2300 for more information regarding interferences; 

(E)Perfecting a claim to priority under 35 U.S.C. 
119(a)-(d) within the time period set in 37 CFR 
1.55(a)(1) or filing a grantable petition under 37 CFR 
1.55(c). See MPEP § 201.13. The foreign priority filing 
date must antedate the reference and be perfected. 
The filing date of the priority document is not perfected 
unless applicant has filed a certified priority 
document in the application (and an English language 
translation, if the document is not in English) (see 
37 
CFR 1.55(a)(3)) and the examiner has established 
that the priority document satisfies the enablement 
and description requirements of 35 U.S.C. 112, first 
paragraph; or

(F)Perfecting benefit under 35 U.S.C. 119(e)
or 120, within the time periods set in 37 CFR 1.78(a) 
or filing a grantable petition under 37 CFR 1.78(a), 
by amending the specification of the application to 
contain a specific reference to a prior application or 
by filing an application data sheet under 37 CFR 1.76 
which contains a specific reference to a prior application 
in accordance with 37 CFR 1.78(a), and by establishing 
that the prior application satisfies the 
enablement and written description requirements of 
35 U.S.C. 112, first paragraph. See MPEP § 201.11 
and § 706.02.

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

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

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

(C)Filing an affidavit or declaration under 
37 
CFR 1.131 showing prior invention, if the reference 
is not a U.S. patent or a U.S. patent application 
publication claiming the same patentable invention as 
defined in 37 CFR 41.203(a). See MPEP § 715 for 
information on the requirements of 37 CFR 1.131affidavits. 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 is not appropriate to overcome the 
rejection.

(D)Filing an affidavit or declaration under 
37 
CFR 1.132 showing that the reference invention is 
not by “another.” See MPEP § 715.01(a), § 715.01(c), 
and § 716.10;

(E)Perfecting a claim to priority under 35 U.S.C. 
119(a)-(d) as explained in reference to 35 U.S.C. 
102(e) above; 

(F)Perfecting benefit under 35 U.S.C. 119(e)
or 120 as explained in reference to 35 U.S.C. 102(e) 
above.

====706.02(c) Rejections Under 35 U.S.C. 102(a) or (b); Knowledge by Others or Public Use or Sale====

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 in this country. The language 
"in this country" means in the United States only and 
does not include other WTO or NAFTA member 
countries. In these cases the examiner must determine 
if 35 U.S.C. 102(a) or 102(b) applies. See MPEP 
§ 2133.03 for a discussion of case law treating the 
"public use" and "on sale" statutory bars. 

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 35 U.S.C. 102(a) and (b) may be 
applicable. If the evidence only points to knowledge 
within the year prior to the effective filing date then 
35 U.S.C. 102(a) applies. However, no rejection under 
35 U.S.C. 102(a) 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.

35 U.S.C. 102(b) is applicable if the activity 
occurred more than 1 year prior to the effective filing 
date of the application. See MPEP § 2133.03 for a dis
cussion of "on sale" and "public use" bars under 
35 U.S.C. 102(b).

Note that as an aid to resolving public use or on sale 
issues, as well as to other related matters of 35 U.S.C. 
102(b) activity, 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, 37 
CFR 1.104(a)(2). 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 where the evidence of record indicates reasonable 
necessity. See MPEP § 704.10 et seq.

A 1- or 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. 
See MPEP § 2133.03.

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.

====706.02(d) Rejections Under 35 U.S.C. 102(c)====

Under 35 U.S.C. 102(c), abandonment of the 
“invention” (as distinguished from abandonment of an 
application) results in loss of right to a patent. See 
MPEP § 2134 for case law which sets forth the criteria 
for abandonment under 35 U.S.C. 102(c).

====706.02(e) Rejections Under 35 U.S.C. 102(d)====

35 U.S.C. 102(d) 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 
United States application. See MPEP § 706.02 regarding 
determination of the effective filing date of the 
application.

(B)The foreign and United States applications 
must be filed by the same applicant, his or her 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 35 
U.S.C. 102(d) on the ground of statutory bar.

====706.02(f) Rejection Under 35 U.S.C. 102(e)====

35 U.S.C. 102(e), in part, allows for certain prior 
art (i.e., U.S. patents, U.S. patent application publications 
and WIPO publications of international applications) 
to be applied against the claims as of its 
effective U.S. filing date. This provision of 35 
U.S.C. 102 is mostly utilized when the publication or issue 
date is too recent for the reference to be applied under 
35 U.S.C. 102(a) or (b). In order to apply a reference 
under 35 U.S.C. 102(e), the inventive entity of the 
application must be different than that of the reference. 
Note that, where there are joint inventors, only 
one inventor needs to be different for the inventive 
entities to be different and a rejection under 
35 U.S.C. 102(e) is applicable even if there are some 
inventors in common between the application and the 
reference.

=====706.02(f)(1)Examination Guidelines for Applying References Under 35 U.S.C. 102(e)=====

======I. DETERMINE THE APPROPRIATE 35 U.S.C. 102(e) DATE FOR EACH POTENTIAL REFERENCE BY FOLLOWING THE GUIDELINES, EXAMPLES, AND FLOW CHARTS SET FORTH BELOW:======

(A)The potential reference must be a U.S. patent, 
a U.S. application publication (35 
U.S.C. 122(b)) or a 
WIPO publication of an international application 
under PCT Article 21(2) in order to apply the reference 
under 35 
U.S.C. 102(e).

(B)Determine if the potential reference resulted 
from, or claimed the benefit of, an international application. 
If the reference does, go to step (C) below. The 
35 
U.S.C. 102(e) date of a reference that did not result 
from, nor claimed the benefit of, an international 
application is its earliest effective U.S. filing date, 
taking into consideration any proper benefit claims to 
prior U.S. applications under 35 
U.S.C. 119(e) or 120 
if the prior application(s) properly supports the subject 
matter used to make the rejection in compliance 
with 35 U.S.C. 112, first paragraph. See MPEP 
§ 2136.02. 

(C)If the potential reference resulted from, or 
claimed the benefit of, an international application, 
the following must be determined:

(1)If the international application meets the 
following three conditions:

(a)an international filing date on or after 
November 29, 2000;

(b)designated the United States; and

(c)published under PCT Article 21(2) in 
English,

then the international filing date is a U.S. filing 
date for prior art purposes under 35 
U.S.C. 102(e). If 
such an international application properly claims benefit 
to an earlier-filed U.S. or international application, 
or to an earlier-filed U.S. provisional application, 
apply the reference under 35 
U.S.C. 102(e) as of the 
earlier filing date, assuming all the conditions of 
35 
U.S.C. 102(e), 119(e), 120, or 365(c) are met. The 
subject matter used in the rejection must be disclosed 
in the earlier-filed application in compliance with 35 
U.S.C. 112, first paragraph, in order for that subject 
matter to be entitled to the earlier filing date under 35 
U.S.C. 102(e). Note, where the earlier application is 
an international application, the earlier international 
application must satisfy the same three conditions 
(i.e., filed on or after November 29, 2000, designated 
the U.S., and had been published in English under 
PCT Article 21(2)) for the earlier international filing 
date to be a U.S. filing date for prior art purposes 
under 35 
U.S.C. 102(e).

(2)If the international application was filed on 
or after November 29, 2000, but did not designate the 
United States or was not published in English under 
PCT Article 21(2), do not treat the international filing 
date as a U.S. filing date for prior art purposes. In this 
situation, do not apply the reference as of its international 
filing date, its date of completion of the35 
U.S.C. 371(c)(1), (2) and (4) requirements, or any 
earlier filing date to which such an international application 
claims benefit or priority. The reference may be 
applied under 35 
U.S.C. 102(a) or (b) as of its publication 
date, or 35 
U.S.C. 102(e) as of any later U.S. 
filing date of an application that properly claimed the 
benefit of the international application (if applicable).

(3)If the international application has an international 
filing date prior to November 29, 2000, apply 
the reference under the provisions of 35 
U.S.C. 102and 374, prior to the AIPA amendments:

(a)For U.S. patents, apply the reference 
under 35 
U.S.C. 102(e) as of the earlier of the date of 
completion of the requirements of 35 
U.S.C. 
371(c)(1), (2) and (4) or the filing date of the later-
filed U.S. application that claimed the benefit of the 
international application;

(b)For U.S. application publications and 
WIPO publications directly resulting from international 
applications under PCT Article 21(2), never 
apply these references under 35 
U.S.C. 102(e). These 
references may be applied as of their publication dates 
under 35 
U.S.C. 102(a) or (b);

(c)For U.S. application publications of 
applications that claim the benefit under 35 
U.S.C. 
120 or 365(c) of an international application filed 
prior to November 29, 2000, apply the reference 
under 35 
U.S.C. 102(e) as of the actual filing date of 
the later-filed U.S. application that claimed the benefit 
of the international application.

(4)Examiners should be aware that although a 
publication of, or a U.S. Patent issued from, an international 
application may not have a 35 
U.S.C. 102(e) 
date at all, or may have a 35 
U.S.C. 102(e) date that is 
after the effective filing date of the application being 
examined (so it is not “prior art”), the corresponding 
WIPO publication of an international application may 
have an earlier 35 
U.S.C. 102(a) or (b) date.

(D)Foreign applications’ filing dates that are 
claimed (via 35 
U.S.C. 119(a)-(d), (f), or 365(a) or 
(b)) in applications, which have been published as 
U.S. or WIPO application publications or patented in 
the U.S., may not be used as 35 
U.S.C. 102(e) dates 
for prior art purposes. This includes international filing 
dates claimed as foreign priority dates under 
35 
U.S.C. 365(a) or (b).

======II. EXAMPLES======

In order to illustrate the prior art dates of U.S. and 
WIPO publications of patent applications and U.S. 
patents under 35 
U.S.C. 102(e), nine examples are 
presented below. The examples only cover the most 
common factual situations that might be encountered 
when determining the 35 
U.S.C. 102(e) date of a reference. 
Examples 1 and 2 involve only U.S. application 
publications and U.S. patents. Example 3 
involves a priority claim to a foreign patent application. 
Examples 4-9 involve international applications. 
The time lines in the examples below show the history 
of the prior art references that could be applied 
against the claims of the application under examination, 
or the patent under reexamination.

The examples only show the information necessary 
to determine a prior art date under 35 
U.S.C. 102(e). 
Also, the dates in the examples below are arbitrarily 
used and are presented for illustrative purposes only. 
Therefore, correlation of patent grant dates with Tuesdays 
or application publication dates with Thursdays 
may not be portrayed in the examples.

'''Example 1''': Reference Publication and Patent of 35 
U.S.C. 111(a) Application with no Priority/Benefit 
Claims. 

For reference publications and patents of patent applications filed under 35 
U.S.C. 111(a) with no claim for the 
benefit of, or priority to, a prior application, the prior art dates under 35 
U.S.C. 102(e) accorded to these references 
are the earliest effective U.S. filing dates. Thus, a publication and patent of a 35 
U.S.C. 111(a) application, 
which does not claim any benefit under either 35 
U.S.C. 119(e), 120 or 365(c), would be accorded the 
application’s actual filing date as its prior art date under 35 
U.S.C. 102(e).
{{Timeline|2=11/29/00|1=AIPA effective date|3=08 Dec 2000|4=35 U.S.C. 111(a) application filed with no claims for benefit/priority|6=12 Jun 2002|5=Publication of 35 U.S.C. 111(a) application under 35 U.S.C. 122(b)|7=03 Dec 2002|8=Patent granted|9=|10=|11=|12=|13=|14=|15=|16=|17=|18=}}

The 35 U.S.C. 102(e)(1) date for the Publication is 08 Dec. 2000. The 35 U.S.C. 102(e)(2) date for the Patent is: 08 Dec. 2000.

'''Example 2''': Reference Publication and Patent of 35 
U.S.C. 111(a) Application with a Benefit Claim to a 
Prior U.S. Provisional or Nonprovisional Application.

For reference publications and patents of patent applications filed under 35 
U.S.C. 111(a), the prior art dates 
under 35 
U.S.C. 102(e) accorded to these references are the earliest effective U.S. filing dates. Thus, a publication 
and patent of a 35 
U.S.C. 111(a) application, which claims benefit under 35 
U.S.C. 119(e) to a prior 
U.S. provisional application or claims the benefit under 35 
U.S.C. 120 of a prior nonprovisional application, 
would be accorded the earlier filing date as its prior art date under 35 
U.S.C. 102(e), assuming the earlier-filed 
application has proper support for the subject matter as required by 35 
U.S.C. 119(e) or 120.
{{Timeline|2=01 Jan 2000|1=1st 35 U.S.C. 111(a)/(b) application filed before effective date|3=11/29/00|4=AIPA effective date|6=01 Jan 2001|5=2nd application, file under 35 U.S.C. 111(a), claiming the benefit or priority of the prior application under 35 U.S.C. 120/119(e)|7=05 Jul 2001|8=Publication of the 2nd application under 35 U.S.C. 122(b)|10=02 Dec 2002|9=Patent granted on 2nd application|11=|12=|13=|14=|15=|16=|17=|18=}}


The 35 U.S.C. 102(e)(1) date for the Publication is: 01 Jan. 2000. The 35 U.S.C. 102(e)(2) date for the Patent is: 01 Jan. 2000.


'''Example 3''': Reference <u>Publication</u> and <u>Patent</u> of 35 U.S.C. 111(a) Application with 35 U.S.C. 119(a)-(d) Priority Claim to a Prior Foreign Application.

For reference publications and patents of patent applications filed under 35 
U.S.C. 111(a), the prior art dates 
under 35 
U.S.C. 102(e) accorded to these references are the earliest effective U.S. filing dates. No benefit of 
the filing date of the foreign application is given under 35 
U.S.C. 102(e) for prior art purposes (In re Hilmer, 
149 USPQ 480 (CCPA 1966)). Thus, a publication and patent of a 35 U.S.C. 111(a) application, which claims 
priority under 35 U.S.C. 119(a)-(d) to a prior foreign-filed application (or under 35 
U.S.C. 365(a) to an 
international application), would be accorded its U.S. filing date as its prior art date under 35 U.S.C. 102(e). In 
the example below, it is assumed that the earlier-filed U.S. application has proper support for the subject matter 
of the later-filed U.S. application as required by 35 U.S.C. 120.
{{Timeline|2=22 Jun 1998|1=Foreign application filed in Japan|3=21 Jun 1999|4=1st 35 U.S.C. 111(a) application filed claiming 35 U.S.C. 199(a)-(d) priority to Japanese application|6=11/29/00|5=AIPA effective date|7=16 Aug 2001|8=2nd 35 U.S.C. 111(a) application filed under 37 CFR 1.53(b) or (d) with 35 U.S.C. 120 priority claim|10=14 Mar 2002|9=Publication of the 2nd 35 U.S.C. 111(a) application under 35 U.S.C. 122(b)|11=01 Nov 2003|12=Patent granted on the 2nd 35 U.S.C. 111(a) application|13=|14=|15=|16=|17=|18=}}


The 35 U.S.C. 102(e)(1) date for the Publication is: 21 June 1999. The 35 U.S.C. 102(e)(2) date for the Patent is: 21 June 1999.


Example 4: References based on the '''national stage (35 U.S.C. 371)''' of an '''International Application filed on or after November 29, 2000''' and which was published in '''English''' under PCT Article 21(2).

All references, whether the WIPO publication, the U.S. patent application publication or the U.S. patent, of an 
international application (IA) that was filed on or after November 29, 2000, designated the U.S., and was published 
in English under PCT Article 21(2) by WIPO have the 35 
U.S.C. 102(e) prior art date of the international 
filing date or earlier effective U.S. filing date. No benefit of the international filing date (nor any U.S. 
filing dates prior to the IA), however, is given for 35 
U.S.C. 102(e) prior art purposes if the IA was published 
under PCT Article 21(2) in a language other than English.
{{Timeline|2=11/29/2000|1=AIPA effective date|3=01 Jan 2001|4=IA filed in Swedish, US designated|6=01 July 2002|5=IA publication by WIPO <u>''in English''</u>|7=01 Jun 2003|8=35 U.S.C. 371(c)(1), (2), and (4) fullfillment)|10=01 Jul 2003|9=Publication by USPTO under 35 U.S.C. 122(b)|11=01 Nov 2003|12=Patent granted on 35 U.S.C. 371 application|13=|14=|15=|16=|17=|18=}}


The 35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: 01 Jan. 2001. The 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: 01 Jan. 2001. The 35 U.S.C. 102(e)(2) date for the Patent is: 01 Jan. 2001.

Additional Benefit Claims:

If a later-filed U.S. nonprovisional (35 
U.S.C. 111(a)) application claimed the benefit of the IA in the example 
above, the 35 
U.S.C. 102(e) date of the patent or publication of the later-filed U.S. application would be the 
international filing date, assuming the earlier-filed IA has proper support for the subject matter relied upon as 
required by 35 
U.S.C. 120.

If the IA properly claimed the benefit of an earlier-filed U.S. provisional (35 
U.S.C. 111(b)) application 
or the benefit of an earlier-filed U.S. nonprovisional (35 
U.S.C. 111(a)) application, the 35 
U.S.C. 102(e) date 
for all the references would be the filing date of the earlier-filed U.S. application, assuming the earlier-filed 
application has proper support for the subject matter relied upon as required by 35 
U.S.C. 119(e) or 120.

'''Example 5''': References based on the '''national stage (35 U.S.C. 371)''' of an '''International Application filed on or after November 29, 2000''' and which was '''not''' published in '''English''' under PCT Article 21(2).

All references, whether the WIPO publication, the U.S. patent application publication or the U.S. patent, of an 
international application (IA) that was filed on or after November 29, 2000 but was not published in English 
under PCT Article 21(2) have no 35 
U.S.C. 102(e) prior art date at all. According to 35 
U.S.C. 102(e), no benefit 
of the international filing date (nor any U.S. filing dates prior to the IA) is given for 35 
U.S.C. 102(e) prior 
art purposes if the IA was published under PCT Article 21(2) in a language other than English, regardless of 
whether the international application entered the national stage. Such references may be applied under 
35 U.S.C. 102(a) or (b) as of their publication dates, but never under 35 U.S.C. 102(e).
{{Timeline|2=11/29/2000|1=AIPA effective date|3=01 Jan 2001|4=IA filed, US designated|6=01 July 2002|5=IA publication by WIPO <u>''NOT in English''</u>|7=01 Jun 2003|8=35 U.S.C. 371(c)(1), (2), and (4) fullfillment)|10=02 Oct 2003|9=Publication by USPTO under 35 U.S.C. 122(b)|11=02 Nov 2004|12=Patent granted on 35 U.S.C. 371 application|13=|14=|15=|16=|17=|18=}}


The 35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: None. The 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: None. The 35 U.S.C. 102(e)(2) date for the Patent is: None.

The IA publication by WIPO can be applied under 35 
U.S.C. 102(a) or (b) as of its publication date (01 July 
2002).

Additional Benefit Claims:

If the IA properly claimed the benefit of to any earlier-filed U.S. application (whether provisional or nonprovisional), 
there would still be no 35 
U.S.C. 102(e) date for all the references.

If a later-filed U.S. nonprovisional (35 
U.S.C. 111(a)) application claimed the benefit of the IA in the example above, the 35 U.S.C. 102(e) date of the patent or publication of the later-filed U.S. application would be the 
actual filing date of the later-filed U.S. application.


'''Example 6''': References based on the national stage ('''35 U.S.C. 371''') of an '''International Application filed prior to November 29, 2000''' (language of the publication under PCT Article 21(2) is not relevant).

The reference U.S. patent issued from an international application (IA) that was filed prior to November 29, 
2000 has a 35 
U.S.C. 102(e) prior art date of the date of fulfillment of the requirements of 35 
U.S.C. 371(c)(1), 
(2) and (4). This is the pre-AIPA 35 
U.S.C. 102(e). The application publications, both the WIPO publication 
and the U.S. publication, published from an international application that was filed prior to November 29, 
2000, do not have any 35 
U.S.C. 102(e) prior art date. According to the effective date provisions as amended 
by Pub. L. 107-273, the amendments to 35 
U.S.C. 102(e) and 374 are not applicable to international applications 
having international filing dates prior to November 29, 2000. The application publications can be applied 
under 35 
U.S.C. 102(a) or (b) as of their publication dates.

{{Timeline|2=01 Jan 2000|1=IA filed in Canada, desig. the US|3=11/29/2000|4=AIPA effective date|6=01 July 2001|5=Publication of IA in ''any language'' under PCT Art. 21(2) by WIPO|7=01 July 2002|8=National Stage (NS)fulfilling 35 U.S.C. 371(c)(1), (2), and (4)|10=03 Oct 2002|9=Voluntary Publication of NS under 35 U.S.C. 122(b)|11=01 Nov 2003|12=Patent granted on 35 U.S.C. 371 application|13=|14=|15=|16=|17=|18=}}


The 35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: None.The 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: None. The 35 U.S.C. 102(e) date for the Patent is: 01 July 2002.

The IA publication by WIPO can be applied under 35 
U.S.C. 102(a) or (b) as of its publication date (01 July 
2001).

Additional Benefit Claims:

If the IA properly claimed the benefit of any earlier-filed U.S. application (whether provisional or nonprovisional), 
there would still be no 35 
U.S.C. 102(e)(1) date for the U.S. and WIPO application publications, 
and the 35 
U.S.C. 102(e) date for the patent will still be 01 July 2002 (the date of fulfillment of the requirements 
under 35 
U.S.C. 371(c)(1), (2) and (4)).

If a later-filed U.S. nonprovisional (35 
U.S.C. 111(a)) application claimed the benefit of the IA in the example 
above, the 35 
U.S.C. 102(e)(1) date of the application publication of the later-filed U.S. application would be 
the actual filing date of the later-filed U.S. application, and the 35 
U.S.C. 102(e) date of the patent of the later-
filed U.S. application would be 01 July 2002 (the date that the earlier-filed IA fulfilled the requirements of 
35 
U.S.C. 371(c)(1), (2) and (4)).

If the patent was based on a later-filed U.S. application that claimed the benefit of the international application 
and the later filed U.S. application’s filing date is before the date the requirements of 35 
U.S.C. 371(c)(1), (2) 
and (4) were fulfilled (if fulfilled at all), the 35 
U.S.C. 102(e) date of the patent would be the filing date of the 
later-filed U.S. application that claimed the benefit of the international application.


'''Example 7''': References based on a 35 
U.S.C. 111(a) Application which is a '''Continuation of an International Application''', which was filed on or after '''November 29, 2000, designated the U.S.''' and was '''published in English''' under PCT Article 21(2).

All references, whether the WIPO publication, the U.S. patent application publication or the U.S. patent of, or 
claiming the benefit of, an international application (IA) that was filed on or after November 29, 2000, designated 
the U.S., and was published in English under PCT Article 21(2) have the 35 
U.S.C. 102(e) prior art date 
of the international filing date or earlier effective U.S. filing date. No benefit of the international filing date 
(nor any U.S. filing dates prior to the IA), however, is given for 35 
U.S.C. 102(e) purposes if the IA was published 
under PCT Article 21(2) by WIPO in a language other than English. In the example below, it is assumed 
that the earlier-filed IA has proper support for the subject matter of the later-filed U.S. application as required 
by 35 U.S.C. 120 and 365(c).
{{Timeline|2=11/29/00|1=AIPA effective date|3=01 Mar 2001|4=IA filed, US was designated|6=01 Sep 2002|5=IA Publication by WIPO ''<u>in English</u>'''|7=01 May 2003|8=35 U.S.C. 111(a) application claiming the benefit of the IA under 35 U.S.C. 365(c) is filed|10=01 July 2003|9=Publication of 35 U.S.C. 111(a) appl. by USPTO under 35 U.S.C. 122(b)|11=01 Nov 2004|12=Patent granted on 35 U.S.C. 111 (a) application|13=|14=|15=|16=|17=|18=}}


The 35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: 01 Mar. 2001.The 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: 01 Mar. 2001.The 35 U.S.C. 102(e)(2) date for the Patent is: 01 Mar. 2001.

Additional Benefit Claims:

If the IA properly claimed the benefit of an earlier-filed U.S. provisional (35 
U.S.C. 111(b)) application 
or the benefit of an earlier-filed U.S. nonprovisional (35 U.S.C. 111(a)) application, the 35 
U.S.C. 102(e) date 
for all the references would be the filing date of the earlier-filed U.S. application, assuming the earlier-filed 
application has proper support for the subject matter relied upon as required by 35 
U.S.C. 119(e) or 120.

If a second, later-filed U.S. nonprovisional (35 
U.S.C. 111(a)) application claimed the benefit of the 35 
U.S.C. 
111(a) application in the example above, the 35 
U.S.C. 102(e) date of the patent or publication of the second, 
later-filed U.S. application would still be the international filing date of the IA, assuming the earlier-filed IA 
has proper support for the subject matter relied upon as required by 35 
U.S.C. 120 and 365(c).

'''Example 8''': References based on a 35 
U.S.C. 111(a) Application which is a '''Continuation of an International Application''', which was '''filed on or after November 29, 2000''' and was '''not published in English''' under PCT Article 21(2).

Both the U.S. publication and the U.S. patent of the 35 
U.S.C. 111(a) continuation of an international application 
(IA) that was filed on or after November 29, 2000 but not published in English under PCT Article 21(2) 
have the 35 
U.S.C. 102(e) prior art date of the actual U.S. filing date of the 35 
U.S.C. 111(a) application. No 
benefit of the international filing date (nor any U.S. filing dates prior to the IA) is given for 35 
U.S.C. 102(e) 
purposes since the IA was published under PCT Article 21(2) in a language other than English. The IA publication 
under PCT Article 21(2) does not have a prior art date under 35 
U.S.C. 102(e)(1) because the IA was 
not published in English under PCT Article 21(2). The IA publication under PCT Article 21(2) can be applied 
under 35 
U.S.C. 102(a) or (b) as of its publication date.
{{Timeline|2=11/29/00|1=AIPA effective date|3=01 Mar 2001|4=IA filed, US was designated|6=01 Sep 2002|5=IA Publication by WIPO ''<u>NOT in English</u>'''|7=01 May 2003|8=35 U.S.C. 111(a) application claiming the benefit of the IA under 35 U.S.C. 365(c) is filed|10=01 July 2003|9=Publication of 35 U.S.C. 111(a) appl. by USPTO under 35 U.S.C. 122(b)|11=01 Nov 2004|12=Patent granted on 35 U.S.C. 111 (a) application|13=|14=|15=|16=|17=|18=}}


The 35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: None.The 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: 01 May 2003.The 35 U.S.C. 102(e)(2) date for the Patent is: 01 May 2003

The IA publication by WIPO can be applied under 35 
U.S.C. 102(a) or (b) as of its publication date (01 Sept 
2002).

Additional Benefit Claims:

If the IA properly claimed the benefit of any earlier-filed U.S. application (whether provisional or nonprovisional), 
there would still be no 35 
U.S.C. 102(e)(1) date for the IA publication by WIPO, and the U.S. 
patent application publication and patent would still have a 35 
U.S.C. 102(e) date of the actual filing date of 
the later-filed 35 
U.S.C. 111(a) application in the example above (01 May 2003).

If a second, later-filed U.S. nonprovisional (35 
U.S.C. 111(a)) application claimed the benefit of the 35 
U.S.C. 
111(a) application in the example above, the 35 
U.S.C. 102(e) date of the patent or publication of the second, 
later-filed U.S. application would still be the actual filing date of the 35 
U.S.C. 111(a) application in the example 
above (01 May 2003).


'''Example 9''': References based on a 35 
U.S.C. 111(a) Application which is a '''Continuation''' (filed prior to any 
entry of the national stage) '''of an International Application''', which was '''filed prior to November 29, 2000''' (language of the publication under PCT Article 21(2) is not relevant).

Both the U.S. publication and the U.S. patent of the 35 
U.S.C. 111(a) continuation (filed prior to any entry of 
the national stage) of an international application (IA) that was filed prior to November 29, 2000 have the 
35 
U.S.C. 102(e) prior art date of their actual U.S. filing date under 35 
U.S.C. 111(a). No benefit of the international 
filing date (nor any U.S. filing dates prior to the IA) is given for 35 
U.S.C. 102(e) prior art purposes 
since the IA was filed prior to November 29, 2000. The IA publication under PCT Article 21(2) does not have 
a prior art date under 35 
U.S.C. 102(e)(1) because the IA was filed prior to November 29, 2000. The IA publication 
under PCT Article 21(2) can be applied under 35 
U.S.C. 102(a) or (b) as of its publication date.
{{Timeline|2=01 Mar 2000|1=IA filed, with priority claim, US designated|3=01 Sep 2000|4=IA Publication by WIPO ''<u> in any language</u>'''|6=11/29/00|5=AIPA effective date|7=01 Dec 2000|8=35 U.S.C. 111(a) application filed claiming benefit of the prior IA application|10=06 Dec 2001|9=Publication of 35 U.S.C. 111(a) appl. by USPTO under 35 U.S.C. 122(b)|11=06 Aug 2002|12=Patent granted to 35 U.S.C. 111 (a) application|13=|14=|15=|16=|17=|18=}}


The 35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: None.The 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: 01 Dec. 2000.The 35 U.S.C. 102(e)(2) date for the Patent is: 01 Dec. 2000.

The IA publication by WIPO can be applied under 35 
U.S.C. 102(a) or (b) as of its publication date (01 Sept 
2000).

Additional Benefit Claims:

If the IA properly claimed the benefit of any earlier-filed U.S. application (whether provisional or nonprovisional), 
there would still be no 35 
U.S.C. 102(e)(1) date for the IA publication by WIPO, and the U.S. 
application publication and patent would still have a 35 
U.S.C. 102(e) date of the actual filing date of later-
filed 35 
U.S.C. 111(a) application in the example above (01 Dec 2000).

If a second, later-filed U.S. nonprovisional (35 
U.S.C. 111(a)) application claimed the benefit of 35 
U.S.C. 
111(a) application in the example above, the 35 
U.S.C. 102(e) date of the patent or publication of the second, 
later-filed U.S. application would still be the actual filing date of the 35 
U.S.C. 111(a) application in the example 
above (01 Dec 2000).

======III. FLOWCHARTS======

Flowchart for 35 U.S.C. 102(e)DatesFlowchart for 35 U.S.C. 102(e)Dates
FLOWCHARTS FOR 35 U.S.C. § 102(e) DATES: 
Apply to all applications and patents, whenever filed 
Chart I: For U.S. patent or U.S. patent application publication under 
35 U.S.C. § 122(b) (includes publications of § 371 applications) 
NoNoYesNoYesNoYesYesNoYesNoYesIs the reference a U.S. patent or U.S. application publication of an International Application (IA) after 
National Stage entry? 
(look for any of the following indicators: “35 U.S.C. § 371,” “§ 371,” “(22) PCT Filed:,” and/or “(86) PCT No.”)
Was the IA filed on or after Nov. 29, 2000? 
- look at the international filing date 
Is there an IA in the continuity chain for which a 
benefit is properly sought via §§ 120 or 365(c)? 
Was the WIPO 
publication of the 
IA in English and 
did the IA 
designate the 
U.S.? 
For a patent:§ 102(e) date is 
the § 371(c)(1), (2) and (4) dateForm Paragraph 7.12.01 
For a U.S. appl. publication:
no § 102(e) date 
Reference is prior art as of its 
publication date under § 102(a) or (b) 
Form Paragraph 7.08 or 7.09 
For a patent and a 
U.S. application 
publication: § 102(e) 
date is the 
international filing 
date or an earlier 
filing date for which 
a benefit is properly 
sought
Form Paragraph 7.12 
For a patent and a U.S. 
application publication: no
§ 102(e) date 
Reference is prior art as of its 
publication or grant date under 
§ 102(a) or (b) 
Form Paragraph 7.08 or 7.09 
Was the IA filed on or after Nov. 29, 2000? 
-look at the international filingdateWas the WIPO publication 
of the IA in English and 
did the IA designate the 
U.S.? 
For a patent: § 102(e) date is the 
§ 371(c)(1), (2) and (4) date; or § 111(a) 
filing date if the IA never entered national 
stage.
Form Paragraph 7.12.01 
For a U.S. application publication: § 
102(e) date is the filing date of the U.S. 
application that claimed benefit to the IAForm Paragraph 7.12 
For a patent and a U.S. 
application publication: 
§ 102(e) date is the 
international filing 
date or an earlier date 
for which a benefit is 
properly sought 
Form Paragraph 7.12 
For a patent and a U.S. 
application publication: 
§ 102(e) date is the filing date 
of the U.S. application that 
claimed benefit to the IA 
Form Paragraph 7.12 
The reference was filed under § 111(a) and 
only claims benefit to other U.S. applications 
filed under § 111(a) or (b) or does not make 
any benefit claims. 
The § 102(e) date of the reference is the 
earliest U.S. filing date for which a benefit is 
properly sought via §§ 119(e) and/or 120 (do 
not consider foreign priority claims under 
§§ 119(a)-(d)).Form Paragraph 7.12 Consider benefit claims properly made under § 119(e) to U.S. provisional applications, § 120 to U.S. nonprovisional applications, and 
§ 365(c) involving IAs. Do NOT consider foreign priority claims. 
§ 371 
(National 
Stage)
Benefit claimto 
an IA (§§ 120 or 
365(c))
No IA 
involved 
No





 

Flowchart for 35 U.S.C. 102(e)DatesFlowchart for 35 U.S.C. 102(e)Dates
FLOWCHARTS FOR 35 U.S.C. § 102(e) DATES: 
Apply to all applications and patents, whenever filed 
Chart II: For WIPO publicationof International Applications (IAs) 
NoYesNoYesWas the IA filed on or after Nov. 29, 2000? 
- look at the international filing date 
Was the WIPO 
publication of the 
IA in English and 
did the IA 
designate the 
U.S.? 
no § 102(e) date 
Reference is prior art as of its 
publication date under § 102(a) or 
(b) no matter what the language of 
publication was. 
Form Paragraph 7.08 or 7.09 
§ 102(e) date is the 
international filing dateor an earlier filing date for 
which a benefit is properly 
sought
FormParagraph7.12no § 102(e) date 
Reference is prior art as of its 
publication date under 
§ 102(a) or (b) no matter what 
the language of publication 
was.
Form Paragraph 7.08 or 7.09 Consider benefit claims properly made under § 119(e) to U.S. provisional applications, § 120 to U.S. 
nonprovisional applications, and § 365(c) involving IAs. Do NOT consider foreign priority claims. 
Glossary of Terms:
U.S. patent application publication = pre-grant publication by the USPTO under 35 U.S.C. § 122(b) 
International application (IA) = an application filed under the Patent Cooperation Treaty (PCT) 
§ 371 application = an IA that has entered the national stage in the U.S. (35 U.S.C. § 371(c)(1), (2) and (4))
November 29, 2000 = the effective date for the amendments to §§ 102(e) and 374 
WIPO = World Intellectual Property Organization 
WIPO Publication = a publication of an IA under PCT Article 21(2) (e.g., Publication No. WO 99/12345) 
§ 111(a) = provision of the patent code that states the filing requirements for nonprovisionalapplications
§ 111(b) = provision of the patent code that states the filing requirements for provisionalapplications
§ 119(e) = provision of the patent code that allows for benefit claims to provisionalapplications
§ 119(a)-(d) = provision of the patent code that allows for priority claims to foreignapplications
§ 120 = provision of the patent code that allows for benefit claims to nonprovisionalapplications
§ 365(c) = provision of the patent code that allows for benefit claims to international applications







 

=====706.02(f)(2) Provisional Rejections Under35 U.S.C. 102(e); Reference Is a Copending U.S. Patent Application=====

If an earlier filed, copending, and unpublished U.S. 
patent application discloses subject matter which 
would anticipate the claims in a later filed pending 
U.S. application which has a different inventive 
entity, the examiner should determine whether a provisional 
35 U.S.C. 102(e) rejection of the later filed 
application can be made. In addition, a provisional 
35 U.S.C. 102(e) rejection may be made, in the circumstances 
described below, if the earlier filed, pending 
application has been published as redacted 
(37 CFR 1.217) and the subject matter relied upon in 
the rejection is not supported in the redacted publication 
of the patent application.

======I. COPENDING U.S. APPLICATIONS HAVING AT LEAST ONE COMMON INVENTOR OR ARE COMMONLY ASSIGNED======

If (1) at least one common inventor exists 
between the applications or the applications are 
commonly assigned and (2) the effective filing dates 
are different, then a provisional rejection of the later 
filed application should be made. The provisional 
rejection is appropriate in circumstances where if 
the earlier filed application is published or becomes 
a patent it would constitute actual prior art under 
35 
U.S.C. 102. Since the earlier-filed application is 
not published at the time of the rejection, the rejection 
must be provisionally made under 35 
U.S.C. 
102(e).

A provisional rejection under 35 U.S.C. 102(e) can 
be overcome in the same manner that a 35 U.S.C. 
102(e) rejection can be overcome. See MPEP 
§ 706.02(b). The provisional rejection can also be 
overcome by abandoning the applications and filing a 
new application containing the subject matter of both.

======II. COPENDING APPLICATIONS HAVING NO COMMON INVENTOR OR ASSIGNEE======

If there is no common assignee or common inventor 
and the application was not published pursuant to 
35 U.S.C. 122(b), the confidential status of applications 
under 35 U.S.C. 122(a) must be maintained and 
no rejection can be made relying on the earlier filed, 
unpublished application, or subject matter not supported 
in a redacted application publication, as prior 
art under 35 U.S.C. 102(e). If the filing dates of the 
applications are within 6 
months of each other (3 
months for simple subject matter) then interference 
may be proper. See MPEP Chapter 2300. If the application 
with the earliest effective U.S. filing date will 
not be published pursuant to 35 
U.S.C. 122(b), it must 
be allowed to issue once all the statutory requirements 
are met. After the patent is published, it may be used 
as a reference in a rejection under 35 U.S.C. 102(e) in 
the still pending application as appropriate. See 
MPEP § 706.02(a) and § 2136 et seq.

====706.02(g) Rejections Under 35 U.S.C. 102(f)====

35 U.S.C. 102(f) bars the issuance of a patent 
where an applicant did not invent the subject matter 
being claimed and sought to be patented. See also 
35 
U.S.C. 101, 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 proof that another made the invention and that 
applicant derived the invention from the true inventor.

See MPEP § 2137 - § 2137.02 for more information 
on the substantive requirements of rejections under 
35 U.S.C. 102(f).

====706.02(h) Rejections Under 35 U.S.C. 102(g)====

35 U.S.C. 102(g) bars the issuance of a patent 
where another made the invention in the United States 
before applicant and had not abandoned, suppressed, 
or concealed it. This section of 35 U.S.C. 102 forms a 
basis for interference practice. See MPEP Chapter 
2300 for more information on interference procedure. 
See MPEP § 2138 - § 2138.06 for more information 
on the requirements of 35 U.S.C. 102(g).

====706.02(j) Contents of a 35 U.S.C. 103 Rejection====

35 U.S.C. 103 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, 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 why one of ordinary skill in 
the art at the time the invention was made would have 
been motivated to make the proposed modification. 

To establish a prima facie case of obviousness, 
three basic criteria must be met. First, there must be 
some suggestion or motivation, either in the references 
themselves or in the knowledge generally available 
to one of ordinary skill in the art, to modify the 
reference or to combine reference teachings. Second, 
there must be a reasonable expectation of success. 
Finally, the prior art reference (or references when 
combined) must teach or suggest all the claim limitations. 
The teaching or suggestion to make the claimed 
combination and the reasonable expectation of success 
must both be found in the prior art and not based 
on applicant’s disclosure. In re Vaeck, 947 F.2d 488, 
20 
USPQ2d 1438 (Fed. Cir. 1991). See MPEP § 2143- § 2143.03 for decisions pertinent to each of these 
criteria.

The initial burden is on the examiner to provide 
some suggestion of the desirability of doing what the 
inventor has done. “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). See MPEP § 2144 - 
§ 2144.09 for examples of reasoning supporting obviousness 
rejections. 

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) and constitute 
a property right (35 U.S.C. 261), 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), it is important that 
the written record clearly explain the rationale for 
decisions made during prosecution of the application.

See MPEP § 2141 - § 2144.09 generally for guidance 
on patentability determinations under 35 U.S.C. 
103, including a discussion of the requirements of 
Graham v. John Deere, 383 U.S. 1, 148 USPQ 459 
(1966). See MPEP § 2145 for consideration of applicant’s 
rebuttal arguments. See MPEP § 706.02(l) - 
§ 706.02(l)(3) for a discussion of prior art disqualified 
under 35 U.S.C. 103(c).

====706.02(k) Provisional Rejection (Obviousness) Under 35 U.S.C. 102(e)/103====

For patent applications pending on or after Dec. 10, 2004, examination proceedings, subject matter which 
was prior art under former 35 U.S.C. 103 via 
35 U.S.C. 102(e) was disqualified as prior art against 
the claimed invention if that subject matter and the 
claimed invention "were, at the time the invention 
was made, owned by the same person or subject to an 
obligation of assignment to the same person." 

Subject matter developed by another person shall be treated as 
owned by the same person or subject to an obligation 
of assignment to the same person for purposes of 
determining obviousness if three conditions are met:

(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.

For reexamination proceedings, the above rules are in effect only for patents granted on or after December 10, 2004.

Where two applications of different inventive entities 
are copending, not published under 35 U.S.C. 
122(b), and the filing dates differ, a provisional rejection 
under 35 U.S.C. 102(e)/103 should be made in 
the later filed application unless the application has 
been excluded under 35 U.S.C. 103(c).

Provisional rejections are used to maintain confidentiality of unpublished applications.

A provisional rejection alerts the applicant that 
he or she can expect an actual rejection on the same 
ground if one of the applications issues and also lets 
applicant know that action must be taken to avoid the 
rejection.

This gives applicant the opportunity to analyze the 
propriety of the rejection and possibly avoid the loss 
of rights to desired subject matter. Provisional rejections 
of the obviousness type under 35 U.S.C. 102(e)/
103 are rejections applied to copending applications 
having different effective filing dates wherein each 
application has a common assignee or a common 
inventor. The earlier filed application, if patented or 
published, would constitute prior art under 35 
U.S.C. 
102(e). The rejection can be overcome by: 

(A) Arguing patentability over the earlier filed 
application;

(B) Combining the subject matter of the copending 
applications into a single application claiming 
benefit under 35 U.S.C. 120 of the prior applications 
and abandoning the copending applications (Note that 
a claim in a subsequently filed application that relies 
on a combination of prior applications may not be 
entitled to the benefit of an earlier filing date under 
35 
U.S.C. 120 since 35 U.S.C. 120 requires that the 
earlier filed application contain a disclosure which 
complies with 35 U.S.C. 112, first paragraph for each 
claim in the subsequently filed application.); 

(C) Filing an affidavit or declaration under 
37 CFR 1.132 showing that any unclaimed invention 
disclosed in the copending application was derived 
from the inventor of the other application and is thus 
not invention "by another" (see MPEP § 715.01(a), 
§ 715.01(c), and § 716.10); 

(D) Filing an affidavit or declaration under 
37 CFR 1.131 showing a date of invention prior to the 
effective U.S. filing date of the copending application. 
See MPEP § 715; or

(E) For an application that is pending on or after 
December 10, 2004, a showing that (1) the prior art 
and the claimed invention were, at the time the invention 
was made, owned by the same person or subject 
to an obligation of assignment to the same person, or 
(2) the subject matter is disqualified under the amendment 
to 35 U.S.C. 103(c) made by the CREATE Act 
(i.e., joint research agreement disqualification).

Where the applications are claiming the same patentable 
invention, a terminal disclaimer and an affidavit 
or declaration under 37 CFR 1.130 may be used to 
overcome a rejection under 35 U.S.C. 103 in a common 
ownership situation if the earlier filed application 
has been published or matured into a patent. See 
[[MPEP 718]]. 

If a provisional rejection is made and the copending 
applications are combined into a single application 
and the resulting single application is subject to a 
restriction requirement, the divisional application 
would not be subject to a provisional or actual rejection 
under 35 U.S.C. 102(e)/103 since the provisions 
of 35 U.S.C. 121 preclude the use of a patent issuing 
therefrom as a reference against the other application. 
Additionally, the resulting continuation-in-part is entitled 
to 35 U.S.C. 120 benefit of each of the prior 
applications. This is illustrated in Example 2, below.

The following examples are instructive as to the 
application of 35 U.S.C. 102(e)/103 in applications 
filed prior to November 29, 1999 for which a patent 
was granted prior to December 10, 2004:


'''''Example 1'''''. Assumption: Employees A and B 
work for C, each with knowledge of the other's 
work, and with obligation to assign inventions to C 
while employed.

{| border="1" cellspacing="0" cellpadding="5" align="center" width="90%"
!width="50%"|SITUATIONS
!width="50%"|RESULTS
|-
|1. A invents X and later files application. 
|This is permissible.
|-
|2. B modifies X to XY. B files application before A’s filing.
|No 35 U.S.C. 102(f)/103 or 102(g)/103 rejection; provisional 35 U.S.C. 102(e)/103 rejection applies. Provisional double patenting rejection made. 
|-
|3. B’s patent issues.
|A’s claims rejected under 35 U.S.C. 102(e)/103 and double patenting.
|-
|4. A files 37 CFR 1.130 affidavit to disqualify B’s patent as prior art where the same patentable invention is being claimed. Terminal disclaimer filed under 37 CFR 1.321(c). 
|Rejection under 35 U.S.C. 102(e)/103 may be overcome and double patenting rejection may be overcome if inventions X and XY are commonly owned and all requirements of 37 CFR 1.130 and 1.321 are met.
|}
In situation (2.) above, the result is a provisionalrejection by the examiner under 35 U.S.C. 102(e)/
103. The rejection is provisional since the subject 
matter and the prior art are pending applications. 


'''''Example 2'''''. Assumption: Employees A and B 
work for C, each with knowledge of the other’s 
work, and with obligation to assign inventions to C 
while employed.

{| border="1" cellspacing="0" cellpadding="5" align="center" width="90%"
!width="50%"|SITUATIONS
!width="50%"|RESULTS
|-
|1. A invents X and files application. 
|This is permissible.
|-
|2. B modifies X to XY after A’s application is filed. B files application establishing that A and B were both under obligation to assign inventions to C at the time the inventions were made. 
|Provisional 35 U.S.C. 102(e)/103 rejection made; provisional double patenting rejection made; no 35 U.S.C. 102(f)/103 or 102(g)/103 rejection made. 
|-
|3. A and B file continuing application claiming priority to both their earlier applications and abandon the earlier applications.
|Assume it is proper that restriction be required between X and XY.
|-
|4. X is elected and patent issues on X with divisional application being timely filed on XY. 
|No rejection of divisional application under 35 U.S.C. 102(e)/103 in view of 35 U.S.C. 121.
|}
The following examples are instructive as to rejections 
under 35 U.S.C. 102(e)/103 in applications that 
are pending on or after December 10, 2004:


'''''Example 3'''''. Assumption: Employees A and B 
work for C, each with knowledge of the other’s 
work, and with obligation to assign inventions to C 
while employed. Employee A’s application, which 
is pending on or after December 10, 2004, is being 
examined.

{| border="1" cellspacing="0" cellpadding="5" align="center" width="90%"
!width="50%"|SITUATIONS
!width="50%"|RESULTS
|-
|1. A invents X and later files application. 
|This is permissible.
|-
|2. B modifies X to XY. B files application before A’s filing. A files an application on invention X.
|Provisional 35 U.S.C. 102(e)/103 rejection and a provisional double patenting rejection are made. 
|-
|3. B’s patent issues.
|A’s claims are rejected under 35 U.S.C. 102(e)/103 and double patenting.
|-
|4. A files evidence of common ownership of inventions X and XY at the time invention XY was made to disqualify B’s patent as prior art. In addition, A files a terminal disclaimer under 37 CFR 1.321(c).
|Rejection under 35 U.S.C. 102(e)/103 will be withdrawn and double patenting rejection will be obviated if inventions X and XY are commonly owned at the time invention XY was made and all requirements of 37 CFR 1.321 are met.
|}
In situation (2.) above, the result is a provisionalrejection by the examiner under 35 U.S.C. 102(e)/
103. The rejection is provisional since the subject 
matter and the prior art are pending applications. 


'''''Example 4'''''. Assumption: Employees A and B 
work for C, each with knowledge of the other’s 
work, and with obligation to assign inventions to C 
while employed. Employee B’s application, which 
is pending on or after December 10, 2004, is being 
examined.

{| border="1" cellspacing="0" cellpadding="5" align="center" width="90%"
!width="50%"|SITUATIONS
!width="50%"|RESULTS
|-
|1. A invents X and files application. 
|This is permissible.
|-
|2. B modifies X to XY after A’s application is filed. B files evidence establishing that A and B were both under obligation to assign inventions to C at the time the invention XY was made.
|Provisional 35 U.S.C. 102(e)/103 rejection cannot be made; provisional double patenting rejection is made; no 35 U.S.C. 102(f)/103 or 102(g)/103 rejection made. 
|-
|3. B files a terminal disclaimer under 37 CFR 1.321(c).
|The provisional double patenting rejection made in B’s application would be obviated if all requirements of 37 CFR 1.321 are met.
|}


'''''Example 5'''''. Assumption: Employee A works for 
assignee I and Employee B works for assignee J. 
There is a joint research agreement, pursuant to 35 
U.S.C. 103(c), between assignees I and J. Employees 
A and B each filed an application as set forth 
below. Employee B’s invention claimed in his 
application was made after the joint research 
agreement was entered into, and it was made as a 
result of activities undertaken within the scope of 
the joint agreement. Employee B’s application discloses 
assignees I and J as the parties to the joint 
research agreement. Employee B’s application, 
which is pending on or after December 10, 2004, is 
being examined.
{| border="1" cellspacing="0" cellpadding="5" align="center" width="90%"
!width="50%"|SITUATIONS
!width="50%"|RESULTS
|-
|1. A invents X and files application. 
|This is permissible.
|-
|2. B modifies X to XY after A’s application is filed. B files evidence establishing a joint research agreement in compliance with 35 U.S.C. 103(c).
|Provisional 35 U.S.C. 102(e)/103 rejection cannot be made; provisional double patenting rejection is made; no 35 U.S.C. 102(f)/103 or 102(g)/103 rejection made. 
|-
|3. B files a terminal disclaimer under 37 CFR 1.321.
|The provisional double patenting rejection made in B’s application would be obviated if all requirements of 37 CFR 1.321 are met.
|}


'''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 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 
the first paragraph of 35 U.S.C. 112.

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 benefit 
without any additional submissions or notifications 
from applicants regarding inventorship differences.

====706.02(l) Rejections Under 35 U.S.C. 103(a) Using Prior Art Under Only 35 U.S.C. 102 (e), (f), or (g)====

{{Statute|35 U.S.C. 103. Conditions for patentability; non-obvious subject matter.}}
{{Ellipsis}}
(c)
{{tab1}}(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 of this title, 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.</p>

{{tab1}}(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 —</p>

{{tab2}}(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;</p>

{{tab2}}(B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and </p>

{{tab2}}(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. </p>

{{tab1}}(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.</p>
|}


* It is important to recognize that 35 U.S.C. 103(c) applies '''only''' to consideration of prior art for purposes of '''obviousness''' under 35 U.S.C. 103.
* It does not apply to or affect subject matter which is applied in a rejection under 35 U.S.C. 102 or a double patenting rejection.
* In addition, subject matter that qualifies as prior art under any other subsection of 35 U.S.C. 102 (e.g., 35 U.S.C. 102(a) or (b)) it will not be disqualified as prior art under 35 U.S.C. 103(c).
* A patent applicant or patentee urging that subject 
matter is disqualified has the burden of establishing 
that the prior art is disqualified under 35 U.S.C. 
103(c).
* The term "another" as used in 35 U.S.C. 103 means any inventive entity other than the inventor and would include the inventor and any other persons.
* The term "commonly owned" means wholly owned by the same person(s) or organization(s) at the time the invention was made.

FOR APPLICATIONS FILED PRIOR TO NOVEMBER 29, 1999 AND GRANTED AS PATENTS PRIOR TO DECEMBER 10, 2004

Prior to November 29, 1999, 35 U.S.C. 103(c) provided 
that subject matter developed by another which 
qualifies as “prior art” only under subsections 
35 U.S.C. 102(f) or 35 U.S.C. 102(g) is not to be considered 
when determining whether an invention 
sought to be patented is obvious under 35 U.S.C. 103, 
provided the subject matter and the claimed invention 
were commonly owned at the time the invention was 
made. See MPEP § 706.02(l)(1) for information 
regarding when prior art under 35 U.S.C. 102(e)/103is disqualified under 35 U.S.C. 103(c). 

For applications filed prior to November 29, 1999 
and granted as patents prior to December 10, 2004, 
the subject matter that is disqualified as prior art 
under 35 U.S.C. 103(c) is strictly limited to subject 
matter that A) qualifies as prior art only under 
35 U.S.C. 102(f) or 35 U.S.C. 102(g), and B) was 
commonly owned with the claimed invention at the 
time the invention was made. If 
the subject matter that 
qualifies as prior art only under 35 
U.S.C. 102(f) or 
35 U.S.C. 102(g) was not commonly owned at the 
time of the invention, the subject matter is not disqualified 
as prior art under 35 
U.S.C. 103(c). See 
OddzOn Products, Inc. v. Just Toys, Inc., 122 F.3d 
1396, 1403-04, 43 USPQ2d 1641, 1646 (Fed. Cir. 
1997) (“We therefore hold that subject matter derived 
from another not only is itself unpatentable to the 
party who derived it under § 102(f), but, when combined 
with other prior art, may make a resulting obvious 
invention unpatentable to that party under a 
combination of §§ 102(f) and 103.”) Therefore, in 
these applications, information learned from or transmitted 
to persons outside the organization is not disqualified 
as prior art. 

Inventors of subject matter not commonly owned at 
the time of the invention, but currently commonly 
owned, may file as joint inventors in a single application. 
However, the claims in such an application are 
not protected from a 35 U.S.C. 102(f)/103 or 
35 U.S.C. 102(g)/103 rejection. Applicants in such 
cases have an obligation pursuant to 37 
CFR 1.56 to point out the inventor and invention dates of each 
claim and the lack of common ownership at the time 
the later invention was made to enable the examiner 
to consider the applicability of a 35 U.S.C. 102(f)/103or 35 
U.S.C. 102(g)/103 rejection. The examiner will 
assume, unless there is evidence to the contrary, that 
applicants are complying with their duty of disclosure.

Foreign applicants will sometimes combine the 
subject matter of two or more related applications 
with different inventors into a single U.S. application 
naming joint inventors. The examiner will make the 
assumption, absent contrary evidence, that the applicants 
are complying with their duty of disclosure if no 
information is provided relative to invention dates and 
common ownership at the time the later invention was 
made. Such a claim for 35 U.S.C. 119(a)-(d) priority 
based upon the foreign filed applications is 
appropriate and 35 U.S.C. 119(a)-(d) priority can 
be accorded based upon each of the foreign filed 
applications.

=====706.02(l)(1) Rejections Under 35 U.S.C. 103(a) Using Prior Art Under 35 U.S.C. 102(e), (f), or (g); Prior Art Disqualification Under 35 U.S.C. 103(c)=====

{{Statute|35 U.S.C. 103. Conditions for patentability; non-obvious subject matter.}}
{{Ellipsis}}
(c)
{{tab1}}(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 of this title, 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.</p>

{{tab1}}(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 —</p>

{{tab2}}(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;</p>

{{tab2}}(B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and </p>

{{tab2}}(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. </p>

{{tab1}}(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.</p>
|}

======I.COMMON OWNERSHIP OR ASSIGNEE PRIOR ART EXCLUSION UNDER 35 U.S.C. 103(c)======

Enacted on November 29, 1999, the American 
Inventors Protection Act (AIPA) added subject 
matter which was prior art under former 35 U.S.C. 
103 via 35 U.S.C. 102(e) as disqualified  prior 
art against the claimed invention if that subject matter 
and the claimed invention “were, at the time the 
invention was made, owned by the same person or 
subject to an obligation of assignment to the same 
person.” The 1999 change to 35 U.S.C. 103(c) 
only applied to all utility, design and plant patent 
applications filed on or after November 29, 1999. 
The Cooperative Research and Technology Enhancement 
Act of 2004 (CREATE Act), in part, redesignated 
the former 35 U.S.C. 103(c) to 35 U.S.C. 
103(c)(1) and made this provision effective to all 
applications in which the patent is granted on or after 
December 10, 2004. Therefore, the provision of 35 
U.S.C. 103(c)(1) is effective for all applications pending 
on or after December 10, 2004, including applications 
filed prior to November 29, 1999. In addition, 
this provision applies to all patent applications, 
including utility, design, plant and reissue applications. 
The amendment to 35 U.S.C. 103(c)(1) does not 
affect any application filed before November 29, 1999 
and issued as a patent prior to December 10, 2004.

In a reexamination proceeding, however, one must 
look at whether or not the patent being reexamined 
was granted on or after December 10, 2004 to determine 
whether 35 U.S.C. 103(c), as amended by the 
CREATE Act, applies. For a reexamination proceeding 
of a patent granted prior to December 10, 2004 on 
an application filed on or after November 29, 1999, it 
is the 1999 changes to 35 U.S.C. 103(c) that are applicable 
to the disqualifying commonly assigned/owned 
prior art provisions of 35 U.S.C. 103(c). For a reexamination 
proceeding of a patent granted prior to 
December 10, 2004 on an application filed prior to 
November 29, 1999, neither the 1999 nor the 2004 
changes to 35 U.S.C. 103(c) are applicable. Therefore, 
only prior art under 35 U.S.C. 102(f) or (g) used 
in a rejection under 35 U.S.C. 103(a) may be disqualified 
under the commonly assigned/owned prior art 
provisions of 35 U.S.C. 103(c).

For reissue applications, the doctrine of recapture 
may prevent the presentation of claims in the 
reissue applications that were amended or cancelled 
from the application which matured into the patent for 
which reissue is being sought, if the claims were 
amended or cancelled to distinguish the claimed 
invention from 35 
U.S.C. 102(e)/103 prior art which 
was not able to be excluded under 35 U.S.C. 
103(c) in the application that issued as a patent. If an 
examiner determines that this situation applies in the 
reissue application under examination, a consultation 
with the Office of Patent Legal Administration should 
be initiated via the Technology Center Special Program 
Examiner.

35 U.S.C. 103(c) applies only to prior art usable in 
an obviousness rejection under 35 U.S.C. 103. Subject 
matter that qualifies as anticipatory prior art 
under 35 U.S.C. 102  is not affected, and may still 
be used to reject claims as being anticipated. In addition, 
double patenting rejections, based on subject 
matter now disqualified as prior art in amended 35 
U.S.C. 103(c), should still be made as appropriate. 
See 37 CFR 1.78(c) and MPEP § 804.

The burden of establishing that subject matter is 
disqualified as prior art is placed on applicant once 
the examiner has established a prima facie case of 
obviousness based on the subject matter. For example, 
the fact that the reference and the application 
have the same assignee is not, by itself, sufficient evidence 
to disqualify the prior art under 35 U.S.C. 
103(c). There must be a statement that the common 
ownership was “at the time the invention was made.”

See MPEP § 706.02(l)(2) for information regarding 
establishing common ownership. See MPEP § 706.02(l)(3) for examination procedure with respect 
to 35 U.S.C. 103(c). 

======II. JOINT RESEARCH AGREEMENT DISQUALIFICATION UNDER 35 U.S.C. 103(c) BY THE CREATE ACT======

The CREATE Act (Pub. L. 108-453, 118 Stat. 3596 
(2004)) was enacted on December 10, 2004, and is 
effective for applications for which the patent is 
granted on or after December 10, 2004. Specifically, 
the CREATE Act amended 35 U.S.C. 103(c) to provide 
that:

*subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of 35 U.S.C. 102 shall not preclude patentability under 35 U.S.C. 103 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;
*for purposes of 35 U.S.C. 103, 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
**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,
**the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement, and
**the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement;
*for purposes of 35 U.S.C. 103(c), 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, development, or research work in the field of the claimed invention.

The effective date provision of the CREATE Act 
provided that its amendments shall apply to any 
patent (including any reissue patent) granted on or 
after December 10, 2004. The CREATE Act also provided 
that its amendment shall not affect any final 
decision of a court or the Office rendered before 
December 10, 2004, and shall not affect the right of 
any party in any action pending before the Office or a 
court on December 10, 2004, to have that party’s 
rights determined on the basis of the provisions of 
title 35, United States Code, in effect on December 9, 
2004. Since the CREATE Act also includes the 
amendment to 35 U.S.C. 103(c) made by section 4807 
of the AIPA (see Pub. L. 106-113, 113 Stat. 1501, 
1501A-591 (1999)), the change of “subsection (f) or 
(g)” to “one or more of subsections (e), (f), or (g)” in 
35 U.S.C. 103(c) is now also applicable to applications 
filed prior to November 29, 1999, that were 
pending on December 10, 2004.

35 U.S.C. 103(c), as amended by the CREATE Act, 
continues to apply only to subject matter which qualifies 
as prior art under 35 U.S.C. 102(e), (f), or (g), and 
which is being relied upon in a rejection under 35 
U.S.C. 103. If the rejection is anticipation under 35 
U.S.C. 102(e), (f), or (g), 35 U.S.C. 103(c) cannot be 
relied upon to disqualify the subject matter in order to 
overcome or prevent the anticipation rejection. Likewise, 
35 U.S.C. 103(c) cannot be relied upon to overcome 
or prevent a double patenting rejection. See 37 
CFR 1.78(c) and MPEP § 804.

Because the CREATE Act applies only to patents 
granted on or after December 10, 2004, the recapture 
doctrine may prevent the presentation of claims in the 
reissue applications that had been amended or cancelled 
(e.g., to avoid a rejection under 35 U.S.C. 
103(a) based on subject matter that may now be disqualified 
under the CREATE Act) during the prosecution 
of the application which resulted in the patent 
being reissued.

=====706.02(l)(2)Establishing Common Ownership or Joint Research Agreement=====

In order to be disqualified as prior art under 
35 U.S.C. 103(c), the subject matter which would oth
erwise be prior art to the claimed invention and the 
claimed invention must be commonly owned, or subject 
to an obligation of assignment to a same person, 
at the time the claimed invention was made or be subject 
to a joint research agreement at the time the 
invention was made. See MPEP § 706.02(l) for 
35 U.S.C. 102(f)/103 or 35 U.S.C. 102(g)/103 prior 
art disqualified under 35 U.S.C. 103(c) in applications 
granted as patents prior to December 10, 2004. See 
MPEP § 706.02(l)(1) for 35 U.S.C. 102(e), (f), or (g)/
103 prior art disqualified under 35 U.S.C. 103(c). 

======I. DEFINITION OF COMMON OWNERSHIP======

The term "commonly owned" is intended to mean 
that the subject matter which would otherwise be 
prior art to the claimed invention and the claimed 
invention are entirely or wholly owned by the same 
person(s) or organization(s)/business entity(ies) at the 
time the claimed invention was made. If the person(s) 
or organization(s) owned less than 100 percent of the 
subject matter which would otherwise be prior art to 
the claimed invention, or less than 100 percent of the 
claimed invention, then common ownership would 
not exist. Common ownership requires that the person(
s) or organization(s)/business entity(ies) own 100 
percent of the subject matter and 100 percent of the 
claimed invention. 

Specifically, if an invention claimed in an application 
is owned by more than one entity and those entities 
seek to exclude the use of a reference under 
35 
U.S.C. 103, then the reference must be owned by, 
or subject to an obligation of assignment to, the same 
entities that owned the application, at the time the 
later invention was made. For example, assume Company 
A owns twenty percent of patent Application X 
and Company B owns eighty percent of patent Application 
X at the time the invention of Application X 
was made. In addition, assume that Companies A and 
B seek to exclude the use of Reference Z under 
35 
U.S.C. 103. Reference Z must have been co-
owned, or have been under an obligation of assignment 
to both companies, on the date the invention was 
made in order for the exclusion to be properly 
requested. A statement such as “Application X and 
Patent Z were, at the time the invention of Application 
X was made, jointly owned by Companies A and B” 
would be sufficient evidence of common ownership. 

For applications owned by a joint venture of two or 
more entities, both the application and the reference 
must have been owned by, or subject to an obligation 
of assignment to, the joint venture at the time the 
invention was made. For example, if Company A and 
Company B formed a joint venture, Company C, both 
Application X and Reference Z must have been 
owned by, or subject to an obligation of assignment 
to, Company C at the time the invention was made in 
order for Reference Z to be properly excluded as prior 
art under 35 U.S.C. 103(c). If Company A by itself 
owned Reference Z at the time the invention of Application 
X was made and Application X was owned by 
Company C on the date the invention was made, then 
a request for the exclusion of Reference Z as prior art 
under 35 U.S.C. 103(c) would not be proper.

As long as principal ownership rights to either the 
subject matter or the claimed invention reside in different 
persons or organizations common ownership 
does not exist. A license of the claimed invention to 
another by the owner where basic ownership rights 
are retained would not defeat ownership. 

The requirement for common ownership at the time 
the claimed invention was made is intended to preclude 
obtaining ownership of subject matter after the 
claimed invention was made in order to disqualify 
that subject matter as prior art against the claimed 
invention. 

The question of whether common ownership exists 
at the time the claimed invention was made is to be 
determined on the facts of the particular case in question. 
Actual ownership of the subject matter and the 
claimed invention by the same individual(s) or organization(
s) or a legal obligation to assign both the subject 
matter and the claimed invention to the same 
individual(s) or organization(s)/business entity(ies) 
must be in existence at the time the claimed invention 
was made in order for the subject matter to be disqualified 
as prior art. A moral or unenforceable obligation 
would not evidence common ownership.

Under 35 U.S.C. 103(c), an applicant’s admission 
that subject matter was developed prior to applicant’s 
invention would not make the subject matter prior art 
to applicant if the subject matter qualifies as prior art 
only under sections 35 U.S.C. 102(e), (f), or (g), and 
if the subject matter and the claimed invention were 
commonly owned at the time the invention was made. 
See In re Fout, 675 
F.2d 297, 213 USPQ 532 (CCPA 
1982), for a decision involving an applicant’s admission 
which was used as prior art against their application. 
If the subject matter and invention were not 
commonly owned, an admission that the subject matter 
is prior art would be usable under 35 U.S.C. 103.

The burden of establishing that subject matter is 
disqualified as prior art under 35 U.S.C. 103(c) is 
intended to be placed and reside upon the person or 
persons urging that the subject matter is disqualified. 
For example, a patent applicant urging that subject 
matter is disqualified as prior art under 35 U.S.C. 
103(c), would have the burden of establishing that it 
was commonly owned at the time the claimed invention 
was made. The patentee in litigation would likewise 
properly bear the same burden placed upon the 
applicant before the U.S. Patent and Trademark 
Office. To place the burden upon the patent examiner 
or the defendant in litigation would not be appropriate 
since evidence as to common ownership at the time 
the claimed invention was made might not be available 
to the patent examiner or the defendant in litigation, 
but such evidence, if it exists, should be readily 
available to the patent applicant or the patentee.

In view of 35 U.S.C. 103(c), the Director has reinstituted 
in appropriate circumstances the practice of 
rejecting claims in commonly owned applications of 
different 
inventive entities on the grounds of double 
patenting. Such rejections can be overcome in appropriate 
circumstances by the filing of terminal disclaimers. 
This practice has been judicially authorized. 
See In re Bowers, 359 F.2d 886, 149 USPQ 57 (CCPA 
1966). The use of double patenting rejections which 
then could be overcome by terminal disclaimers preclude 
patent protection from being improperly 
extended while still permitting inventors and their 
assignees to obtain the legitimate benefits from their 
contributions. See also MPEP § 804.

The following examples are provided for illustration 
only:
<div style="margin-left: 2em;">
'''Example 1'''

Parent Company owns 100% of Subsidiaries A 
and B 

- inventions of A and B are commonly owned by 
the Parent Company.

'''Example 2'''

Parent Company owns 100% of Subsidiary A and 
90% of Subsidiary B

- inventions of A and B are not commonly owned 
by the Parent Company.

'''Example 3'''

If same person owns subject matter and invention 
at time invention was made, license to another 
may be made without the subject matter becoming 
prior art.

'''Example 4'''

Different Government inventors retaining certain 
rights (e.g. foreign filing rights) in separate inventions 
owned by Government precludes common 
ownership of inventions.

'''Example 5'''

Company A and Company B form joint venture 
Company C. Employees of A, while working for C 
with an obligation to assign inventions to C, invent 
invention #1; employees of B while working for C 
with an obligation to assign inventions to C, invent 
invention #2, with knowledge of #1. 

Question: Are #1 and #2 commonly owned at the 
time the later invention was made so as to preclude 
a rejection under 35 U.S.C. 102(e), (f) or (g) in 
view of 35 
U.S.C. 103?

Answer: Yes- If the required evidence of common 
ownership is made of record in the patent application 
file. If invention #1 was invented by employees 
of Company A not working for Company C 
and Company A maintained sole ownership of 
invention #1 at the time invention #2 was made, 
inventions #1 and #2 would not be commonly 
owned as required by 35 U.S.C. 103(c).

'''Example 6'''

Company A owns 40% of invention #1 and 60% of 
invention #2, and Company B owns 60% of invention 
#1 and 40% of invention #2 at the time invention 
#2 was made.

-inventions #1 and #2 are commonly owned.

'''Example 7'''

Company B has a joint research project with University 
A. Under the terms of the joint research 
project, University A has agreed that all of its patents 
will be jointly owned by Company B and University 
A. Professor X, who works for University 
A, has an employee agreement with University A 
assigning all his patents only to University A. 
After the joint research project agreement is exe
cuted, University A files patent application #1 for 
the invention of Professor X, before Company B 
files patent application #2 on a similar invention. 

- inventions #1 and #2 are commonly owned 
because Professor X’s obligation to assign patents 
to University A who has an obligation to assign 
patents to the A-B joint venture legally establishes 
Professor X’s obligation to assign patents to the A-
B joint venture.

'''Example 8'''

Inventor X working at Company A invents and 
files patent application #1 on technology T, owned 
by Company A. After application #1 is filed, Company 
A spins off a 100% owned Subsidiary B for 
technology T including the transfer of the ownership 
of patent application #1 to Subsidiary B. After 
Subsidiary B is formed, inventor Y (formerly a 
Company A employee, but now an employee of 
Subsidiary B obligated to assign to Subsidiary B) 
jointly files application #2 with inventor X (now 
also an employee of Subsidiary B with an obligation 
to assign to Subsidiary B), which is directed to 
a possibly unobvious improvement to technology 
T. 

- the inventions of applications #1 and #2 are commonly 
owned since Subsidiary B is a wholly 
owned subsidiary of Company A.
</div>
The examiner must examine the application as to 
all grounds except 35 U.S.C. 102(e), (f) and (g) as 
they apply through 35 U.S.C. 103 only if the application 
file(s) establishes common ownership at the time 
the later invention was made. Thus, it is necessary to 
look to the time at which common ownership exists. If 
common ownership does not exist at the time the later 
invention was made, the earlier invention is not disqualified 
as potential prior art under 35 
U.S.C. 102(e), 
(f) and (g) as they apply through 35 
U.S.C. 103. An 
invention is “made” when conception is complete as 
defined in Mergenthaler v. Scudder, 11 App. D.C. 
264, 81 O.G. 1417, 1897 C.D. 724 (D.C. Cir. 1897); In 
re Tansel, 253 F.2d 241, 117 USPQ 188 (CCPA 1958). 
See Pfaff v. Wells Elecs., 525 U.S. 55, 119 S. Ct. 304, 
312, 48 USPQ2d 1641, 1647 (1998) (“the invention 
must be ready for patenting . . . . by proof that prior to 
the critical date the inventor had prepared drawing or 
other descriptions of the invention that were sufficiently 
specific to enable a person skilled in the art to 
practice the invention.”) Common ownership at the 
time the invention was made for 
purposes of obviating 
a 35 U.S.C. 102(e)/35 U.S.C. 103, 35 
U.S.C. 102(f)/35 U.S.C. 103 or 35 U.S.C. 102(g)/35 U.S.C. 
103 rejection may be established irrespective of 
whether the invention was made in the United States 
or abroad. The provisions of 35 U.S.C. 104, however, 
will continue to apply to other proceedings in the U.S. 
Patent and Trademark Office, e.g. in an interference 
proceeding, with regard to establishing a date of 
invention by knowledge or use thereof, or other activity 
with respect thereto, in a foreign country. The foreign 
filing date will continue to be used for 
interference purposes under 35 
U.S.C. 119(a)-(d) and 
35 U.S.C. 365.

======II. EVIDENCE REQUIRED TO ESTABLISH COMMON OWNERSHIP======

It is important to recognize just what constitutes 
sufficient evidence to establish common ownership at 
the time the invention was made. The common ownership 
must be shown to exist at the time the later 
invention was made. A statement of present common 
ownership is not sufficient. In re Onda, 229 USPQ 
235 (Comm’r Pat. 1985).

The following statement is sufficient evidence to 
establish common ownership of, or an obligation for 
assignment to, the same person(s) or organizations(s):

Applications and references (whether patents, patent applications, 
patent application publications, etc.) will be considered 
by the examiner to be owned by, or subject to an 
obligation of assignment to the same person, at the time the 
invention was made, if the applicant(s) or an attorney or 
agent of record makes a statement to the effect that the 
application and the reference were, at the time the invention 
was made, owned by, or subject to an obligation of assignment 
to, the same person.

See “Guidelines Setting Forth a Modified Policy 
Concerning the Evidence of Common Ownership, or 
an Obligation of Assignment to the Same Person, as 
Required by 35 U.S.C. 103(c),” 1241 O.G. 96 
(December 26, 2000). The applicant(s) or the representative(
s) of record have the best knowledge of the 
ownership of their application(s) and reference(s), and 
their statement of such is sufficient evidence because 
of their paramount obligation of candor and good 
faith to the USPTO. 

The statement concerning common ownership 
should be clear and conspicuous (e.g., on a separate 
piece of paper or in a separately labeled section) in 
order to ensure that the examiner quickly notices the 
statement. Applicants may, but are not required to, 
submit further evidence, such as assignment records, 
affidavits or declarations by the common owner, or 
court decisions, in addition to the above-mentioned 
statement concerning common ownership.

For example, an attorney or agent of record 
receives an Office action for Application X in which 
all the claims are rejected under 35 U.S.C. 103(a)
using Patent A in view of Patent B wherein Patent A 
is only available as prior art under 35 U.S.C. 102(e), 
(f), and/or (g). In her response to the Office action, the 
attorney or agent of record for Application X states, in 
a clear and conspicuous manner, that:

"Application X and Patent A were, at the time the invention 
of Application X was made, owned by Company Z."

This statement alone is sufficient evidence to disqualify 
Patent A from being used in a rejection under 
35 U.S.C. 103(a) against the claims of Application X. 

In rare instances, the examiner may have independent 
evidence that raises a material doubt as to the 
accuracy of applicant’s representation of either (1) the 
common ownership of, or (2) the existence of an obligation 
to commonly assign, the application being 
examined and the applied U.S. patent or U.S. patent 
application publication reference. In such cases, the 
examiner may explain why the accuracy of the representation 
is doubted, and require objective evidence 
of common ownership of, or the existence of an obligation 
to assign, the application being examined and 
the applied reference as of the date of invention of the 
application being examined. As mentioned above, 
applicant(s) may submit, in addition to the above-
mentioned statement regarding common ownership, 
the following objective evidence:

(A) Reference to assignments recorded in the U.S. 
Patent and Trademark Office in accordance with 
37 CFR Part 3 which convey the entire rights in the 
applications to the same person(s) or organization(s);

(B) Copies of unrecorded assignments which convey 
the entire rights in the applications to the same 
person(s) or organization(s) are filed in each of the 
applications;

(C) An affidavit or declaration by the common 
owner is filed which states that there is common ownership 
and states facts which explain why the affiant 
or declarant believes there is common ownership, 
which affidavit or declaration may be signed by an 
official of the corporation or organization empowered 
to act on behalf of the corporation or organization 
when the common owner is a corporation or other 
organization; and

(D) Other evidence is submitted which establishes 
common ownership of the applications. 

======III.EVIDENCE REQUIRED TO ESTABLISH A JOINT RESEARCH AGREEMENT======

Once an examiner has established a prima faciecase of obviousness under 35 U.S.C. 103(a), the burden 
of overcoming the rejection by invoking the joint 
research agreement provisions of 35 U.S.C. 103(c) as 
amended by the CREATE Act is on the applicant or 
the patentee. 35 U.S.C. 103(c)(3) defines a “joint 
research agreement” 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, that was in effect on or before the 
date the claimed invention (under examination or 
reexamination) was made.

Like the common ownership or assignment provision, 
the joint research agreement must be shown to 
be in effect on or before the time the later invention 
was made. The joint research agreement may be in 
effect prior to the effective date (December 10, 2004) 
of the CREATE Act. In addition, the joint research 
agreement is NOT required to be in effect on or before 
the prior art date of the reference that is sought to be 
disqualified.

To overcome a rejection under 35 U.S.C. 103(a) 
based upon subject matter (whether a patent document, 
publication, or other evidence) which qualifies 
as prior art under only one or more of 35 U.S.C. 
102(e), (f), or (g) via the CREATE Act, the applicant 
must comply with the statute and the rules of practice 
in effect.

{{Statute|37 CFR 1.71. Detailed description and specification of the invention.}}
{{Ellipsis}}
(g)
{{tab1}}(1) The specification may disclose or be amended to disclose the names of the parties to a joint research agreement (35 U.S.C. 103(c)(2)(C)).</p>

{{tab1}}(2) An amendment under paragraph (g)(1) of this section must be accompanied by the processing fee set forth § 1.17(i) if not filed within one of the following time periods:</p>

{{tab2}}(i) Within three months of the filing date of a national application;</p>

{{tab2}}(ii) Within three months of the date of entry of the national stage as set forth in § 1.491 in an international application; </p>

{{tab2}}(iii) Before the mailing of a first Office action on the merits; or</p>

{{tab2}}(iv) Before the mailing of a first Office action after the filing of a request for continued examination under § 1.114.</p>

{{tab1}}(3) If an amendment under paragraph (g)(1) of this section is filed after the date the issue fee is paid, the patent as issued may not necessarily include the names of the parties to the joint research agreement. If the patent as issued does not include the names of the parties to the joint research agreement, the patent must be corrected to include the names of the parties to the joint research agreement by a certificate of correction under 35 U.S.C. 255 and § 1.323 for the amendment to be effective.</p>
|}


{{Statute|37 CFR 1.104. Nature of examination.}}
{{Ellipsis}}
(c) Rejection of claims.

{{tab1}}(4) Subject matter which is developed by another person 
which qualifies as prior art only under 35 U.S.C. 102(e), (f) or (g) 
may be used as prior art under 35 U.S.C. 103 against a claimed 
invention unless the entire rights to the subject matter and the 
claimed invention were commonly owned by the same person or 
subject to an obligation of assignment to the same person at the 
time the claimed invention was made.</p>

{{tab2}}(i) Subject matter developed by another person and a claimed invention shall be deemed to have been commonly owned by the same person or subject to an obligation of assignment to the same person in any application and in any patent granted on or after December 10, 2004, if: </p>

{{tab3}}(A) The claimed invention and the subject matter 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;</p>

{{tab3}}(B) The claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and</p>

{{tab3}}(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.</p>

{{tab2}}(ii) For purposes of paragraph (c)(4)(i) of this section, 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.</p>

{{tab2}}(iii) To overcome a rejection under 35 U.S.C. 103(a) based upon subject matter which qualifies as prior art under only one or more of 35 U.S.C. 102(e), (f) or (g) via 35 U.S.C. 103(c)(2), the applicant must provide a statement to the effect that the prior art and the claimed invention were made by or on the behalf of parties to a joint research agreement, within the meaning of 35 U.S.C. 103(c)(3) and paragraph (c)(4)(ii) of this section, that was in effect on or before the date the claimed invention was made, and that the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement.</p>
|}

37 CFR 1.71(g) provides for the situation in which 
an application discloses or is amended to disclose the 
names of the parties to a joint research agreement to 
invoke the “safe harbor” provision of 35 U.S.C. 
103(c) as amended by the CREATE Act. 37 CFR 
1.71(g)(1) specifically provides that the specification 
may disclose or be amended to disclose the name of 
each party to the joint research agreement because 
this information is required by 35 U.S.C. 
103(c)(2)(C).

37 CFR 1.71(g)(2) provides that an amendment 
under 37 CFR 1.71(g)(1) must be accompanied by the 
processing fee set forth in 37 CFR 1.17(i) if it is not 
filed within one of the following time periods: (1) 
within three months of the filing date of a national 
application; (2) within three months of the date of 
entry of the national stage as set forth in 37 CFR 
1.491 in an international application; (3) before the 
mailing of a first Office action on the merits; or (4) 
before the mailing of a first Office action after the filing 
of a request for continued examination under 37 
CFR 1.114.

37 CFR 1.71(g)(3) provides that if an amendment 
under 37 CFR 1.71(g)(1) is filed after the date the 
issue fee is paid, the patent as issued may not necessarily 
include the names of the parties to the joint 
research agreement. 37 CFR 1.71(g)(3) also provides 
that if the patent as issued does not include the names 
of the parties to the joint research agreement, the 
patent must be corrected to include the names of the 
parties to the joint research agreement by a certificate 
of correction under 35 U.S.C. 255 and 37 CFR 1.323 
for the amendment to be effective. The requirements 
of 37 CFR 1.71(g)(3) (correction of the patent by a 
certificate of correction under 35 U.S.C. 255 and 37 
CFR 1.323) also apply in the situation in which such 
an amendment is not filed until after the date the 
patent was granted (in a patent granted on or after 
December 10, 2004). It is unnecessary to file a reissue 
application or request for reexamination of the patent 
to submit the amendment and other information necessary 
to take advantage of 35 U.S.C. 103(c) as 
amended by the CREATE Act. See H.R. Rep. No. 
108-425, at 9 (“[t]he omission of the names of parties 
to the agreement is not an error that would justify 
commencement of a reissue or reexamination proceeding”).

The submission of such an amendment remains 
subject to the rules of practice: e.g., 37 CFR 1.116, 
1.121, and 1.312. For example, if an amendment 
under 37 CFR 1.71(g) is submitted in an application 
under final rejection to overcome a rejection under 35 
U.S.C. 103(a) based upon a U.S. patent which qualifies 
as prior art only under 35 U.S.C. 102(e), the 
examiner may refuse to enter the amendment under 
37 CFR 1.71(g) if it is not accompanied by an appropriate 
terminal disclaimer (37 CFR 1.321(d)). This is 
because such an amendment may necessitate the 
reopening of prosecution (e.g., for entry of a double 
patenting rejection).

If an amendment under 37 CFR 1.71(g) is submitted 
to overcome a rejection under 35 U.S.C. 103(a) 
based upon a U.S. patent or U.S. patent application 
publication which qualifies as prior art only under 35 
U.S.C. 102(e), and the examiner withdraws the rejection 
under 35 U.S.C. 103(a), the examiner may need 
to issue an Office action containing a new double patenting 
rejection based upon the disqualified patent or 
patent application publication. In these situations, 
such Office action can be made final, provided that 
the examiner introduces no other new ground of rejection 
that was not necessitated by either amendment or 
an information disclosure statement filed during the 
time period set forth in 37 CFR 1.97(c) with the fee 
set forth in 37 CFR 1.17(p). The Office action is properly 
made final because the new double patenting 
rejection was necessitated by amendment of the application 
by applicant. This is the case regardless of 
whether the claims themselves have been amended.

In addition to amending the specification to disclose 
the names of the parties to the joint research 
agreement, applicant must submit the required statement 
to invoke the prior art disqualification under the 
CREATE Act. 37 CFR 1.104(c)(4) sets forth the 
requirement for the statement, which includes a statement 
to the effect that the prior art and the claimed 
invention were made by or on the behalf of parties to 
a joint research agreement, within the meaning of 35 
U.S.C. 103(c)(3), which was in effect on or before the 
date the claimed invention was made, and that the 
claimed invention was made as a result of activities 
undertaken within the scope of the joint research 
agreement. The statement should either be on or begin 
on a separate sheet and must not be directed to other 
matters (37 CFR 1.4(c)). The statement must be 
signed in accordance with 37 CFR 1.33(b).

If the applicant disqualifies the subject matter relied 
upon by the examiner in accordance with 35 U.S.C. 
103(c) as amended by the CREATE Act and the procedures 
set forth in the rules, the examiner will treat 
the application under examination and the 35 U.S.C. 
102(e), (f), or (g) prior art as if they are commonly 
owned for purposes of 35 U.S.C. 103(a).

The following examples are provided for illustration 
only:
<div style="margin-left: 2em;">
'''Example 1'''

Company A and University B have a joint research 
agreement (JRA) in place prior to the date invention 
X’ was made. Professor BB from University 
B communicates invention X to Company A. On 
November 12, 2004, University B filed a patent 
application on invention X. On December 13, 
2004, Company A filed a patent application disclosing 
and claiming invention X’, which is 
an 
obvious variant of invention X. Invention X’ 
was made as a result of the activities undertaken 
within the scope of the JRA. University B retains 
ownership of invention X and Company A retains 
ownership of invention X’, without any obligation 
to assign the inventions to a common owner. Company 
A could invoke the joint research agreement 
provisions of 35 U.S.C. 103(c) to disqualify University 
B’s application as prior art in a rejection 
under 35 U.S.C. 103(a).


'''Example 2'''

Professor BB from University B communicates 
invention X to Company A. On November 12, 
2004, University B filed a patent application on 
invention X. On December 13, 2004, Company A 
filed a patent application disclosing and claiming 
invention X’, which is an obvious variant of invention 
X. Company A and University B have a joint 
research agreement (JRA), which goes into effect 
on December 20, 2004. University B retains ownership 
of invention X and Company A retains 
ownership of invention X’, without any obligation 
to assign the inventions to a common owner. Company 
A could not invoke the joint research agreement 
provisions of 35 U.S.C. 103(c) to disqualify 
University B’s application as prior art in a rejection 
under 35 U.S.C. 103(a) because the JRA was 
not in effect until after the later invention was 
made.

'''Example 3'''

Company A and University B have a joint research 
agreement (JRA) in place prior to the date invention 
X’ was made but the JRA is limited to activities 
for invention Y, which is distinct from 
invention X. Professor BB from University B 
communicates invention X to Company A. On 
November 12, 2004, University B filed a patent 
application on invention X. On December 13, 
2004, Company A filed a patent application disclosing 
and claiming invention X’, which is an 
obvious variant of invention X. University B 
retains ownership of invention X and Company A 
retains ownership of invention X’, without any 
obligation to assign the inventions to a common 
owner. Company A could not invoke the joint 
research agreement provisions of 35 U.S.C. 103(c) 
to disqualify University B’s application as prior art 
in a rejection under 35 U.S.C. 103(a) because the 
claimed invention was not made as a result of the 
activities undertaken within the scope of the JRA.
</div>

=====706.02(l)(3)Examination Procedure With Respect to 35 U.S.C. 103(c)=====

Applications and patents will be considered to be 
owned by, or subject to an obligation of assignment 
to, the same person, at the time the invention was 
made, if the applicant(s) or an attorney or agent of 
record makes a statement to the effect that the application 
and the reference were, at the time the invention 
was made, owned by, or subject to an obligation of 
assignment to, the same person(s) or organization(s). 
In order to overcome a rejection under 35 U.S.C. 
103(a) based upon a reference which qualifies as prior 
art under only one or more of 35 U.S.C. 102(e), (f), or 
(g), via the CREATE Act, the applicant must comply 
with the statute and the rules of practice in effect.

See MPEP § 706.02(l)(2) for additional information 
pertaining to establishing common ownership.

======I. DOUBLE PATENTING REJECTIONS======

* Commonly owned applications of different inventive entities may be rejected on the ground of double patenting, even if the later filed application claims 35 U.S.C. 120 benefit to the earlier pplication.

* For purposes of double patenting analysis, the application or patent and the subject matter disqualified under 35 U.S.C. 103(c) as amended by the CREATE Act will be treated as if commonly owned.

A rejection based on a pending application would 
be a provisional rejection. The practice of rejecting 
claims on the ground of double patenting in commonly 
owned applications of different inventive entities 
is in accordance with existing case law and 
prevents an organization from obtaining two or more 
patents with different expiration dates covering nearly 
identical subject matter. See [[MPEP 804]] for guidance 
on double patenting issues. In accordance with 
established patent law doctrines, double patenting 
rejections can be overcome in 
certain circumstances 
by disclaiming, pursuant to the existing provisions of 
37 CFR 1.321, the terminal portion of the term of the 
later patent and including in the disclaimer a provision 
that the patent shall be enforceable only for and 
during the period the patent is commonly owned with 
the application or patent which formed the basis 
for the rejection, thereby eliminating the problem 
of extending patent life. For a double patenting 
rejection based on a non-commonly owned patent 
(treated as if commonly owned pursuant to the CREATE 
Act), the double patenting rejection may be obviated 
by filing a terminal disclaimer in accordance 
with 37 CFR 1.321(d). See MPEP § 804 and 
§ 804.02.

====706.02(n)Biotechnology Process Applications; 35 U.S.C. 103(b)====

{{Statute|35 U.S.C. 103. Conditions for patentability; non-obvious subject matter.}}
{{Ellipsis}}
(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 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.

(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).
{{Ellipsis}}
|}

35 U.S.C. 103(b) is applicable to biotechnological 
processes only. 35 U.S.C. 103(b) precludes a rejection 
of process claims which involve the use or making of 
certain nonobvious biotechnological compositions of 
matter under 35 U.S.C. 103(a).

35 U.S.C. 103(b) 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 35 U.S.C. 103(b); and

(E)a timely election be made to proceed under 
the provisions of 35 U.S.C. 103(b).

An election to proceed under 35 U.S.C. 103(b)
shall be made by way of petition under 37 CFR 1.182. 
The petition must establish that all the requirements 
set forth in 35 
U.S.C. 103(b) 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 35 U.S.C. 
102 or 103.

In an application where at least one composition of 
matter claim has not been rejected under 35 U.S.C. 
102 or 103, a 35 U.S.C. 103(b) 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 35 
U.S.C. 103(b) 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 35 
U.S.C. 103(b) without an 
election having been made as a result of error without 
deceptive intent, patentees may file a reissue application 
to permit consideration of process claims which 
qualify for 35 U.S.C. 103(b) treatment.

===706.03 Rejections Not Based on Prior Art===

The primary object of the examination of an application 
is to determine whether or not the claims are 
patentable over the prior art. This consideration 
should not be relegated to a secondary position while 
undue emphasis is given to nonprior art or “technical” 
rejections. Effort in examining should be concentrated 
on truly essential matters, minimizing or eliminating 
effort on technical rejections which are not really critical. 
Where a major technical rejection is proper (e.g., 
lack of proper disclosure, undue breadth, utility, etc.) 
such rejection should be stated with a full development 
of the reasons rather than by a mere conclusion 
coupled with some stereotyped expression.

Rejections based on nonstatutory subject matter 
are 
explained in MPEP § 706.03(a), § 2105, § 2106 - 
§
 
2106.02, and § 2107 - § 2107.02. Rejections 
based 
on subject matter barred by the Atomic 
Energy 
Act are explained in MPEP § 706.03(b). Rejections 
based on duplicate claims are addressed 
in 
MPEP §
 
706.03(k), and double patenting rejections 
are addressed in MPEP § 804. See MPEP § 706.03(o)
for 
rejections based on new matter. Foreign 
filing 
without a license is discussed in MPEP 
§
 
706.03(s). Disclaimer, after interference or 
public 
use proceeding, res judicata, and reissue are 
explained in MPEP §
 
706.03(u) to § 706.03(x). Rejections 
based on 35 
U.S.C. 112 are discussed in MPEP 
§
 
2161 - §
 
2174. IF THE LANGUAGE IN THE 
FORM PARAGRAPHS IS INCORPORATED IN 
THE OFFICE ACTION TO STATE THE REJECTION, 
THERE WILL BE LESS CHANCE OF A 
MISUNDERSTANDING AS TO THE GROUNDS 
OF REJECTION.




 

706.03(a)Rejections Under 35 U.S.C. 101[R-5]

I.SUBJECT MATTER ELIGIBILITY

Patents are not granted for all new and useful 
inventions and discoveries. The subject matter of the 
invention or discovery must come within the boundaries 
set forth by 35 
U.S.C. 101, which permits patents 
to be granted only for “any new and useful 
process, machine, manufacture, or composition of 
matter, or any new and useful improvement thereof.”

The term “process” as defined in 35 U.S.C. 100, 
means process, art or method, and includes a new use 
of a known process, machine, manufacture, composition 
of matter, or material.

See MPEP § 2105 for patent eligibility of living 
subject matter and MPEP § 2106 for guidelines 
pertaining to subject matter eligibility in general.

Decisions have determined the limits of the statutory 
classes. Examples of subject matter not patentable 
under the statute follow: 

A.Printed Matter

For example, a mere arrangement of printed matter, 
though seemingly a “manufacture,” is rejected as not 
being within the statutory classes. See In re Miller,
418 F.2d 1392, 164 USPQ 46 (CCPA 1969); Ex parte 
Gwinn, 112 USPQ 439 (Bd. App. 1955); and In re 
Jones, 373 F.2d 1007, 153 USPQ 77 (CCPA 1967). 

B.Naturally Occurring Article

Similarly, a thing occurring in nature, which is substantially 
unaltered, is not a “manufacture.” A shrimp 
with the head and digestive tract removed is an example. 
Ex parte Grayson, 51 USPQ 413 (Bd. App. 
1941). 

C.Scientific Principle

A scientific principle, divorced from any tangible 
structure, can be rejected as not within the statutory 
classes. O'Reilly v. Morse, 56 U.S. (15 How.) 
62 
(1854).

This subject matter is further limited by the Atomic 
Energy Act explained in MPEP § 706.03(b). 

II.UTILITY

A rejection on the ground of lack of utility 
includes 
the more specific grounds of inoperativeness, 
involving perpetual motion. A rejection under 35 
U.S.C. 101 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. See MPEP § 
2107 for guidelines governing rejections for lack of 
utility. See MPEP § 2107.01 - § 2107.03 for legal precedent 
governing the utility requirement.

Use Form Paragraphs 7.04 through 7.05.03 to reject 
under 35 U.S.C. 101.

¶ 7.04 Statement of Statutory Basis, 35 U.S.C. 101

35 U.S.C. 101 reads as follows:

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.

Examiner Note:

This paragraph must precede the first use of 35 U.S.C. 101 in 
all first actions on the merits and final rejections.

¶ 7.05 Rejection, 35 U.S.C. 101, -Heading Only- (Utility, 
Non-Statutory, Inoperative)

Claim [1] rejected under 35 U.S.C. 101 because 

Examiner Note:

1.This form paragraph must be followed by any one of form 
paragraphs 7.05.01- 7.05.03 or another appropriate reason.

2.Explain the rejection following the recitation of the statute 
and the use of form paragraphs 7.05.01-7.05.03 or other reason.

3.See MPEP §§ 706.03(a) and 2105- 2107.03 for other situations.


4.This form paragraph must be preceded by form paragraph 
7.04 in first actions and final rejections.




 



¶ 7.05.01 Rejection, 35 U.S.C. 101, Non-Statutory

the claimed invention is directed to non-statutory subject matter 
because [1]

Examiner Note:

In bracket 1, explain why the claimed invention is not patent 
eligible subject matter, e.g.,

(a)why the claimed invention does not fall within at least one of 
the four categories of patent eligible subject matter recited in 35 
U.S.C. 101 (process, machine, manufacture, or composition of 
matter); or 

(b) why the claimed invention is directed to a judicial exception 
to 35 U.S.C. 101 (i.e., an abstract idea, natural phenomenon, or 
law of nature) and is not directed to a practical application of such 
judicial exception (e.g., because the claim does not require any 
physical transformation and the invention as claimed does not 
produce a useful, concrete, and tangible result); or 

(c)why the claimed invention would impermissibly cover every 
substantial practical application of, and thereby preempt all use of, 
an abstract idea, natural phenomenon, or law of nature.

¶ 7.05.02 Rejection, 35 U.S.C. 101, Utility Lacking

the claimed invention lacks patentable utility. [1]

Examiner Note:

In bracket 1, provide explanation of lack of utility. See MPEP 
§§ 706.03(a) and 2105 - 2107.03.



¶ 7.05.03 Rejection, 35 U.S.C. 101, Inoperative

the disclosed invention is inoperative and therefore lacks utility. 
[1]

Examiner Note:

In bracket 1, explain why invention is inoperative.

¶ 7.05.04 Utility Rejections Under 35 U.S.C. 101 and 35 
U.S.C. 112, First Paragraph

Claim [1] rejected under 35 U.S.C. 101 because the claimed 
invention is not supported by either a [2] asserted utility or a well 
established utility.

[3]

Claim [4] also rejected under 35 U.S.C. 112, first paragraph. 
Specifically, since the claimed invention is not supported by either 
a [5] asserted utility or a well established utility for the reasons set 
forth above, one skilled in the art clearly would not know how to 
use the claimed invention.

Examiner Note:

1.Where the specification would not enable one skilled in the 
art to make the claimed invention, or where alternative reasons 
support the enablement rejection, a separate rejection under 35 
U.S.C. 112, first paragraph, enablement should be made using the 
factors set forth in In re Wands, 858 F.2d 731, 8 USPQ2d 1400 
(Fed. Cir. 1988) and an undue experimentation analysis. See 
MPEP §§ 2164- 2164.08(c).

2.Use Format A, B, or C below as appropriate.

Format A:

(a) Insert the same claim numbers in brackets 1 and 4.

(b) Insert --specific and substantial-- in inserts 2 and 5.

(c) In bracket 3, insert the explanation as to why the claimed 
invention is not supported by either a specific and substantial 
asserted utility or a well established utility. 

(d) Format A is to be used when there is no asserted utility and 
when there is an asserted utility but that utility is not specific and 
substantial.

Format B:

(a) Insert the same claim numbers in brackets 1 and 4.

(b) Insert --credible-- in inserts 2 and 5.

(c) In bracket 3, insert the explanation as to why the claimed 
invention is not supported by either a credible asserted utility or a 
well established utility. 

Format C:

For claims that have multiple utilities, some of which are not specific 
and substantial, some of which are not credible, but none of 
which are specific, substantial and credible:

(a)Insert the same claim numbers in brackets 1 and 4.

(b)Insert --specific and substantial asserted utility, a credible-- 
in inserts 2 and 5.

(c)In bracket 3, insert the explanation as to why the claimed 
invention is not supported by either a specific and substantial 
asserted utility, a credible asserted utility or a well established utility. 
Each utility should be addressed.

706.03(b)Barred by Atomic Energy Act[R-2]

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), 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), 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.

706.03(c)Rejections Under 35 U.S.C. 112,
First Paragraph [R-2]

Rejections based on the first paragraph of 
35 
U.S.C. 112 are discussed in MPEP § 2161 - 
§
 
2165.04. For a discussion of the utility requirements 
of 35 U.S.C. 112, first paragraph, and 35 U.S.C. 101, 
see MPEP §
 
2107 - § 2107.03. The appropriate form 
paragraphs 7.30.01 and 7.31.01 through 7.33.01should be used in making rejections under 35 U.S.C. 
112, first paragraph.

¶ 7.30.01 Statement of Statutory Basis, 35 U.S.C. 112, First 
Paragraph

The following is a quotation of the first paragraph of 35 U.S.C. 
112:

The specification shall contain a written description of the 
invention, and of the manner and process of making and 
using it, in such full, clear, concise, and exact terms as to 
enable any person skilled in the art to which it pertains, or 
with which it is most nearly connected, to make and use the 
same and shall set forth the best mode contemplated by the 
inventor of carrying out his invention.

Examiner Note:

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

2.Form paragraphs 7.30.01 and 7.30.02 are to be used ONLY 
ONCE in a given Office action.



¶ 7.31.01 Rejection, 35 U.S.C. 112, 1st Paragraph, 
Description Requirement, Including New Matter Situations

Claim [1] rejected under 35 U.S.C. 112, first paragraph, as failing 
to comply with the written description requirement. The 
claim(s) contains subject matter which was not described in the 
specification in such a way as to reasonably convey to one skilled 
in the relevant art that the inventor(s), at the time the application 
was filed, had possession of the claimed invention. [2]

Examiner Note:

1.This rejection must be preceded by form paragraph 7.30.01or 7.103.

2.In bracket 2, identify (by suitable reference to page and line 
numbers and/or drawing figures) the subject matter not properly 
described in the application as filed, and provide an explanation of 
your position. The explanation should include any questions the 
examiner asked which were not satisfactorily resolved and consequently 
raise doubt as to possession of the claimed invention at 
the time of filing.



Form paragraph 7.31.02 should be used when it is 
the examiner’s position that nothing within the scope 
of the claims is enabled. In such a rejection, the examiner 
should explain all the reasons why nothing within 
the scope of the claim is enabled. To make sure all relevant 
issues are raised, this should include any issues 
regarding the breadth of the claims relative to the 
guidance in the disclosure. 



¶ 7.31.02 Rejection, 35 U.S.C. 112, 1st Paragraph, 
Enablement 

Claim [1] rejected under 35 U.S.C. 112, first paragraph, as failing 
to comply with the enablement requirement. The claim(s) 
contains subject matter which was not described in the specification 
in such a way as to enable one skilled in the art to which it 
pertains, or with which it is most nearly connected, to make and/or 
use the invention. [2]

Examiner Note:

1.This rejection must be preceded by form paragraph 7.30.01or 7.103.

2.If the problem is one of scope, form paragraph 7.31.03should be used.

3.In bracket 2, identify the claimed subject matter for which 
the specification is not enabling. Also explain why the specification 
is not enabling, applying the factors set forth in In re Wands, 
858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1998) as 
appropriate. See also MPEP § 2164.01(a) and § 2164.04. The 
explanation should include any questions the examiner may have 
asked which were not satisfactorily resolved and consequently 
raise doubt as to enablement.




 

4.Where an essential component or step of the invention is not 
recited in the claims, use form paragraph 7.33.01.



Form paragraph 7.31.03 should be used when it is 
the examiner’s position that something within the 
scope of the claims is enabled but the claims are not 
limited to that scope.

¶ 7.31.03 Rejection, 35 U.S.C. 112, 1st Paragraph: Scope 
of Enablement

Claim [1] rejected under 35 U.S.C. 112, first paragraph, 
because the specification, while being enabling for [2], does not 
reasonably provide enablement for [3]. The specification does not 
enable any person skilled in the art to which it pertains, or with 
which it is most nearly connected, to [4] the invention commensurate 
in scope with these claims. [5]

Examiner Note:

1.This rejection must be preceded by form paragraph 7.30.01or 7.103.

2.This form paragraph is to be used when the scope of the 
claims is not commensurate with the scope of the enabling disclosure.


3.In bracket 2, identify the claimed subject matter for which 
the specification is enabling. This may be by reference to specific 
portions of the specification.

4.In bracket 3, identify aspect(s) of the claim(s) for which the 
specification is not enabling.

5.In bracket 4, fill in only the appropriate portion of the statute, 
i.e., one of the following: --make--, --use--, or --make and use--.

6.In bracket 5, identify the claimed subject matter for which 
the specification is not enabling. Also explain why the specification 
is not enabling, applying the factors set forth in In re Wands, 
858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1998) as 
appropriate. See also MPEP § 2164.01(a) and § 2164.04. The 
explanation should include any questions posed by the examiner 
which were not satisfactorily resolved and consequently raise 
doubt as to enablement.

¶ 7.31.04 Rejection, 35 U.S.C. 112, 1st Paragraph: Best 
Mode Requirement

Claim [1] rejected under 35 U.S.C. 112, first paragraph, 
because the best mode contemplated by the inventor has not been 
disclosed. Evidence of concealment of the best mode is based 
upon [2]. 

Examiner Note:

1.This rejection must be preceded by form paragraph 7.30.01or 7.103.

2.In bracket 2, insert the basis for holding that the best mode 
has been concealed, e.g., the quality of applicant's disclosure is so 
poor as to effectively result in concealment.

3.Use of this form paragraph should be rare. See MPEP §§ 
2165- 2165.04.

Form paragraph 7.33.01 should be used when it is 
the examiner’s position that a feature considered critical 
or essential by applicant to the practice of the 
claimed invention is missing from the claim.

¶ 7.33.01 Rejection, 35 U.S.C. 112, 1st Paragraph, 
Essential Subject Matter Missing From Claims 
(Enablement)

Claim [1] rejected under 35 U.S.C. 112, first paragraph, as 
based on a disclosure which is not enabling. [2] critical or essential 
to the practice of the invention, but not included in the 
claim(s) is not enabled by the disclosure. See In re Mayhew, 527 
F.2d 1229, 188 USPQ 356 (CCPA 1976). [3]

Examiner Note:

1.This rejection must be preceded by form paragraph 7.30.01or 7.103.

2.In bracket 2, recite the subject matter omitted from the 
claims.

3.In bracket 3, give the rationale for considering the omitted 
subject matter critical or essential.

4.The examiner shall cite the statement, argument, date, drawing, 
or other evidence which demonstrates that a particular feature 
was considered essential by the applicant, is not reflected in the 
claims which are rejected.

706.03(d)Rejections Under 35 U.S.C. 112,
Second Paragraph [R-3]

Rejections under 35 U.S.C. 112, second paragraph, 
are discussed in MPEP § 2171 - § 2174. Form paragraphs 
7.30.02 and 7.34 through 7.35.01 should be 
used to reject under 35 U.S.C. 112, second paragraph.

¶ 7.30.02 Statement of Statutory Basis, 35 U.S.C. 112, 
Second Paragraph

The following is a quotation of the second paragraph of 35 
U.S.C. 112:

The specification shall conclude with one or more claims 
particularly pointing out and distinctly claiming the subject 
matter which the applicant regards as his invention.

Examiner Note:

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

2.Paragraphs 7.30.01 and 7.30.02 are to be used ONLY ONCE 
in a given Office action.

¶ 7.34 Rejection, 35 U.S.C. 112, 2nd Paragraph, Failure 
To Claim Applicant’s Invention 

Claim [1] rejected under 35 U.S.C. 112, second paragraph, as 
failing to set forth the subject matter which applicant(s) regard as 
their invention. Evidence that claim [2] fail(s) to correspond in 




 

scope with that which applicant(s) regard as the invention can be 
found in the reply filed [3]. In that paper, applicant has stated [4], 
and this statement indicates that the invention is different from 
what is defined in the claim(s) because [5].

Examiner Note:

1.This rejection must be preceded by form paragraph 7.30.02or 7.103.

2.This paragraph is to be used only where applicant has stated, 
somewhere other than in the application, as filed, that the invention 
is something different from what is defined in the claim(s). 

3.In bracket 3, identify the submission by applicant (which is 
not the application, as filed, but may be in the remarks by applicant, 
in the brief, in an affidavit, etc.) by the date the paper was 
filed in the USPTO.

4.In bracket 4, set forth what applicant has stated in the submission 
to indicate a different invention.

5.In bracket 5, explain how the statement indicates an invention 
other than what is being claimed.



¶ 7.34.01 Rejection, 35 U.S.C. 112, 2nd Paragraph, 
Failure To Particularly Point out and Distinctly Claim 
(Indefinite) 

Claim [1] rejected under 35 U.S.C. 112, second paragraph, as 
being indefinite for failing to particularly point out and distinctly 
claim the subject matter which applicant regards as the invention.

Examiner Note:

1.This rejection must be preceded by form paragraph 7.30.02or 7.103. 

2.This form paragraph should be followed by one or more of 
the following form paragraphs 7.34.02 - 7.34.11, as applicable. If 
none of these form paragraphs are appropriate, a full explanation 
of the deficiency of the claims should be supplied. Whenever possible, 
identify the particular term(s) or limitation(s) which render 
the claim(s) indefinite and state why such term or limitation renders 
the claim indefinite. If the scope of the claimed subject matter 
can be determined by one having ordinary skill in the art, a 
rejection using this form paragraph would not be appropriate. See 
MPEP §§ 2171 - 2174 for guidance. See also form paragraph 
7.34.15 for pro se applicants.



¶ 7.34.02 Terminology Used Inconsistent with Accepted 
Meaning 

Where applicant acts as his or her own lexicographer to specifically 
define a term of a claim contrary to its ordinary meaning, 
the written description must clearly redefine the claim term and 
set forth the uncommon definition so as to put one reasonably 
skilled in the art on notice that the applicant intended to so redefine 
that claim term. Process Control Corp. v. HydReclaim Corp., 
190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). 
The term “[1]” in claim [2] is used by the claim to mean “[3]”, 
while the accepted meaning is “[4].” The term is indefinite 
because the specification does not clearly redefine the term.

Examiner Note:

1.In bracket 3, point out the meaning that is assigned to the 
term by applicant’s claims, taking into account the entire disclosure.


2.In bracket 4, point out the accepted meaning of the term. 
Support for the examiner’s stated accepted meaning should be 
provided through the citation of an appropriate reference source, 
e.g., textbook or dictionary. See MPEP § 2173.05(a).

3.This paragraph must be preceded by form paragraph 7.34.01.

4.This paragraph should only be used where the specification 
does not clearly redefine the claim term at issue.

¶ 7.34.03 Relative Term - Term of Degree Rendering Claim 
Indefinite 

The term “[1]” in claim [2] is a relative term which renders the 
claim indefinite. The term “[1]” is not defined by the claim, the 
specification does not provide a standard for ascertaining the requisite 
degree, and one of ordinary skill in the art would not be reasonably 
apprised of the scope of the invention. [3]

Examiner Note:

1.In bracket 3, explain which parameter, quantity, or other limitation 
in the claim has been rendered indefinite by the use of the 
term appearing in bracket 1.

2.This form paragraph must be preceded by form paragraph 
7.34.01.



¶ 7.34.04 Broader Range/Limitation And Narrow Range/
Limitation in Same Claim

A broad range or limitation together with a narrow range or 
limitation that falls within the broad range or limitation (in the 
same claim) is considered indefinite, since the resulting claim 
does not clearly set forth the metes and bounds of the patent protection 
desired. See MPEP § 2173.05(c). Note the explanation 
given by the Board of Patent Appeals and Interferences in Ex 
parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), 
as to where broad language is followed by “such as” and then narrow 
language. The Board stated that this can render a claim indefinite 
by raising a question or doubt as to whether the feature 
introduced by such language is (a) merely exemplary of the 
remainder of the claim, and therefore not required, or (b) a 
required feature of the claims. Note also, for example, the decisions 
of Ex parte Steigewald, 131 USPQ 74 (Bd. App. 1961); Ex 
parte Hall, 83 USPQ 38 (Bd.App. 1948); and Ex parte Hasche, 86 
USPQ 481 (Bd. App. 1949). In the present instance, claim [1]
recites the broad recitation [2], and the claim also recites [3]
which is the narrower statement of the range/limitation.

Examiner Note:

1.In bracket 2, insert the broader range/limitation and where it 
appears in the claim; in bracket 3, insert the narrow range/limitation 
and where it appears. This form paragraph may be modified 
to fit other instances of indefiniteness in the claims.

2.This form paragraph must be preceded by form paragraph 
7.34.01.






 

¶ 7.34.05 Lack of Antecedent Basis in the Claims

Claim [1] recites the limitation [2] in [3]. There is insufficient 
antecedent basis for this limitation in the claim.

Examiner Note:

1.In bracket 2, insert the limitation which lacks antecedent 
basis, for example --said lever-- or --the lever--. 

2.In bracket 3, identify where in the claim(s) the limitation 
appears, for example, --line 3--, --the 3rd paragraph of the claim--, 
--the last 2 lines of the claim--, etc.

3.This form paragraph should ONLY be used in aggravated situations 
where the lack of antecedent basis makes the scope of the 
claim indeterminate. It must be preceded by form paragraph 
7.34.01.

¶ 7.34.06 Use Claims

Claim [1] provides for the use of [2], but, since the claim does 
not set forth any steps involved in the method/process, it is 
unclear what method/process applicant is intending to encompass. 
A claim is indefinite where it merely recites a use without any 
active, positive steps delimiting how this use is actually practiced. 
Claim [3] is rejected under 35 U.S.C. 101 because the claimed 
recitation of a use, without setting forth any steps involved in the 
process, results in an improper definition of a process, i.e., results 
in a claim which is not a proper process claim under 35 U.S.C. 
101. See for example Ex parte Dunki, 153 USPQ 678 (Bd. App. 
1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 
149 USPQ 475 (D.D.C. 1966).

Examiner Note:

1.In bracket 2, insert what is being used. For example, insert --
the monoclonal antibodies of claim 4--, where the claim recites “a 
method for using monoclonal antibodies of claim 4 to purify interferon.”


2.See MPEP § 2173.05(q). 

3.This form paragraph must be preceded by form paragraph 
7.34.01.

¶ 7.34.07 Claims Are a Literal Translation

The claims are generally narrative and indefinite, failing to 
conform with current U.S. practice. They appear to be a literal 
translation into English from a foreign document and are replete 
with grammatical and idiomatic errors.

Examiner Note:

This form paragraph must be preceded by form paragraph 
7.34.01.

¶ 7.34.08 Indefinite Claim Language: “For Example”

Regarding claim [1], the phrase “for example” renders the 
claim indefinite because it is unclear whether the limitation(s) following 
the phrase are part of the claimed invention. See MPEP § 
2173.05(d).

Examiner Note:

This form paragraph must be preceded by form paragraph 
7.34.01.

¶ 7.34.09 Indefinite Claim Language: “Or The Like”

Regarding claim [1], the phrase “or the like” renders the 
claim(s) indefinite because the claim(s) include(s) elements not 
actually disclosed (those encompassed by “or the like”), thereby 
rendering the scope of the claim(s) unascertainable. See MPEP § 
2173.05(d).

Examiner Note:

This form paragraph must be preceded by form paragraph 
7.34.01.

¶ 7.34.10 Indefinite Claim Language: “Such As”

Regarding claim [1], the phrase “such as” renders the claim 
indefinite because it is unclear whether the limitations following 
the phrase are part of the claimed invention. See MPEP § 
2173.05(d).

Examiner Note:

This form paragraph must be preceded by form paragraph 
7.34.01.

¶ 7.34.11 Modifier of “Means” Lacks Function

Regarding claim [1], the word “means” is preceded by the 
word(s) “[2]” in an attempt to use a “means” clause to recite a 
claim element as a means for performing a specified function. 
However, since no function is specified by the word(s) preceding 
“means,” it is impossible to determine the equivalents of the element, 
as required by 35 U.S.C. 112, sixth paragraph. See Ex parte 
Klumb, 159 USPQ 694 (Bd. App. 1967).

Examiner Note:

1.It is necessary for the words which precede “means” to convey 
a function to be performed. For example, the phrase “latch 
means” is definite because the word “latch” conveys the function 
“latching.” In general, if the phrase can be restated as “means for 
________,” and it still makes sense, it is definite. In the above 
example, “latch means” can be restated as “means for latching.” 
This is clearly definite. However, if “conduit means” is restated 
as “means for conduiting,” the phrase makes no sense because 
the word “conduit” has no functional connotation, and the phrase 
is indefinite.

2.This form paragraph must be preceded by form paragraph 
7.34.01.

¶ 7.34.12 Essential Steps Omitted

Claim [1] rejected under 35 U.S.C. 112, second paragraph, as 
being incomplete for omitting essential steps, such omission 
amounting to a gap between the steps. See MPEP § 2172.01. 
The omitted steps are: [2]

Examiner Note:

1.This rejection must be preceded by form paragraph 7.30.02or 7.103.

2.In bracket 2, recite the steps omitted from the claims.

3.Give the rationale for considering the omitted steps critical or 
essential.




 

¶ 7.34.13 Essential Elements Omitted

Claim [1] rejected under 35 U.S.C. 112, second paragraph, as 
being incomplete for omitting essential elements, such omission 
amounting to a gap between the elements. See MPEP § 2172.01. 
The omitted elements are: [2]

Examiner Note:

1.This rejection must be preceded by form paragraph 7.30.02or 7.103.

2.In bracket 2, recite the elements omitted from the claims.

3.Give the rationale for considering the omitted elements critical 
or essential.

¶ 7.34.14 Essential Cooperative Relationships Omitted

Claim [1] rejected under 35 U.S.C. 112, second paragraph, as 
being incomplete for omitting essential structural cooperative 
relationships of elements, such omission amounting to a gap 
between the necessary structural connections. See MPEP § 
2172.01. The omitted structural cooperative relationships are: [2]

Examiner Note:

1.This rejection must be preceded by form paragraph 7.30.02or 7.103.

2.In bracket 2, recite the structural cooperative relationships of 
elements omitted from the claims.

3.Give the rationale for considering the omitted structural 
cooperative relationships of elements being critical or essential.

¶ 7.34.15 Rejection Under 35 U.S.C. 112, Pro Se

Claim [1] rejected as failing to define the invention in the manner 
required by 35 U.S.C.
 
112, second paragraph.

The claim(s) are narrative in form and replete with indefinite 
and functional or operational language. The structure which goes 
to make up the device must be clearly and positively specified. 
The structure must be organized and correlated in such a manner 
as to present a complete operative device. The claim(s) must be in 
one sentence form only. Note the format of the claims in the 
patent(s) cited.

¶ 7.35 Rejection, 35 U.S.C. 112, 2nd Paragraph, Failure 
To Particularly Point Out And Distinctly Claim - Omnibus 
Claim

Claim [1] rejected under 35 U.S.C. 112, second paragraph, as 
being indefinite in that it fails to point out what is included or 
excluded by the claim language. This claim is an omnibus type 
claim.

Examiner Note:

1.This rejection must be preceded by form paragraph 7.30.02or 7.103.

2.Use this paragraph to reject an “omnibus” type claim. No 
further explanation is necessary.

3.See MPEP § 1302.04(b) for cancellation of such a claim by 
examiner's amendment upon allowance.

4.An example of an omnibus claim is: “A device substantially 
as shown and described.”

¶ 7.35.01 Trademark or Trade Name as a Limitation in the 
Claim

Claim [1] contains the trademark/trade name [2]. Where a 
trademark or trade name is used in a claim as a limitation to identify 
or describe a particular material or product, the claim does not 
comply with the requirements of 35 U.S.C. 112, second paragraph. 
See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). 
The claim scope is uncertain since the trademark or trade name 
cannot be used properly to identify any particular material or 
product. A trademark or trade name is used to identify a source of 
goods, and not the goods themselves. Thus, a trademark or trade 
name does not identify or describe the goods associated with the 
trademark or trade name. In the present case, the trademark/trade 
name is used to identify/describe [3] and, accordingly, the identification/
description is indefinite.

Examiner Note:

1.In bracket 2, insert the trademark/trade name and where it is 
used in the claim.

2.In bracket 3, specify the material or product which is identified 
or described in the claim by the trademark/trade name.

706.03(k)Duplicate Claims 

Inasmuch as a patent is supposed to be limited to 
only one invention or, at most, several closely related 
indivisible inventions, limiting an application to a single 
claim, or a single claim to each of the related 
inventions might appear to be logical as well as convenient. 
However, court decisions have confirmed 
applicant’s right to restate (i.e., by plural claiming) the 
invention in a reasonable number of ways. Indeed, a 
mere difference in scope between claims has been 
held to be enough.

Nevertheless, when two claims in an application 
are duplicates, or else are so close in content that they 
both cover the same thing, despite a slight difference 
in wording, it is proper after allowing one claim to 
object to the other claim under 37 CFR 1.75 as being a 
substantial duplicate of the allowed claim.

Form paragraphs 7.05.05 and 7.05.06 may be used 
where duplicate claims are present in an application.

¶ 7.05.05 Duplicate Claims, Warning

Applicant is advised that should claim [1] be found allowable, 
claim [2] will be objected to under 37 CFR 1.75 as being a substantial 
duplicate thereof. When two claims in an application are 
duplicates or else are so close in content that they both cover the 
same thing, despite a slight difference in wording, it is proper after 
allowing one claim to object to the other 
as being a substantial 
duplicate of the allowed claim. See MPEP §
 
706.03(k).




 

Examiner Note:

1.Use this form paragraph whenever two claims are found to 
be substantial duplicates, but they are not allowable. This will 
give the applicant an opportunity to correct the problem and avoid 
a later objection.

2.If the claims are allowable, use form paragraph 7.05.06.

¶ 7.05.06 Duplicate Claims, Objection

Claim [1] objected under 37 CFR 1.75 as being a substantial 
duplicate of claim [2]. When two claims in an application are 
duplicates or else are so close in content that they both cover the 
same thing, despite a slight difference in wording, it is proper after 
allowing one claim to object to the other as being a substantial 
duplicate of the allowed claim. See MPEP §
 
706.03(k).

Examiner Note:

If the duplicate claims are not allowable, use form paragraph 
7.05.05.

See MPEP § 804 for double patenting rejections of 
inventions not patentable over each other.

706.03(m)Nonelected Inventions 

See MPEP § 821 to § 821.03 for treatment of 
claims held to be drawn to nonelected inventions.

706.03(o)New Matter [R-3]

35 U.S.C. 132. Notice of rejection; reexamination.

(a)Whenever, on examination, any claim for a patent is 
rejected, or any objection or requirement made, the Director shall 
notify the applicant thereof, stating the reasons for such rejection, 
or objection or requirement, together with such information and 
references as may be useful in judging of the propriety of continuing 
the prosecution of his application; and if after receiving such 
notice, the applicant persists in his claim for a patent, with or 
without amendment, the application shall be reexamined. No 
amendment shall introduce new matter into the disclosure of the 
invention.



In amended cases, subject matter not disclosed in 
the original application is sometimes added and a 
claim directed thereto. Such a claim is rejected on the 
ground that it recites elements without support in the 
original disclosure under 35 U.S.C. 112, first paragraph, 
Waldemar Link, GmbH & Co. v. Osteonics 
Corp. 32 F.3d 556, 559, 31 
USPQ2d 1855, 1857 
(Fed. Cir. 1994); In re Rasmussen, 650 F.2d 1212, 211 
USPQ 323 (CCPA 1981). See MPEP § 2163.06 - 
§
 
2163.07(b) for a discussion of the relationship of 
new matter to 35 U.S.C. 112, first paragraph. New 
matter includes not only the addition of wholly unsupported 
subject matter, but may also include adding 
specific percentages or compounds after a broader 
original disclosure, or even the omission of a step 
from a method. See MPEP § 608.04 to § 608.04(c). 
See In re Wertheim, 541 F.2d 257, 191 USPQ 90 
(CCPA 1976) and MPEP §
 
2163.05 for guidance in 
determining whether the addition of specific percentages 
or compounds after a broader original disclosure 
constitutes new matter.

In the examination of an application following 
amendment thereof, the examiner must be on the alert 
to detect new matter. 35 U.S.C. 132 (a) should be 
employed as a basis for objection to amendments to 
the abstract, specification, or drawings attempting to 
add new disclosure to that originally disclosed on filing.


If subject matter capable of illustration is originally 
claimed and it is not shown in the drawing, the claim 
is not rejected but applicant is required to add it to the 
drawing. See MPEP § 608.01(l).

If new matter is added to the specification, it should 
be objected to by using Form Paragraph 7.28.



¶ 7.28 Objection to New Matter Added to Specification

The amendment filed [1] is objected to under 35 U.S.C. 132(a) 
because it introduces new matter into the disclosure. 35 U.S.C. 
132(a) states that no amendment shall introduce new matter into 
the disclosure of the invention. The added material which is not 
supported by the original disclosure is as follows: [2].

Applicant is required to cancel the new matter in the reply to 
this Office action.

Examiner Note:

1.This form paragraph is not to be used in reissue applications; 
use form paragraph 14.22.01 instead.

2.In bracket 2, identify the new matter by page and the line 
numbers and/or drawing figures and provide an appropriate explanation 
of your position. This explanation should address any statement 
by applicant to support the position that the subject matter is 
described in the specification as filed. It should further include 
any unresolved questions which raise a doubt as to the possession 
of the claimed invention at the time of filing.

3.If new matter is added to the claims, or affects the claims, a 
rejection under 35 U.S.C. 112, first paragraph, using form paragraph 
7.31.01 should also be made. If new matter is added only to 
a claim, an objection using this paragraph should not be made, but 
the claim should be rejected using form paragraph 7.31.01. As to 
any other appropriate prior art or 35 U.S.C. 112 rejection, the new 
matter must be considered as part of the claimed subject matter 
and cannot be ignored.






 

706.03(s)Foreign Filing Without License

35 U.S.C. 182. Abandonment of invention for unauthorized 
disclosure.

The invention disclosed in an application for patent subject to 
an order made pursuant to section 181 of this title may be held 
abandoned upon its being established by the Commissioner 
of 
Patents that in violation of said order the invention has been 
published or disclosed or that an application for a patent therefor 
has been filed in a foreign country by the inventor, his successors, 
assigns, or legal representatives, or anyone in privity with him or 
them, without the consent of the Commissioner of Patents. The 
abandonment shall be held to have occurred as of the time of violation. 
The consent of the Commissioner of Patents shall not be 
given without the concurrence of the heads of the departments and 
the chief officers of the agencies who caused the order to be 
issued. A holding of abandonment shall constitute forfeiture by 
the applicant, his successors, assigns, or legal representatives, or 
anyone in privity with him or them, of all claims against the 
United States based upon such invention.

35 U.S.C. 184. Filing of application in foreign country. 

Except when authorized by a license obtained from the Commissioner 
of Patents a person shall not file or cause or authorize to 
be filed in any foreign country prior to six months after filing in 
the United States an application for patent or for the registration of 
a utility model, industrial design, or model in respect of an invention 
made in this country. A license shall not be granted with 
respect to an invention subject to an order issued by the Commissioner 
of Patents pursuant to section 181 of this title without the 
concurrence of the head of the departments and the chief officers 
of the agencies who caused the order to be issued. The license 
may be granted retroactively where an application has been filed 
abroad through error and without deceptive intent and the application 
does not disclose an invention within the scope of section 181of this title.

The term “application” when used in this chapter includes 
applications and any modifications, amendments, or supplements 
thereto, or divisions thereof.

The scope of a license shall permit subsequent modifications, 
amendments, and supplements containing additional subject matter 
if the application upon which the request for the license is 
based is not, or was not, required to be made available for inspection 
under section 181 of this title and if such modifications, 
amendments, and supplements do not change the general nature of 
the invention in a manner which would require such application to 
be made available for inspection under such section 181. In any 
case in which a license is not, or was not, required in order to file 
an application in any foreign country, such subsequent modifications, 
amendments, and supplements may be made, without a 
license, to the application filed in the foreign country if the United 
States application was not required to be made available for 
inspection under section 181 and if such modifications, amendments, 
and supplements do not, or did not, change the general 
nature of the invention in a manner which would require the 
United States application to have been made available for inspection 
under such section 181.

35 U.S.C. 185. Patent barred for filing without license. 

Notwithstanding any other provisions of law any person, and 
his successors, assigns, or legal representatives, shall not receive a 
United States patent for an invention if that person, or his successors, 
assigns, or legal representatives shall, without procuring the 
license prescribed in section 184 of this title, have made, or consented 
to or assisted another’s making, application in a foreign 
country for a patent or for the registration of a utility model, 
industrial design, or model in respect of the invention. A United 
States patent issued to such person, his successors, assigns, or 
legal representatives shall be invalid, unless the failure to procure 
such license was through error and without deceptive intent, and 
the patent does not disclose subject matter within the scope of section 
181 of this title.

If, upon examining an application, the examiner 
learns of the existence of a corresponding foreign 
application which appears to have been filed before 
the United States application had been on file for 6 
months, and if the invention apparently was made in 
this country, he or she shall refer the application to 
Licensing and Review Section of Technology Center 
(TC) working group 3640, calling attention to the foreign 
application. Pending investigation of the possible 
violation, the application may be returned to the TC 
for prosecution on the merits. When it is otherwise in 
condition for allowance, the application will be again 
submitted to Licensing and Review Section of TC 
work group 3640 unless the latter has already reported 
that the foreign filing involves no bar to the United 
States application.

If it should be necessary to take action under 
35 
U.S.C. 185, Licensing and Review Section of TC 
work group 3640 will request transfer of the application 
to it.

706.03(u)Disclaimer [R-3]

Claims may be rejected on the ground that applicant 
has disclaimed the subject matter involved. Such 
disclaimer may arise, for example, from the applicant’s 
failure to:

(A)make claims suggested for interference with 
another application under 37 CFR 41.202(c) (See 
MPEP Chapter 2300),

(B)copy a claim from a patent when suggested 
by the examiner (MPEP Chapter 2300), or

(C)respond or appeal, within the time limit fixed, 
to the examiner’s rejection of claims copied from a 
patent (see MPEP Chapter 2300).




 

The rejection on disclaimer applies to all claims not 
patentably distinct from the disclaimed subject matter 
as well as to the claims directly involved.

Rejections based on disclaimer should be made by 
using one of Form Paragraphs 7.48 and 7.49.



¶ 7.48 Failure To Present Claims for Interference

Claim [1] rejected under 35 U.S.C. [2] based upon claim [3] of 
Patent No. [4]. 

Failure to present claims and/or take necessary steps for interference 
purposes after notification that interfering subject matter 
is claimed constitutes a disclaimer of the subject matter. This 
amounts to a concession that, as a matter of law, the patentee is the 
first inventor in this country. See In re Oguie, 517 F.2d 1382, 186 
USPQ 227 (CCPA 1975).

Examiner Note:

1.This form paragraph should be used only after applicant has 
been notified that interference proceedings must be instituted 
before the claims can be allowed and applicant has refused to 
copy the claims.

2.In bracket 2, insert --102(g)-- or --102(g)/103(a)--.

3.In bracket 4, insert the patent number, and --in view of 
_____-- if another reference is also relied upon. When the rejection 
is under 35 U.S.C. 103(a), the examiner’s basis for a finding 
of obviousness should be included. Note that interferences may 
include obvious variants, see MPEP Chapter 2300.

¶ 7.49 Rejection, Disclaimer, Failure To Appeal

An adverse judgment against claim [1] has been entered by the 
Board. Claim [2] stand(s) finally disposed of for failure to reply 
to or appeal from the examiner’s rejection of such claim(s) presented 
for interference within the time for appeal or civil action 
specified in 37 CFR 1.304. Adverse judgment against a claim is a 
final action of the Office requiring no further action by the Office 
to dispose of the claim permanently. See 37 CFR 41.127(a)(2).



706.03(v)After Interference or PublicUse Proceeding

For rejections following an interference, see MPEP 
Chapter 2300.

The outcome of public use proceedings may also be 
the basis of a rejection. See 37 CFR 1.292 and In re 
Kaslow, 707 F.2d 1366, 217 USPQ 1089 (Fed. Cir. 
1983).

Upon termination of a public use proceeding 
including a case also involved in an interference, in 
order for a prompt resumption of the interference proceedings, 
a notice should be sent to the Board of 
Patent Appeals and Interferences notifying them of 
the disposition of the public use proceeding.

706.03(w)Res Judicata

Res judicata may constitute a proper ground for 
rejection. However, as noted below, the Court of Customs 
and Patent Appeals has materially restricted the 
use of res judicata rejections. It should be applied 
only when the earlier decision was a decision of the 
Board of Appeals or any one of the reviewing courts 
and when there is no opportunity for further court 
review of the earlier decision.

The timely filing of a second application copending 
with an earlier application does not preclude the use 
of res judicata as a ground of rejection for the second 
application claims.

When making a rejection on res judicata, action 
should ordinarily be made also on the basis of prior 
art, especially in continuing applications. In most situations 
the same prior art which was relied upon in the 
earlier decision would again be applicable.

In the following cases a rejection of a claim on the 
ground of res judicata was sustained where it was 
based on a prior adjudication, against the inventor on 
the same claim, a patentably nondistinct claim, or a 
claim involving the same issue.

In re Freeman, 30 F.3d 1459, 31 USPQ 2d 1444 
(Fed. Cir. 1994).

Edgerton v. Kingland, 168 F. 2d 121, 75 USPQ 307 
(D.C. Cir. 1947).

In re Szwarc, 319 F.2d 277, 138 USPQ 208 (CCPA 
1963).

In re Katz, 467 F.2d 939, 167 USPQ 487 (CCPA 
1970) (prior decision by District Court).

In the following cases for various reasons, res judicata 
rejections were reversed.

In re Fried, 312 F.2d 930, 136 USPQ 429 (CCPA 
1963) (differences in claims).

In re Szwarc, 319 F.2d 277, 138 USPQ 208 (CCPA 
1963) (differences in claim).

In re Hellbaum, 371 F.2d 1022, 152 USPQ 571 
(CCPA 1967) (differences in claims).

In re Herr, 377 F.2d 610, 153 USPQ 548 (CCPA 
1967) (same claims, new evidence, prior decision by 
CCPA).

In re Kaghan, 387 F.2d 398, 156 USPQ 130 (CCPA 
1967) (prior decision by Board of Appeals, final 
rejection on prior art withdrawn by examiner “to simplify 
the issue,” differences in claims; holding of 
waiver based on language in MPEP at the time).




 

In re Craig, 411 F.2d 1333, 162 USPQ 157 (CCPA 
1969) (Board of Appeals held second set of claims 
patentable over prior art).

In re Fisher, 427 F.2d 833, 166 USPQ 18 (CCPA 
1970) (difference in claims).

In re Russell, 439 F.2d 1228, 169 USPQ 426 
(CCPA 1971) (new evidence, rejection on prior art 
reversed by court).

In re Ackermann, 444 F.2d 1172, 170 USPQ 340 
(CCPA 1971) (prior decision by Board of Appeals, 
new evidence, rejection on prior art reversed by 
court).

Plastic Contact Lens Co. v. Gottschalk, 484 F.2d 
837, 179 USPQ 262 (D.C. Cir. 1973) (follows In re 
Kaghan).

706.03(x)Reissue [R-3]

The examination of reissue applications is covered 
in MPEP Chapter 1400.

35 U.S.C. 251 forbids the granting of a reissue 
“enlarging the scope of the claims of the original 
patent” unless the reissue is applied for within 2 years 
from the grant of the original patent. This is an absolute 
bar and cannot be excused. This prohibition has 
been interpreted to apply to any claim which is 
broader in any respect than the claims of the original 
patent. Such claims may be rejected as being barred 
by 35 U.S.C. 251. However, when the reissue is 
applied for within 2 years or properly claims the 
benefit of a broadening reissue application filed 
within 2 years of the patent grant, the examiner does 
not go into the question of undue delay.

The same section permits the filing of a reissue 
application by the assignee of the entire interest only 
in cases where it does not “enlarge the scope of the 
claims of the original patent.” Such claims which do 
enlarge the scope may also be rejected as barred by 
the statute. In In re Bennett, 766 F.2d 524, 226 USPQ 
413 (Fed. Cir. 1985), however, the court permitted the 
erroneous filing by the assignee in such a case to be 
corrected.

A defective reissue oath affords a ground for rejecting 
all the claims in the reissue application. See 
MPEP § 1444.

Note that a reissue application is “special” and 
remains so even if applicant does not make a prompt 
reply.

706.04Rejection of Previously AllowedClaims [R-1]

A claim noted as allowable shall thereafter be 
rejected only after the proposed rejection has been 
submitted to the primary examiner for consideration 
of all the facts and approval of the proposed action.

Great care should be exercised in authorizing such 
a rejection. See Ex parte Grier, 1923 C.D. 27, 
309 
O.G. 223 (Comm’r Pat. 1923); Ex parte Hay, 
1909 C.D. 18, 139 O.G. 197 (Comm’r Pat. 1909).

PREVIOUS ACTION BY DIFFERENT EXAMINER


Full faith and credit should be given to the search 
and action of a previous examiner unless there is a 
clear error in the previous action or knowledge of 
other prior art. In general, an examiner should not 
take an entirely new approach or attempt to reorient 
the point of view of a previous examiner, or make a 
new search in the mere hope of finding something. 
Amgen, Inc. v. Hoechst Marion Roussel, Inc., 126 F. 
Supp. 2d 69, 139, 57 USPQ2d 1449, 1499-50 (D. 
Mass. 2001).

Because it is unusual to reject a previously allowed 
claim, the examiner should point out in his or her 
office action that the claim now being rejected was 
previously allowed by using Form Paragraph 7.50.

¶ 7.50 Claims Previously Allowed, Now Rejected, New Art

The indicated allowability of claim [1] is withdrawn in view of 
the newly discovered reference(s) to [2]. Rejection(s) based on 
the newly cited reference(s) follow.

Examiner Note:

1.In bracket 2, insert the name(s) of the newly discovered reference.


2.Any action including this form paragraph requires the signature 
of a Primary Examiner. MPEP § 1004.

706.05Rejection After Allowance ofApplication

See MPEP § 1308.01 for a rejection based on a reference 
after allowance. 

706.06Rejection of Claims Copied 
From Patent [R-3]

See MPEP Chapter 2300.

===706.07 Final Rejection===

{{Statute|37 CFR 1.113. Final rejection or action.}}

(a) On the second or any subsequent examination or consideration 
by the examiner the rejection or other action may be made 
final, whereupon applicant’s, or for ex parte reexaminations filed 
under § 1.510, patent owner’s reply is limited to appeal in the case 
of rejection of any claim (§ 41.31 of this title), or to amendment as 
specified in § 1.114 or § 1.116. Petition may be taken to the Director 
in the case of objections or requirements not involved in the 
rejection of any claim (§ 1.181). Reply to a final rejection or 
action must comply with § 1.114 or paragraph (c) of this section. 
For final actions in an inter partes reexamination filed under § 
1.913, see § 1.953.

(b)In making such final rejection, the examiner shall repeat 
or state all grounds of rejection then considered applicable to the 
claims in the application, clearly stating the reasons in support 
thereof.

(c)Reply to a final rejection or action must include cancellation 
of, or appeal from the rejection of, each rejected claim. If any 
claim stands allowed, the reply to a final rejection or action must 
comply with any requirements or objections as to form.
|}

STATEMENT OF GROUNDS

In making the final rejection, all outstanding 
grounds of rejection of record should be carefully 
reviewed, and any such grounds relied on in the final 
rejection should be reiterated. They must also be 
clearly developed to such an extent that applicant may 
readily judge the advisability of an appeal unless a 
single previous Office action contains a complete 
statement supporting the rejection.

====706.07(a) Final Rejection, When Proper on Second Action====

A second or any subsequent action on the merits shall be final, except where the 
examiner introduces a new ground of rejection that is 
neither necessitated by applicant’s amendment of the 
claims nor based on information submitted in an 
information disclosure statement filed during the 
period set forth in 37 CFR 1.97(c) with the fee set 
forth in 37 CFR 1.17(p).

Where information is submitted 
in an information disclosure statement during 
the period set forth in 37 CFR 1.97(c) with a fee, the 
examiner may use the information submitted, e.g., a 
printed publication or evidence of public use, and 
make the next Office action final whether or not the 
claims have been amended, provided that no other 
new ground of rejection which was not necessitated 
by amendment to the claims is introduced by the 
examiner. See MPEP § 609.04(b). Furthermore, a second 
or any subsequent action on the merits in any 
application or patent undergoing reexamination proceedings 
will not be made final if it includes a rejection, 
on newly cited art, other than information 
submitted in an information disclosure statement filed 
under 37 CFR 1.97(c) with the fee set forth in 37 CFR 
1.17(p), of any claim not amended by applicant or 
patent owner in spite of the fact that other claims may 
have been amended to require newly cited art. Where 
information is submitted in a reply to a requirement 
under 37 
CFR 
1.105, the examiner may NOT make 
the next Office action relying on that art final unless 
all instances of the application of such art are necessitated 
by amendment.

A second or any subsequent action on the merits in 
any application or patent involved in reexamination 
proceedings should not be made final if it includes a 
rejection, on prior art not of record, of any claim 
amended to include limitations which should reasonably 
have been expected to be claimed. See MPEP 
§ 904 et seq. For example, one would reasonably 
expect that a rejection under 35 U.S.C. 112 for the 
reason of incompleteness would be replied to by an 
amendment supplying the omitted element.

A second or any subsequent action on the merits in 
any application or patent involved in reexamination 
proceedings may not be made final if it contains a 
new ground of rejection necessitated by the amendments 
to 35 U.S.C. 102(e) by the Intellectual Property 
and High Technology Technical Amendments Act of 
2002 (Pub. L. 107-273, 116 Stat. 1758 (2002)), unless 
the new ground of rejection was necessitated by an 
amendment to the claims or as a result of information 
submitted in an information disclosure statement 
under 37 CFR 1.97(c) with the fee set forth in 37 CFR 
1.17(p).

When applying any 35 U.S.C. 102(e)/103 references 
against the claims of an application  the 
examiner should anticipate that a statement averring 
common 
ownership at the time the invention was 
made 
may disqualify any patent or application applied 
in a 
rejection under 35 
U.S.C. 103 based on 35 U.S.C. 
102(e). If such a statement is filed in reply to the 
35 
U.S.C. 102(e)/103 rejection and the claims are not 
amended, the examiner may not make the next Office 
action final if a new rejection is made. See MPEP §
706.02(l)(3). If a reference is disqualified under the 
joint research agreement provision of 35 U.S.C. 
103(c) and a new subsequent double patenting rejection 
based upon the disqualified reference is applied, 
the next Office action, which contains the new double 
patenting rejection, may be made final even if applicant 
did not amend the claims (provided that the 
examiner introduces no other new ground of rejection 
that was not necessitated by either amendment or an 
information disclosure statement filed during the time 
period set forth in 37 CFR 1.97(c) with the fee set 
forth in 37 CFR 1.17(p)). The Office action is properly 
made final because the new double patenting 
rejection was necessitated by amendment of the application 
by applicant.

See MPEP § 809.02(a) for actions which indicate 
generic claims as not allowable.

In the consideration of claims in an amended case 
where no attempt is made to point out the patentable 
novelty, the examiner should be on guard not to allow 
such claims. See MPEP § 714.04. The claims may be 
finally rejected if, in the opinion of the examiner, they 
are clearly open to rejection on grounds of record.

====706.07(b) Final Rejection, When Properon First Action====

The claims of a new application may be finally 
rejected in the first Office action in those situations 
where (A) the new application is a continuing application 
of, or a substitute for, an earlier application, and 
(B) all claims of the new application (1) are drawn to 
the same invention claimed in the earlier application, 
and (2) would have been properly finally rejected on 
the grounds and art of record in the next Office action 
if they had been entered in the earlier application.

A first Office action in a continuing or substitute 
application may not be made final if it contains a new 
ground of rejection necessitated by the amendments 
to 35 U.S.C. 102(e) by the Intellectual Property and 
High Technology Technical Amendments of 2002 
(Pub. L. 107-273, 116 Stat. 1758 (2002)).

However, it would not be proper to make final a 
first Office action in a continuing or substitute application 
where that application contains material which 
was presented in the earlier application after final 
rejection or closing of prosecution but was denied 
entry because (A) new issues were raised that required 
further consideration and/or search, or (B) the issue of 
new matter was raised.

Further, it would not be proper to make final a first 
Office action in a continuation-in-part application 
where any claim includes subject matter not present in 
the earlier application.

A request for an interview prior to first action on a 
continuing or substitute application should ordinarily 
be granted.

====706.07(c) Final Rejection, Premature====

Any question as to prematureness of a final rejection 
should be raised, if at all, while the application is 
still pending before the primary examiner. This is 
purely a question of practice, wholly distinct from the 
tenability of the rejection. It may therefore not be 
advanced as a ground for appeal, or made the basis of 
complaint before the Board of Patent Appeals and 
Interferences. It is reviewable by petition under 
37 
CFR 1.181. See MPEP § 1002.02(c).

====706.07(d) Final Rejection, Withdrawal of, Premature====

If, on request by applicant for reconsideration, the 
primary examiner finds the final rejection to have 
been premature, he or she should withdraw the finality 
of the rejection. The finality of the Office action 
must be withdrawn while the application is still pending. 
The examiner cannot withdraw the final 
rejection once the application is abandoned.

====706.07(e) Withdrawal of Final Rejection, General====

See MPEP § 714.12 and § 714.13 for amendments 
after final rejection.

Once a final rejection that is not premature has been 
entered in an application/reexamination proceeding, it 
should not be withdrawn at the applicant’s or patent 
owner’s request except on a showing under 37 CFR 
1.116(b). Further amendment or argument will be 
considered in certain instances. An amendment that 
will place the application either in condition for 
allowance or in better form for appeal may be admitted. 
Also, amendments complying with objections or 
requirements as to form are to be permitted after final 
action in accordance with 37 CFR 1.116(a).

The examiner may withdraw the rejection of finally 
rejected claims. If new facts or reasons are presented 
such as to convince the examiner that the previously 
rejected claims are in fact allowable or patentable in 
the case of reexamination, then the final rejection 
should be withdrawn. Occasionally, the finality of a 
rejection may be withdrawn in order to apply a new 
ground of rejection.

Although it is permissible to withdraw a final rejection 
for the purpose of entering a new ground of rejection, 
this practice is to be limited to situations where a 
new reference either fully meets at least one claim or 
meets it except for differences which are shown to be 
completely obvious. Normally, the previous rejection 
should be withdrawn with respect to the claim or 
claims involved.

The practice should not be used for application of 
subsidiary references, or of cumulative references, or 
of references which are merely considered to be better 
than those of record.

When a final rejection is withdrawn, all amendments 
filed after the final rejection are ordinarily 
entered.

New grounds of rejection made in an Office action 
reopening prosecution after the filing of an appeal 
brief require the approval of the supervisory patent 
examiner. See MPEP § 1002.02(d).

====706.07(f) Time for Reply to Final Rejection====

The time for reply to a final rejection is as follows:

(A)All final rejections setting a 3-month shortened 
statutory period (SSP) for reply should contain 
one of form paragraphs 7.39, 7.40, 7.40.01, 
7.40.02, 7.41, 7.41.03, 7.42.03, 7.42.031, or 
7.42.09 advising applicant that if the reply is filed 
within 2 months of the date of the final Office action, 
the shortened statutory period will expire at 3 months 
from the date of the final rejection or on the date the 
advisory action is mailed, whichever is later. Thus, a 
variable reply period will be established. If the last 
day of “2 months of the date of the final Office 
action” falls on Saturday, Sunday, or a Federal holiday 
within the District of Columbia, and a reply is filed on 
the next succeeding day which is not a Saturday, Sunday, 
or a Federal holiday, pursuant to 37 CFR 1.7(a), 
the reply is deemed to have been filed within the 2 
months period and the shortened statutory period will 
expire at 3 months from the date of the final rejection 
or on the mailing date of the advisory action, whichever 
is later (see MPEP §710.05). In no event can the 
statutory period for reply expire later than 6 months 
from the mailing date of the final rejection.

(B)This procedure of setting a variable reply 
period in the final rejection dependent on when applicant 
files a first reply to a final Office action does not 
apply to situations where a SSP less than 3 months is 
set, e.g., reissue litigation applications (1-month SSP) 
or any reexamination proceeding.

I.ADVISORY ACTIONS

(C)Where the final Office action sets a variable 
reply period as set forth in paragraph (A) above AND 
applicant files a complete first reply to the final Office 
action within 2 months of the date of the final Office 
action, the examiner must determine if the reply:

(1)places the application in condition for 
allowance — then the application should be processed 
as an allowance and no extension fees are due;

(2)places the application in condition for 
allowance except for matters of form which the examiner 
can change without authorization from applicant, 
MPEP § 1302.04 — then the application should be 
amended as required and processed as an allowance 
and no extension fees are due; or

(3)does not place the application in condition 
for allowance — then the advisory action should 
inform applicant that the SSP for reply expires 
3 months from the date of the final rejection or as of 
the mailing date of the advisory action, whichever is 
later, by checking box 1.b) at the top portion of the 
Advisory Action form, PTOL-303.

(D) Where the final Office action sets a variable 
reply period as set forth in paragraph (A) above, and 
applicant does NOT file a complete first reply to the 
final Office action within 2 months, examiners should 
check box 1.a) at the top portion of the Advisory 
Action form, PTOL-303.

(E)When box 1.b) at the top portion of the Advisory 
Action form, PTOL-303 is checked, the time for 
applicant to take further action (including the calculation 
of extension fees under 37 CFR 1.136(a)) begins 
to run 3 months from the date of the final rejection, or 
from the date of the advisory action, whichever is 
later. Extension fees cannot be prorated for portions of 
a month. In no event can the statutory period for reply 
expire later than 6 months from the date of the final 
rejection. For example, if applicant initially replies 
within 2 months from the date of mailing of a final 
rejection and the examiner mails an advisory action 
before the end of 3 months from the date of mailing of 
the final rejection, the shortened statutory period will 
expire at the end of 3 months from the date of mailing 
of the final rejection. In such case, if a petition for 
extension of time is granted, the due date for a reply is 
computed from the date stamped or printed on the 
Office action with the final rejection. See MPEP 
§ 710.01(a). If the examiner, however, does not mail 
an advisory action until after the end of the 3-month 
period, the shortened statutory period will expire on 
the date the examiner mails the advisory action and 
any extension of time fee would be calculated from 
the mailing date of the advisory action.

II.EXAMINER’S AMENDMENTS

(F)Where a complete first reply to a final Office 
action has been filed within 2 months of the final 
Office action, an examiner’s amendment to place the 
application in condition for allowance may be made 
without the payment of extension fees even if the 
examiner’s amendment is made more than 3 months 
from the date of the final Office action. Note that an 
examiner’s amendment may not be made more than 6 
months from the date of the final Office action, as the 
application would be abandoned at that point by operation 
of law.

(G)Where a complete first reply to a final Office 
action has not been filed within 2 months of the final 
Office action, applicant’s authorization to make an 
amendment to place the application in condition for 
allowance must be made either within the 3 month 
shortened statutory period or within an extended 
period for reply that has been petitioned and paid for 
by applicant pursuant to 37 CFR 1.136(a). However, 
an examiner’s amendment correcting only formal 
matters which are identified for the first time after a 
reply is made to a final Office action would not 
require any extension fee, since the reply to the final 
Office action put the application in condition for 
allowance except for the correction of formal matters, 
the correction of which had not yet been required by 
the examiner.

(H)An extension of time under 37 CFR 1.136(a)
requires a petition for an extension and the appropriate 
fee provided for in 37 CFR 1.17. Where an extension 
of time is necessary to place an application in 
condition for allowance (e.g., when an examiner’s 
amendment is necessary after the shortened statutory 
period for reply has expired), applicant may file the 
required petition and fee or give authorization to the 
examiner to make the petition of record and charge a 
specified fee to a deposit account. Office employees 
may not accept oral (telephonic) instructions to complete 
the Credit Card Payment Form or otherwise 
charge a patent process fee (as opposed to information 
product or service fees) to a credit card. When authorization 
to make a petition for an extension of time of 
record is given to the examiner, the authorization must 
be given before the extended period expires. The 
authorization must be made of record in an examiner’s 
amendment by indicating the name of the person 
making the authorization, when the authorization 
was given, the deposit account number to be charged, 
the length of the extension requested and the amount 
of the fee to be charged to the deposit account.

III.PRACTICE AFTER FINAL

(I)Replies after final should be processed and 
considered promptly by all Office personnel.

(J)Replies after final should not be considered 
by the examiner unless they are filed within the SSP 
or are accompanied by a petition for an extension of 
time and the appropriate fee (37 CFR 1.17 and 
37 
CFR 1.136(a)). See also MPEP § 710.02(e). This 
requirement also applies to supplemental replies filed 
after the first reply.

(K)Interviews may be conducted after the expiration 
of the shortened statutory period for reply to a 
final Office action but within the 6-month statutory 
period for reply without the payment of an extension 
fee.

(L)Formal matters which are identified for the 
first time after a reply is made to a final Office action 
and which require action by applicant to correct may 
be required in an Ex parte Quayle action if the application 
is otherwise in condition for allowance. No 
extension fees would be required since the reply puts 
the application in condition for allowance except for 
the correction of formal matters — the correction of 
which had not yet been required by the examiner.

(M) If prosecution is to be reopened after a final 
Office action has been replied to, the finality of the 
previous Office action should be withdrawn to avoid 
the issue of abandonment and the payment of extension 
fees. For example, if a new reference comes to 
the attention of the examiner which renders unpatentable 
a claim indicated to be allowable, the Office 
action should begin with a statement to the effect: 
“The finality of the Office action mailed is hereby 
withdrawn in view of the new ground of rejection set 
forth below.” Form paragraph 7.42 could be used in 
addition to this statement. See MPEP § 706.07(d).

====706.07(g) Transitional After-Final Practice====

{{Statute|37 CFR 1.129. Transitional procedures for limited examination after final rejection and restriction practice.}}

(a)An applicant in an application, other than for reissue or a 
design patent, that has been pending for at least two years as of 
June 8, 1995, taking into account any reference made in such 
application to any earlier filed application under 35 U.S.C. 120, 
121 and 365(c), is entitled to have a first submission entered and 
considered on the merits after final rejection under the following 
circumstances: The Office will consider such a submission, if the 
first submission and the fee set forth in § 1.17(r) are filed prior to 
the filing of an appeal brief and prior to abandonment of the application. 
The finality of the final rejection is automatically withdrawn 
upon the timely filing of the submission and payment of the 
fee set forth in § 1.17(r). If a subsequent final rejection is made in 
the application, applicant is entitled to have a second submission 
entered and considered on the merits after the subsequent final 
rejection under the following circumstances: The Office will consider 
such a submission, if the second submission and a second 
fee set forth in § 1.17(r) are filed prior to the filing of an appeal 
brief and prior to abandonment of the application. The finality of 
the subsequent final rejection is automatically withdrawn upon the 
timely filing of the submission and payment of the second fee set 
forth in § 1.17(r). Any submission filed after a final rejection 
made in an application subsequent to the fee set forth in § 1.17(r) 
having been twice paid will be treated as set forth in § 1.116. A 
submission as used in this paragraph includes, but is not limited 
to, an information disclosure statement, an amendment to the written 
description, claims or drawings and a new substantive argument 
or new evidence in support of patentability.
{{Ellipsis}}
(c)The provisions of this section shall not be applicable to 
any application filed after June 8, 1995.
|}

In order to facilitate the completion of prosecution 
of applications pending in the USPTO as of June 8, 
1995 and to ease the transition between a 17-year 
patent term and a 20-year patent term, Public Law 
103-465 provided for the further limited reexamination 
of an application pending for 2 
years or longer as 
of June 8, 1995, taking into account any reference 
made in the application to any earlier filed application 
under 35 U.S.C. 120, 121, or 365(c). The further limited 
reexamination permits applicants to present for 
consideration, as a matter of right upon payment of a 
fee, a submission after a final rejection has been 
issued on an application. An applicant will be able to 
take advantage of this provision on two separate occasions 
provided the submission and fee are presented 
prior to the filing of the Appeal Brief and prior to 
abandonment of the application. This will have the 
effect of enabling an applicant to essentially remove 
the finality of the prior Office action in the pending 
application on two separate occasions by paying a fee 
for each occasion, and 
avoid the impact of refiling the 
application to obtain consideration of additional 
claims and/or information relative to the claimed subject 
matter. The transitional after-final practice is only 
available to applications filed on or before June 8, 
1995 and it is not available for reissue or design applications 
or reexamination proceedings.

Effective June 8, 1995, in any pending application 
having an actual or effective filing date of June 8, 
1993 or earlier, applicant is entitled, under 37 CFR 
1.129(a), to have a first submission after final rejection 
entered and considered on the merits, if the submission 
and the fee set forth in 37 
CFR 1.17(r) are 
filed prior to the filing of an Appeal Brief under 
37 
CFR 41.37 and prior to abandonment. For an 
application entering national stage under 35 U.S.C. 
371 or an application filed under 35 U.S.C. 111(a)
claiming benefit under 35 U.S.C. 120 of a PCT application 
designating the U.S., the PCT international filing 
date will be used to determine whether the 
application has been pending for at least 2 years as of 
June 8, 1995.

The submission under 37 CFR 1.129(a) may comprise, 
but is not limited to, an information disclosure 
statement (IDS), an amendment to the written description, 
claims or drawings, a new substantive argument 
and/or new evidence. No amendment considered as a 
result of payment of the fee set forth in 37 CFR 
1.17(r) may introduce new matter into the disclosure 
of the application 35 U.S.C. 132. In view of the fee set 
forth in 37 CFR 1.17(r), any (IDS) previously refused 
consideration in the application because of applicant’s 
failure to comply with 37 CFR 1.97(c) or (d) will be 
treated as though it has been filed within one of the 
time periods set forth in 37 CFR 1.97(b) and will be 
considered without the petition and petition fee 
required in 37 CFR 1.97(d), if it complies with the 
requirements of 37 CFR 1.98. Any IDS submitted 
under 37 CFR 1.129(a) on or after June 8, 2005 without 
a statement specified in 37 CFR 1.97(e) will be 
treated as though it had been filed within the time 
period set forth in 37 CFR 1.97(c) with the fee set 
forth in 37 CFR 1.17(p). The examiner may introduce 
a new ground of rejection based on the information 
submitted in the IDS and make the next Office action 
final provided that the examiner introduces no other 
new ground of rejection, which has not been necessitated 
by amendment to the claims. See MPEP § 
706.07(a).

If the application qualifies under 37 CFR 1.129(a), 
that is, it was filed on or before June 8, 1995 and the 
application has an effective U.S. filing date of June 8, 
1993 or earlier, the examiner must check to see if the 
submission and 37 
CFR 1.17(r) fee were filed prior to 
the filing of the Appeal Brief and prior to abandonment 
of the application. If an amendment was timely 
filed in reply to the final rejection but the fee set forth 
in 37 CFR 1.17(r) did not accompany the amendment, 
examiners will continue to consider these amendments 
in an expedited manner as set forth in MPEP 
§ 714.13 and issue an advisory action notifying applicant 
whether the amendment has been entered. If the 
examiner indicated in an advisory action that the 
amendment has not been entered, applicant may then 
pay the fee set forth in 37 CFR 1.17(r) and any necessary 
fee to avoid abandonment of the application and 
obtain entry and consideration of the amendment as a 
submission under 37 
CFR 1.129(a). If the submission 
and the fee set forth in 37 CFR 1.17(r) were timely 
filed in reply to the final rejection and no advisory 
action has been issued prior to the payment of the fee 
set forth in 37 CFR 1.17(r), no advisory action will be 
necessary. The examiner will notify applicant that the 
finality of the previous office action has been withdrawn 
pursuant to 37 CFR 1.129(a). It is noted that if 
the submission is accompanied by a “conditional” 
payment of the fee set forth in 37 CFR 1.17(r), i.e., an 
authorization to charge the fee set forth in 37 CFR 
1.17(r) to a deposit account or to a credit card in the 
event that the submission would not otherwise be 
entered, the Office will treat the conditional payment 
as an unconditional payment of the 37 CFR 1.17(r)
fee.

The finality of the final rejection is automatically 
withdrawn upon the timely filing of the submission 
and payment of the fee set forth in 37 CFR 1.17(r). 
Upon the timely payment of the fee set forth in 
37 
CFR 1.17(r), all previously unentered submissions, 
and submissions filed with the 37 
CFR 1.17(r) fee 
will be entered in the order in which they were filed 
absent specific instructions for entry. Any conflicting 
amendments should be clarified for entry by the applicant 
upon payment of the 37 CFR 1.17(r) fee.

If a Notice of Appeal and the appeal fee set forth in 
37 
CFR 1.17(b) were filed prior to or with the payment 
of the fee set forth 37 CFR 1.17(r), the payment 
of the fee set forth in 37 CFR 1.17(r) by applicant is 
construed as a request to dismiss the appeal and to 
continue prosecution under 37 CFR 1.129(a).

Upon the timely payment of the fee set forth in 
37 
CFR 1.17(r), if the examiner determines that the 
submission is not fully responsive to the previous 
Office action, e.g., if the submission only includes an 
information disclosure statement, applicant will be 
given a new shortened statutory period of 1 month or 
30 days, whichever is longer, to submit a complete 
reply.

I.SUBMISSIONS UNDER 37 CFR 1.129(a) 
FILED PRIOR TO JUNE 8, 2005

After submission and payment of the fee set forth in 
37 
CFR 1.17(r), the next Office action on the merits 
may be made final only under the conditions for making 
a first action in a continuing application final set 
forth in MPEP § 706.07(b). 

If a subsequent final rejection is made in the application, 
applicant would be entitled to have a second 
submission entered and considered on the merits 
under the same conditions set forth for consideration 
of the first submission.

Any submission filed after a final rejection made in 
the application subsequent to the fee set forth in 
37 
CFR 1.17(r) having been twice paid will be treated 
in accordance with the current after-final practice set 
forth in 37 CFR 1.116. 

II.SUBMISSIONS UNDER 37 CFR 1.129(a) 
FILED ON OR AFTER JUNE 8, 2005

For timely submission and payment of the fee set 
forth in 37 CFR 1.17(r) on or after June 8, 2005, the 
next Office action on the merits will be equivalent to 
the next Office action following a reply to a non-final 
Office action. Under existing second Office action 
final practice, such an Office action on the merits will 
be made final, except where the examiner introduces a 
new ground of rejection that is neither necessitated by 
applicant’s amendment of the claims nor based on 
information submitted in an IDS filed during the 
period set forth in 37 CFR 1.97(c) with the fee set 
forth in 37 CFR 1.17(p). See MPEP § 706.07(a).

An applicant whose application is eligible for the 
transitional further limited examination procedure set 
forth in 37 CFR 1.129(a) is entitled to consideration 
of two after final submissions. Thus, if such an applicant 
has filed one submission under 37 CFR 1.129(a) 
and the application is again under a final rejection, the 
applicant is entitled to only one additional submission 
under 37 CFR 1.129(a). If such an applicant has filed 
two submissions under 37 CFR 1.129(a) and the 
application is again under a final rejection, applicant 
is not entitled to have any additional submissions considered 
under 37 CFR 1.129(a). Applicant may be 
entitled to consideration of an additional submission 
if the submission meets the conditions set forth in 37 
CFR 1.116.

====706.07(h) Request for Continued Examination (RCE) Practice====

{{Statute|35 U.S.C. 132. Notice of rejection; reexamination.}}
{{Ellipsis}}
(b)The Director shall prescribe regulations to provide for 
the continued examination of applications for patent at the request 
of the applicant. The Director may establish appropriate fees for 
such continued examination and shall provide a 50 percent reduction 
in such fees for small entities that qualify for reduced fees 
under section 41(h)(1) of this title.
|}


{{Statute|37 CFR 1.114. Request for continued examination.}}
(a)If prosecution in an application is closed, an applicant 
may request continued examination of the application by filing a 
submission and the fee set forth in § 1.17(e) prior to the earliest 
of:

(1)Payment of the issue fee, unless a petition under 
§ 1.313 is granted;

(2)Abandonment of the application; or

(3)The filing of a notice of appeal to the U.S. Court of 
Appeals for the Federal Circuit under 35 U.S.C. 141, or the commencement 
of a civil action under 35 U.S.C. 145 or 146, unless 
the appeal or civil action is terminated.

(b)Prosecution in an application is closed as used in this 
section means that the application is under appeal, or that the last 
Office action is a final action (§ 1.113), a notice of allowance (§ 
1.311), or an action that otherwise closes prosecution in the application.

(c)A submission as used in this section includes, but is not 
limited to, an information disclosure statement, an amendment to 
the written description, claims, or drawings, new arguments, or 
new evidence in support of patentability. If reply to an Office 
action under 35 U.S.C. 132 is outstanding, the submission must 
meet the reply requirements of § 1.111.

(d) If an applicant timely files a submission and fee set forth 
in § 1.17(e), the Office will withdraw the finality of any Office 
action and the submission will be entered and considered. If an 
applicant files a request for continued examination under this section 
after appeal, but prior to a decision on the appeal, it will be 
treated as a request to withdraw the appeal and to reopen prosecution 
of the application before the examiner. An appeal brief (§ 
41.37 of this title) or a reply brief (§ 41.41 of this title), or related 
papers, will not be considered a submission under this section.

(e)The provisions of this section do not apply to:

(1)A provisional application;

(2)An application for a utility or plant patent filed under 
35 U.S.C. 111(a) before June 8, 1995;

(3)An international application filed under 35 U.S.C. 363before June 8, 1995;

(4)An application for a design patent; or

(5)A patent under reexamination.
|}

35 U.S.C. 132(b) provides for continued examination 
of an application at the request of the applicant 
(request for continued examination or RCE) upon 
payment of a fee, without requiring the applicant to 
file a continuing application under 37 CFR 1.53(b). 
To implement the RCE practice, 37 
CFR 1.114 provides 
a procedure under which an applicant may 
obtain continued examination of an application in 
which prosecution is closed (e.g., the application is 
under final rejection or a notice of allowance) by filing 
a submission and paying a specified fee. Applicants 
cannot file an RCE to obtain continued 
examination on the basis of claims that are independent 
and distinct from the claims previously claimed 
and examined as a matter of right (i.e., applicant cannot 
switch inventions). See 37 CFR 1.145. Any newly 
submitted claims that are directed to an invention that 
is independent and distinct from the invention previously 
claimed will be withdrawn from consideration 
and not entered. See subsection VI. below. An RCE 
is 
not the filing of a new application. Thus, the 
Office 
will not convert an RCE to a new application 
such as an application filed under 37 CFR 1.53(b) or a 
continued prosecution application (CPA) under 37 
CFR 1.53(d).

I.CONDITIONS FOR FILING AN RCE

The provisions of 37 
CFR 1.114 apply to utility or 
plant applications filed under 35 
U.S.C. 111(a) on or 
after June 
8, 1995, or international applications filed 
under 35 
U.S.C. 363 on or after June 
8, 1995. The 
RCE provisions of 37 
CFR 1.114 do not apply to: 

(A)a provisional application; 

(B)an application for a utility or plant patent filed 
under 35 
U.S.C. 111(a) before June 
8, 1995; 

(C)an international application filed under 
35 
U.S.C. 363 
before June 8, 1995;

(D)an application for a design patent; or 

(E)a patent under reexamination. 

See 37 
CFR 1.114(e).

An applicant may obtain continued examination of 
an application by filing a request for continued examination 
(see form PTO/SB/30), a submission and the 
fee set forth in 37 
CFR 1.17(e) prior to the earliest of: 

(A)payment of the issue fee (unless a petition 
under 37 CFR 1.313 is granted);

(B)abandonment of the application; or

(C)the filing of a notice of appeal to the U.S. 
Court of Appeals for the Federal Circuit or the commencement 
of a civil action (unless the appeal or civil 
action is terminated). 

See 37 
CFR 1.114(a). An applicant cannot request 
continued examination of an application until after 
prosecution in the application is closed. See 37 
CFR 1.114(a). Prosecution in an application is closed if the 
application is under appeal, or the last Office action is 
a final action (37 CFR 1.113), a notice of allowance 
(37 CFR 1.311), or an action that otherwise closes 
prosecution in the application (e.g., an Office action 
under Ex parte Quayle, 25 USPQ 74, 453 O.G. 213 
(Comm’r Pat. 1935)).

II.SUBMISSION REQUIREMENT

A "submission" as used in 37 
CFR 1.114 includes, 
but is not limited to, an information disclosure statement, 
an amendment to the written description, 
claims, or drawings, new arguments, or new evidence 
in support of patentability. See 37 
CFR 1.114(c). If a 
reply to an Office action under 35 
U.S.C. 132 is outstanding, 
the submission must meet the reply requirements 
of 37 
CFR 
1.111. See 37 
CFR 1.114(c). Thus, 
an applicant may file a submission under 37 
CFR 
1.114 containing only an information disclosure statement 
(37 
CFR 1.97 and 1.98) in an application subject 
to a notice of allowance under 35 
U.S.C. 151, but not 
in an application where the last Office action is a final 
rejection or an Office action under Ex parte Quayle, 
25 USPQ 74, 453 O.G. 213 (Comm’r Pat. 1935), or in 
an application that is under appeal. A request for a 
suspension of action, an appeal brief or a reply brief 
(or related papers) will not be considered a submission 
under 37 
CFR 1.114. See 37 
CFR 1.103 and 
1.114(d). The submission, however, may consist of 
the arguments in a previously filed appeal brief or 
reply brief, or may simply consist of a statement that 
incorporates by reference the arguments in a previously 
filed appeal brief or reply brief. In addition, a 
previously filed amendment after final (whether or not 
entered) may satisfy this submission requirement.

Arguments submitted after final rejection, which 
were entered by the examiner but not found persuasive, 
may satisfy the submission requirement if such 
arguments are responsive within the meaning of 37 
CFR 1.111 to the Office action. Consideration of 
whether any submission is responsive within the 
meaning of 37 
CFR 1.111 to the last outstanding 
Office action is done without factoring in the "final" 
status of such outstanding Office action. Thus, a reply 
which might not be acceptable as a reply under 
37 
CFR 1.113 when the application is under a final 
rejection may be acceptable as a reply under 37 
CFR 
1.111. 

III.IMPROPER CPA TREATED AS RCE

37 
CFR 1.53(d)(1) has been amended to provide 
that CPA practice under 37 
CFR 1.53(d) does notapply to utility and plant applications. Effective July 
14, 2003, a CPA may only be filed if the prior nonprovisional 
application is a design application that is 
complete as defined by 37 CFR 1.51(b).

In the event that an applicant files a request for a 
CPA (on or after July 14, 2003) of a utility or plant 
application that was filed on or after June 8, 1995, the 
Office will automatically treat the improper CPA as 
an RCE of the prior application (identified in the 
request for CPA) under 37 
CFR 1.114. If the CPA 
does not satisfy the requirements of 37 CFR 1.114 to 
be a proper RCE (e.g., lacks a submission under 37 
CFR 1.114(b), or is not accompanied by the fee set 
forth in 37 CFR 1.17(e)), the improper CPA will be 
treated as an improper RCE, and the time period set in 
the last Office action (or notice of allowance) will 
continue to run. If the time period (considering any 
available extension under 37 CFR 1.136(a)) has 
expired, the applicant will need to file a petition under 
37 CFR 1.137 (with the lacking submission under 37 
CFR 1.114(b) or fee set forth in 37 CFR 1.17(e)) to 
revive the abandoned application. 

Effective July 14, 2003, the Office will not convert 
an improper CPA into an application under 37 
CFR 
1.53(b) simply because it is requested by the applicant. 
The Office will convert an improper CPA into an 
application under 37 CFR 1.53(b) only if the applicant 
shows that there are extenuating circumstances that 
warrant the burdensome process of converting a CPA 
into an application under 37 CFR 1.53(b) (e.g., restoring 
the application to pending status and correcting 
the improper RCE is not possible because the application 
has issued as a patent).

IV.AFTER FINAL REJECTION

If an applicant timely files an RCE with the fee set 
forth in 37 
CFR 1.17(e) and a submission that meets 
the reply requirements of 37 CFR 1.111, the Office 
will withdraw the finality of any Office action to 
which a reply is outstanding and the submission will 
be entered and considered. See 37 
CFR 1.114(d). The 
submission meeting the reply requirements of 37 
CFR 
1.111 must be timely received to continue prosecution 
of an application. In other words, the mere request for, 
and payment of the fee for, continued examination 
will not operate to toll the running of any time period 
set in the previous Office action for reply to avoid 
abandonment of the application. 

Any submission that is an amendment must comply 
with the manner of making amendments as set forth in 
37 CFR 1.121. See MPEP § 714.03. The amendment 
must include markings showing the changes relative 
to the last entered amendment. Even though previously 
filed unentered amendments after final may satisfy 
the submission requirement under 37 
CFR 
1.114(c), applicants are encouraged to file an amendment 
at the time of filing the RCE that incorporates all 
of the desired changes, including changes presented in 
any previously filed unentered after final amendments, 
accompanied by instructions not to 
enter the 
unentered after final amendments. See subsection VI 
for treatment of not fully responsive submissions 
including noncompliant amendments.

V.NOT FULLY RESPONSIVE SUBMISSION

If reply to a final Office action is outstanding and 
the submission is not fully responsive to the final 
Office action, then it must be a bona fide attempt to 
provide a complete reply to the final Office action in 
order for the RCE to toll the period for reply. 

If the submission is not a bona fide attempt to provide 
a complete reply, the RCE should be treated as an 
improper RCE. Thus, a “Notice of Improper Request 
for Continued Examination (RCE),” Form PTO-2051, 
should be prepared by the technical support personnel 
and mailed to the applicant indicating that the request 
was not accompanied by a submission complying 
with the requirements of 37 CFR 1.111 (see 37 CFR 
1.114(c)). The RCE will not toll the period for reply 
and the application will be abandoned after the expiration 
of the statutory period for reply if no submission 
complying with 37 CFR 1.111 is filed. For 
example, if a reply to a final Office action is outstanding 
and the submission only includes an information 
disclosure statement (IDS), the submission will not be 
considered a bona fide attempt to provide a complete 
reply to the final Office action and the period for reply 
will not be tolled. Similarly, an amendment that would 
cancel all of the claims in an application and does not 
present any new or substitute claims is not a bona fideattempt to advance the application to final action. The 
Office will not enter such an amendment. See Exxon 
Corp. v. Phillips Petroleum Co., 265 F.3d 1249, 
60 
USPQ2d 1368 (Fed. Cir. 2001).

If the submission is a bona fide attempt to provide a 
complete reply, applicant should be informed that the 
submission is not fully responsive to the final Office 
action, along with the reasons why, and given a new 
shortened statutory period of one month or thirty days 
(whichever is longer) to complete the reply. See 
37 CFR 1.135(c).

Situations where a submission is not a fully responsive 
submission, but is a bona fide attempt to provide 
a complete reply are:

(A)Non-compliant amendment - An RCE filed 
with a submission which is an amendment that is not 
in compliance with 37 CFR 1.121, but which is a 
bona fide attempt to provide a complete reply to the 
last Office action, should be treated as a proper RCE 
and a Notice of Noncompliant Amendment should be 
mailed to the applicant. Applicant is given a time 
period of one month or thirty days from the mailing 
date of the notice, whichever is longer, to provide an 
amendment complying with 37 CFR 1.121. See 
MPEP § 714.03 for information on the amendment 
practice under 37 CFR 1.121.

(B)Presentation of claims for different invention 
- Applicants cannot file an RCE to obtain continued 
examination on the basis of claims that are independent 
and distinct from the claims previously claimed 
and examined as a matter of right (i.e., applicant cannot 
switch inventions). See 37 CFR 1.145. If an RCE 
is filed with an amendment canceling all claims 
drawn to the elected invention and presenting only 
claims drawn to a nonelected invention, the RCE 
should be treated as a proper RCE but the amendment 
should not be entered. The amendment is not fully 
responsive and applicant should be given a time 
period of one month or thirty days (whichever is 
longer) to submit a complete reply. See MPEP 
§ 821.03. Form paragraphs 8.04 or 8.26 should be 
used as appropriate.

VI.NEW MATTER

35 
U.S.C. 132(a) provides that “[n]o amendment 
shall introduce new matter into the disclosure of the 
invention.” Any amendment entered pursuant to 
37 
CFR 1.114 that is determined to contain new matter 
should be treated in the same manner that a reply 
under 37 
CFR 1.111 determined to contain new matter 
is currently treated. See MPEP § 706.03(o). In those 
instances in which an applicant seeks to add new matter 
to the disclosure of an application, the procedure in 
37 
CFR 1.114 is not available, and the applicant must 
file a continuation-in-part application under 37 
CFR 
1.53(b) containing such new matter. 

VII.FIRST ACTION FINAL AFTER FILING 
AN RCE

The action immediately subsequent to the filing of 
an RCE with a submission and fee under 37 
CFR 
1.114 may be made final only if the conditions set 
forth in MPEP § 706.07(b) for making a first action 
final in a continuing application are met.

VIII.AFTER ALLOWANCE OR QUAYLE ACTION

The phrase "withdraw the finality of any Office 
action" in 37 
CFR 1.114(d) includes the withdrawal 
of the finality of a final rejection, as well as the closing 
of prosecution by an Office action under Ex parte 
Quayle, 25 USPQ 74, 453 O.G. 213 (Comm’r Pat. 
1935), or notice of allowance under 35 
 
U.S.C. 151(or notice of allowability). Therefore, if an applicant 
files an RCE with the fee set forth in 37 
CFR 1.17(e)
and a submission in an application which has been 
allowed, prosecution will be reopened. If the issue fee 
has been paid, however, payment of the fee for an 
RCE and a submission without a petition under 
37 
CFR 1.313 to 
withdraw the application from issue 
will not avoid 
issuance of the application as a patent. 
If an RCE (with the fee and a submission) is filed in 
an allowed application prior to payment of the issue 
fee, a petition under 37 CFR 1.313 to withdraw the 
application from issue is not required.

If an RCE complying with the requirements of 
37 
CFR 1.114 is filed in an allowed application after 
the issue fee has been paid and a petition under 
37 
CFR 1.313 is also filed and granted, prosecution 
will be reopened. Applicant may not obtain a refund 
of the issue fee. If, however, the application is subsequently 
allowed, the Notice of Allowance will reflect 
an issue fee amount that is due that is the difference 
between the current issue fee amount and the issue fee 
that was previously paid.

If an applicant files an RCE under 37 
CFR 1.114after the filing of a Notice of Appeal to the Board of 
Patent Appeals and Interferences (Board), but prior to 
a decision on the appeal, it will be treated as a request 
to withdraw the appeal and to reopen prosecution of 
the application before the examiner, regardless of 
whether the RCE is proper or improper. See 37 CFR 
1.114(d). The Office will withdraw the appeal upon 
the filing of an RCE. Applicants should advise the 
Board when an RCE under 37 CFR 1.114 is filed in an 
application containing an appeal awaiting decision. 
Otherwise, the Board of Patent Appeals and Interferences 
may refuse to vacate a decision rendered after 
the filing (but before the recognition by the Office) of 
an RCE under 37 CFR 1.114.

A.Proper RCE

If the RCE is accompanied by a fee (37 CFR 
1.17(e)) and a submission that includes a reply which 
is responsive within the meaning of 37 CFR 1.111 to 
the last outstanding Office action, the Office will 
withdraw the finality of the last Office action and the 
submission will be entered and considered. If the submission 
is not fully responsive to the last outstanding 
Office action but is considered to be a bona fideattempt to provide a complete reply, applicant will be 
notified that the submission is not fully responsive, 
along with the reasons why, and will be given a new 
time period to complete the reply (using form paragraph 
7.42.08). See 37 CFR 1.135(c) and subsection 
V.

If the RCE is proper, form paragraph 7.42.06 
should be used to notify applicant that the appeal has 
been withdrawn and prosecution has been reopened.

B.Improper RCE

The appeal will be withdrawn even if the RCE is 
improper. If an RCE is filed in an application after 
appeal to the Board but the request does not include 
the fee required by 37 CFR 1.17(e) or the submission 
required by 37 CFR 1.114, or both, the examiner 
should treat the request as an improper RCE and withdraw 
the appeal pursuant to 37 CFR 1.114(d). If the 
submission is not considered to be a bona fide attempt 
to provide a complete reply to the last outstanding 
Office action (e.g., an IDS only), the submission will 
be treated as an improper submission or no submission 
at all under 37 CFR 1.114(c) (thus the request is 
an improper RCE). See subsection VI.

Upon withdrawal of the appeal, the application 
will be treated in accordance with MPEP § 1215.01based on whether there are any allowed claims or not. 
The proceedings as to the rejected claims are considered 
terminated. Therefore, if no claim is allowed, the 
application is abandoned. Claims which are allowable 
except for their dependency from rejected claims will 
be treated as if they were rejected. See MPEP § 
1215.01. If there is at least one allowed claim, the 
application should be passed to issue on the allowed 
claim(s). If there is at least one allowed claim but formal 
matters are outstanding, applicant should be 
given a shortened statutory period of one month or 
thirty days (whichever is longer) in which to correct 
the formal matters.

X.AFTER DECISION BY THE BOARD

A.Proper RCE After Board Decision

The filing of an RCE (accompanied by the fee and a 
submission) after a decision by the Board of Patent 
Appeals and Interferences, but before the filing of 
a 
Notice of Appeal to the Court of Appeals for the 
Federal Circuit (Federal Circuit) or the commencement 
of a civil action in federal district court, will 
also 
result in the finality of the rejection or 
action 
being withdrawn and the submission being 
considered. Generally, the time period for filing a 
notice of appeal to the Federal Circuit or for commencing 
a civil action is within two months of the 
Board’s decision. See 37 
CFR 1.304 and MPEP § 
1216. Thus, an RCE filed within this two month time 
period and before the filing of a notice of appeal to the 
Federal Circuit or the commencement of a civil action 
would be timely filed. In addition to the res judicataeffect of a Board of Patent Appeals and Interferences 
decision in an application (see MPEP § 706.03(w)), a 
Board decision in an application is the “law of the 
case,” and is thus controlling in that application and 
any subsequent, related application. See MPEP 
§ 1214.01 (where a new ground of rejection is entered 
by the Board of Patent Appeals and Interferences pursuant 
to 37 
CFR 1.196(b), argument without either 
amendment of the claims so rejected or the submission 
of a showing of facts can only result in a final 
rejection of the claims, since the examiner is without 
authority to allow the claims unless amended or 
unless the rejection is overcome by a showing of facts 
not before the Board of Patent Appeals and Interferences). 
As such, a submission containing arguments 
without either amendment of the rejected claims or 
the submission of a showing of facts will not be effective 
to remove such rejection.

B.Improper RCE After Board Decision

If an RCE is filed after a decision by the Board of 
Patent Appeals and Interferences, but before the filing 
of a Notice of Appeal to the Federal Circuit or the 
commencement of a civil action in federal district 
court, and the RCE was not accompanied by the fee 
and/or the submission, the examiner should notify the 
applicant that the RCE is improper by using form 
paragraph 7.42.16 set forth below. If the time for 
seeking court review has passed without such review 
being sought, the examiner should include the form 
paragraph with the mailing of a Notice of Allowability 
or a Notice of Abandonment depending on the status 
of the claims. See MPEP § 1214.06. If the time for 
seeking court review remains, the examiner should 
include the form paragraph on a PTOL-90. No time 
period should be set. If a submission is filed with the 
RCE, but the fee is missing, the examiner should also 
include a statement as to whether or not the submission 
has been entered. In general, such a submission 
should not be entered. If, however, the submission is 
an amendment that obviously places the application in 
condition for allowance, it should be entered with the 
approval of the supervisory patent examiner. See 
MPEP § 1214.07. Form paragraph 7.42.16 should not 
be used if the application is not a utility or plant application 
filed under 35 U.S.C. 111(a) on or after June 8, 
1995, or an international application filed under 
35 
U.S.C. 363 on or after June 8, 1995. In that situation, 
a “Notice of Improper Request for Continued 
Examination (RCE),” Form PTO-2051, should be prepared 
and mailed by the technical support personnel 
to notify applicant that continued examination 
does 
not apply to the application. When the time 
for 
seeking court review has passed without such 
review being sought, the examiner must take up the 
application for consideration. See MPEP § 1214.06for guidance on the action to be taken.

XI.AFTER APPEAL TO THE FEDERAL CIRCUIT 
OR CIVIL ACTION

The procedure set forth in 37 
CFR 1.114 is not available in an application after the filing 
of a Notice of Appeal to the Federal Circuit or the 
commencement of a civil action in federal district 
court, unless the appeal or civil action is terminated 
and the application is still pending. If an RCE is filed 
in an application that has undergone court review, the 
examiner should bring the application to the attention 
of the supervisory patent examiner or special program 
examiner in the TC to determine whether the RCE is 
proper. Unless an application contains allowed claims 
(or the court’s mandate clearly indicates that further 
action is to be taken by the Office), the termination of 
an unsuccessful appeal or civil action results in abandonment 
of the application. See MPEP § 1216.01.