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706.03   Rejections Not Based on Prior Art

MPEP SECTION SUMMARY This section provides a brief introduction to how rejections not based on prior art are handled through the Office.

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Under the principles of compact prosecution, each claim should be reviewed for compliance with every statutory requirement for patentability in the initial review of the application, even if one or more claims are found to be deficient with respect to some statutory requirement.

Whenever practicable, USPTO personnel should indicate how rejections may be overcome and how problems may be resolved.

• Where a rejection not based on prior art is proper (lack of adequate written description, enablement, or utility, etc.) such rejection should be stated with a full development of the reasons rather than by a mere conclusion.
  
  

MPEP SECTION SUMMARY This section covers rejections under 35 U.S.C. 101. 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 a patent to be granted only for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Topics such as double patenting, subject matter eligibility, utility, and the improper naming of an inventor are discussed.

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I.   DOUBLE PATENTING

35 U.S.C. 101 prevents two patents issuing on the same invention to the same applicant.

• The “same invention” means that identical subject matter is being claimed.
• If more than one patent is sought, a patent applicant will receive a statutory double patenting rejection for claims included in more than one application that are directed to the same invention.

II.   SUBJECT MATTER ELIGIBILITY

A claimed invention must fall within one of the four categories of invention recited in 35 U.S.C. 101: process, machine, manufacture, or composition of matter.

In addition to the terms "laws of nature," "natural phenomena," and "abstract ideas," judicially recognized exceptions have been described using various other terms, including "physical phenomena," "scientific principles," "systems that depend on human intelligence alone," "disembodied concepts," "mental processes" and "disembodied mathematical algorithms and formulas," for example.

• The exceptions reflect the courts’ view that the basic tools of scientific and technological work are not patentable.

III.   UTILITY

A rejection on the ground of lack of utility is appropriate when:

• it is not apparent why the invention is “useful” because applicant has failed to identify any specific and substantial utility and there is no well established utility, or
  
• an assertion of specific and substantial utility for the invention is not credible.

Such a rejection can include the more specific grounds of inoperativeness, such as inventions involving perpetual motion.

A rejection under 35 U.S.C. 101 for lack of utility should not be based on grounds that the invention is frivolous, fraudulent or against public policy.

IV.   IMPROPER NAMING OF INVENTOR

Although the AIA eliminated pre-AIA 35 U.S.C. 102(f), the patent laws still require the naming of the actual inventor or joint inventors of the claimed subject matter.

• The Office presumes that the named inventor or joint inventors in the application are the actual inventor or joint inventors of the claimed invention.

Where an application has an incorrect inventorship, the applicant should submit a request to correct inventorship under 37 CFR 1.48.

MPEP SECTION SUMMARY 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.

MPEP SECTION SUMMARY Rejections based on 35 U.S.C. 112 are discussed in chapter 2100 and in our Appendix on 35 U.S.C. 112.

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MPEP SECTION SUMMARY Rejections based on 35 U.S.C. 112 are discussed in chapter 2100 and in our Appendix on 35 U.S.C. 112.

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MPEP SECTION SUMMARY 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.

MPEP SECTION SUMMARY This section covers how new matter filed in an application will lead to a rejection.

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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(a) or pre-AIA 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.

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.

MPEP SECTION SUMMARY Claims may be rejected on the ground that applicant has disclaimed the subject matter involved.

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Such disclaimer may arise, for example, from the applicant’s failure to:

• make claims suggested for interference with another application
• copy a claim from a patent when suggested by the examiner, or
• respond or appeal, within the time limit fixed, to the examiner’s rejection of claims copied from a patent

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

MPEP SECTION SUMMARY Public use proceedings, effective September 16, 2012, are no longer authorized. For certain patents, prior public use may be raised in a post-grant review proceeding. The outcome of public use proceedings may also be the basis of a rejection.

Public use proceedings, effective September 16, 2012, are no longer authorized.

• For certain patents, prior public use may be raised in a post-grant review proceeding. 
• The outcome of public use proceedings may also be the basis of a rejection.
  
  

MPEP SECTION SUMMARY This section covers rejections based on res judicata, which is a term for a matter already judged.

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Res judicata may constitute a proper ground for rejection.

• However, res judicata rejections should be applied only when the earlier decision was a decision of the Patent Trial and Appeal Board (or its predecessor Board) 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.

• A patent owner or applicant is precluded from seeking a claim that is not patentably distinct from a claim that was finally refused or canceled during an administrative trial.
  
  

MPEP SECTION SUMMARY This section covers a few details on rejections based on reissues that enlarge the scope of the claims of the original patent. It briefly covers the filing of reissues by the assignee of the entire interest filed prior to and on or after September 16, 2012.

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The granting of a reissue cannot enlarge 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 (or the reissue application properly claims the benefit of a broadening reissue application filed within 2 years of the patent grant).

• 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.

 For a reissue application filed prior to September 16, 2012, 35 U.S.C. 251 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.”

 For reissue applications filed on or after September 16, 2012, the assignee of the entire interest may file the reissue application if:

• the application does not seek to enlarge the scope of the claims of the original patent, or
  
• the application for the original patent was filed under 37 CFR 1.46 by the assignee of the entire interest.

Such claims which do enlarge the scope may also be rejected as barred by the statute.

• A defective reissue oath affords a ground for rejecting all the claims in the reissue application.

 

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