This section describes some of the various reasons why an examiner may reject the claims of an application and how the applicant can overcome these rejections.

The requirements for patentability include patent eligible, useful, novel, nonobvious, enabled, and clearly described. These criteria are outlined in 35 U.S.C. 101, 102, 103, and 112 and will determine the basis of an examiner’s rejection of the claims at any time during the prosecution of the application.

35 U.S.C. 101 deals with what is patentable. If the disclosed subject matter is not a process, manufacture, machine or composition of matter made by man, and/or it has no utility, it will be rejected under 35 U.S.C. 101.

35 U.S.C. 102 discusses the conditions for patentability; novelty and the loss of the right to patent. The 102 laws (see Appendix I – Prior Art Rejections and Appendix II: 35 U.S.C. 102) state that the inventor listed on an application will be granted a patent unless he or she was not the first to invent the subject matter.

35 U.S.C. 103 (see Appendix I – Prior Art Rejections and Appendix III: 35 U.S.C. 103) relates to the obviousness of the subject matter. If the invention is found to be obvious in relation to the prior art, the applicant will not be granted a patent.

35 U.S.C. 112 (see Appendix V: 35 U.S.C. 112) relates to the description of the subject matter. If the patent application does not meet the standards outlined in 35 U.S.C. 112, it will be rejected.

This section includes a brief discussion on the uniform application of the patentability standard, defects in form or omission of a limitation, patentable subject matter disclosed but not claimed, and reconsideration of claims after reply by applicant.

• Review Ed9 10.2019: 706

Under certain circumstances an affidavit or declaration may be submitted which attempts to attribute an activity, a reference or part of a reference to the applicant to overcome a rejection based on pre-AIA 35 U.S.C. 102 prior art. If successful, the activity or the reference is no longer applicable. This section covers attribution affidavit or declaration to overcome a rejection under pre-AIA 35 U.S.C. 102 or 103. It also provides examples.

• Review Ed9 10.2019: 716.10

This section briefly covers the basis of proper prior art references including canceled matter, copending abandoned applications, and foreign patents.

• Review Ed9 10.2019: 901.01

The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. This section covers the burden of proof for a rejection based on inherency.

This includes that something old does not become patentable upon the discovery of a new property. In addition, the inherent feature need not be recognized at the time of the invention. In addition there is a brief discussion how a rejection under 35 U.S.C. 102/103 can be made when the prior art product seems to be identical except that the prior art is silent as to an inherent characteristic. Finally, this section states that the examiner must provide rationale or evidence tending to show inherency.

• Review Ed9 10.2019: 2112

This section covers composition, product, and apparatus claims. For product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. For composition claims, if the composition is physically the same, it must have the same properties. For product claims, nonfunctional printed matter does not distinguish claimed product from otherwise identical prior art product.

• Review Ed9 10.2019: 2112.01

This section covers the general level of operability required to make a prima facie case. It covers the idea that prior art is presumed to be operable/enabling and that what constitutes an enabling disclosure does not depend on the type of prior art the disclosure is contained in. Essentially, the level of disclosure required within a reference to make it an “enabling disclosure” is the same no matter what type of prior art is at issue. The last point made by this section is that efficacy is not a requirement for prior art enablement.

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This section briefly covers the use of prior art in rejections where operability is in question. It is possible to make a 35 U.S.C. 102 rejection even if the reference does not itself teach one of ordinary skill how to practice the invention, i.e., how to make or use the article disclosed. In addition, this section states that even if a reference discloses an inoperative device, it is prior art for all that it teaches.

• Review Ed9 10.2019: 2121.01

This section discusses domestic and foreign patent applications as prior art. It covers abandoned applications, including provisional applications. Essentially, abandoned applications disclosed to the public can be used as prior art.

In addition, it covers applications which have issued as patents and foreign applications open for public inspection. Lastly, it covers pending U.S. applications.

• Review Ed9 10.2019: 2127

This section outlines the details of printed publications as prior art. A reference is a printed publication if it is accessible to the public. It also covers electronic publications as prior art. Essentially, electronic publications are considered printed publications provided the publication was accessible to individuals concerned with the art to which the document relates. Regarding printed publications, one need not prove someone actually looked at a publication when that publication is accessible to the public through a library or patent office.

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This section covers the level of public accessibility required. Examples given state that a thesis placed in a university library may be considered prior art if it was sufficiently accessible to the public. In addition, an orally presented paper can constitute a printed publication if written copies are made available without restriction. Internal documents intended to be confidential are not considered printed publications.

Lastly, publicly displayed documents can constitute a printed publication even if the duration of display is for only a few days and the documents are not disseminated by copies or indexed in a library or database.

Each of these examples is discussed in more detail in this section.

• Review Ed9 10.2019: 2128.01

This section covers the date a publication is available as a reference. The date of accessibility can be shown through evidence of routine business practices. A journal article or other publication becomes available as prior art on the date it is received by a member of the public. Examples are provided here.

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Admissions as prior art are covered in this section. Admissions by the applicant constitute as prior art.

In addition, if the application contains reference in the specification that identifies work done by another as 'prior art', then that subject matter will be treated as admitted prior art. Drafting a claim in Jepson format is taken as an implied admission that the subject matter of the preamble is the prior art work of another.

The mere listing of a reference in an information disclosure statement is not taken as an admission that the reference is prior art against the claims.

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This section covers anticipation regarding 35 U.S.C. 102. Essentially, to anticipate a claim, the disclosure must teach every element of the claim.

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This section covers the 'on sale' bar of pre-AIA 35 U.S.C. 102(b). The on-sale bar is triggered if the invention is both the subject of a commercial offer for sale not primarily for experimental purposes and is ready for patenting. This section discusses the meaning of 'sale', offers for sale, sale by inventor, assignee or others associated with the inventor in the course of business, and sales by independent third parties.

• Review Ed9 10.2019: 2133.03(b)

This section covers the phrase 'in this country' in relation to pre-AIA 35 U.S.C. 102(b). For purposes of pre-AIA 35 U.S.C. 102(b) public use or on sale activity must take place in the United States.

• Review Ed9 10.2019: 2133.03(d)

This section discusses pre-AIA 35 U.S.C. 102(c) which states that a person shall be entitled to a patent unless he has abandoned the invention. Under 35 U.S.C. 102(c), an abandonment must be intentional.

This section also discusses considerations in a delay in making the first application, a delay in reapplying for patent after abandonment of previous patent application, and disclosure without claiming in a prior issued patent. Lastly, the mere lapse of time will not bar a patent.

• Review Ed9 10.2019: 2134

This section discusses pre-AIA 35 U.S.C. 102(d) which covers how a person shall be entitled to a patent unless 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.

• Review Ed9 10.2019: 2135.01

This section discusses the content of the prior art available against the claims. A 35 U.S.C. 102(e) rejection may rely on any part of the patent or application publication disclosure. The reference must itself contain the subject matter relied on in the rejection. In addition, the supreme court has authorized 35 U.S.C. 103 rejections based on pre-AIA 35 U.S.C. 102(e).

• Review Ed9 10.2019: 2135.02

This section covers the enablement requirement of the first paragraph or paragraph (a) of 35 U.S.C. 112. The specification must be enabling to a person “skilled in the art to which it pertains, or with which it is most nearly connected”. People have to be able to use the invention.

The inventor has to know how it works and the specification must clearly convey how to make and use the invention without undue experimentation. The topic of undue experimentation is covers in further details. Essentially, the information contained in the disclosure of an application must be sufficient enough to inform those skilled in the relevant art how to both make and use the claimed invention.

As long as the specification discloses at least one method for making and using the claimed invention that bears a reasonable correlation to the entire scope of the claim, then the enablement requirement of 35 U.S.C. 112 is satisfied.

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