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2158 AIA 35 U.S.C. 103 [R-07.2022]

[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2141-MPEP § 2146 for information on pre-AIA 35 U.S.C. 103 and AIA 35 U.S.C. 103.]

AIA 35 U.S.C. 103 sets forth the nonobviousness requirement for patentability. There are, however, some important changes from pre-AIA 35 U.S.C. 103.

The most significant difference between the AIA 35 U.S.C. 103 and pre-AIA 35 U.S.C. 103(a) is that AIA 35 U.S.C. 103 determines obviousness before the effective filing date of the claimed invention, rather than as of the time that the claimed invention was made. Under pre-AIA examination practice, the Office uses the effective filing date as a proxy for the invention date, unless there is evidence of record to establish an earlier date of invention. Thus, as a practical matter during examination, this distinction between the AIA 35 U.S.C. 103 and pre-AIA 35 U.S.C. 103 will result in a difference in practice only when the case under examination is subject to pre-AIA 35 U.S.C. 103 , and there is evidence in the case concerning a date of invention prior to the effective filing date. Such evidence is ordinarily presented by way of an affidavit or declaration under 37 CFR 1.131.

Next, the language of AIA 35 U.S.C. 103 differs from that of pre-AIA 35 U.S.C. 103 in that AIA 35 U.S.C. 103 requires consideration of “the differences between the claimed invention and the prior art,” while pre-AIA 35 U.S.C. 103 refers to “the differences between the subject matter sought to be patented and the prior art.” This difference in terminology does not indicate the need for any difference in approach to the question of obviousness. As pointed out by the Federal Circuit, “[t]he term ‘claims' has been used in patent legislation since the Patent Act of 1836 to define the invention that an applicant believes is patentable.” Hoechst-Roussel Pharms., Inc. v. Lehman, 109 F.3d 756, 758, 42 USPQ2d 1220, 1222 (Fed. Cir. 1997) (citing Act of July 4, 1836, ch. 357, § 6, 5 Stat. 117). Furthermore, in Graham v. John Deere, the second of the Supreme Court's factual inquiries (the “Graham factors”) is that the “differences between the prior art and the claims at issue are to be ascertained.” 383 U.S. 1, 17, 148 USPQ 459, 467. Thus, in interpreting 35 U.S.C. 103 as enacted in the 1952 Patent Act—language that remained unchanged until enactment of the AIA—the Court equated “the subject matter sought to be patented” with the claims.

Further, AIA 35 U.S.C. 103 does not contain any provision similar to pre-AIA 35 U.S.C. 103(b). Pre-AIA 35 U.S.C. 103(b) is narrowly drawn, applying only to nonobviousness of biotechnological inventions, and even then, only when specifically invoked by the patent applicant. Pre-AIA 35 U.S.C. 103(b) provides that under certain conditions, “a biotechnological process using or resulting in a composition of matter that is novel under section 102 and nonobvious under subsection [103(a)] of this section shall be considered nonobvious.” In view of the case law since 1995, the need to invoke pre-AIA 35 U.S.C. 103(b) has been rare. As stated in MPEP § 2147, in view of the Federal Circuit's decisions in In re Ochiai, 71 F.3d 1565, 37 USPQ2d 1127 (Fed. Cir. 1995) and In re Brouwer, 77 F.3d 422, 37 USPQ2d 1663 (Fed. Cir. 1996), the need to invoke pre-AIA 35 U.S.C. 103(b) rarely arose. Those cases continue to retain their validity under the AIA.

AIA 35 U.S.C. 103 also eliminates pre-AIA 35 U.S.C. 103(c), but corresponding provisions have been introduced in AIA 35 U.S.C. 102(b)(2)(C) and 102(c). Pre-AIA 35 U.S.C. 103(c) applied if subject matter qualified as prior art only under pre-AIA 35 U.S.C. 102(e), (f), and/or (g), and only in the context of obviousness under pre-AIA 35 U.S.C. 103(a). If subject matter developed by another person was commonly owned with the claimed invention, or if the subject matter was subject to an obligation of assignment to the same person, at the time the claimed invention was made, then pre-AIA 35 U.S.C. 103(a) did not preclude patentability. Furthermore, under pre-AIA 35 U.S.C. 103(c), if a joint research agreement was in place on or before the date that 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 disclosed or was amended to disclose the names of the parties to the joint research agreement, common ownership or an obligation to assign was deemed to exist. As discussed previously, AIA 35 U.S.C. 102(b)(2)(C) and 102(c) expand on this concept. Under the AIA, the common ownership, obligation to assign, or joint research agreement must exist on or before the effective filing date of the claimed invention, rather than on or before the date the invention was made. If the provisions of AIA 35 U.S.C. 102(b)(2)(C) are met, a disclosure is not prior art at all, whereas under pre-AIA 35 U.S.C. 103(c) , certain prior art merely was defined as not precluding patentability. Finally, disclosures excepted as prior art under AIA 35 U.S.C. 102(b)(2)(C) and 102(c) may not be applied in either an anticipation or an obviousness rejection, or as a secondary reference in a non-statutory double patenting rejection. In short, when an exception applies under the AIA, a reference may not be used for any purpose which requires prior art. However, the claims of such disclosures could be the basis for statutory double patenting or non-statutory double patenting rejections.

Generally speaking, and with the exceptions noted herein, pre-AIA notions of obviousness continue to apply under the AIA. AIA 35 U.S.C. 102(a) defines what is prior art both for purposes of novelty under AIA 35 U.S.C. 102 as well as for purposes of obviousness under AIA 35 U.S.C. 103. See Hazeltine Res., Inc. v. Brenner, 382 U.S. 252, 256, 147 USPQ 429, 430 (1965) (a previously filed patent application to another pending in the Office, but not patented or published, at the time an application is filed constitutes part of the “prior art” within the meaning of 35 U.S.C. 103). Thus, if a document qualifies as prior art under AIA 35 U.S.C. 102(a)(1) or (a)(2), and is not subject to an exception under AIA 35 U.S.C. 102(b), it may be applied for what it describes or teaches to those skilled in the art in a rejection under AIA 35 U.S.C. 103. This is in accordance with pre-AIA case law indicating that in making determinations under 35 U.S.C. 103, “it must be known whether a patent or publication is in the prior art under 35 U.S.C. 102.” Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1568, 1 USPQ2d 1593, 1597 (Fed. Cir. 1987). However, while a disclosure must enable those skilled in the art to make the invention in order to anticipate under 35 U.S.C. 102, a non-enabling disclosure is prior art for all it teaches for purposes of determining obviousness under 35 U.S.C. 103 . Symbol Techs. Inc. v. Opticon Inc., 935 F.2d 1569, 1578, 19 USPQ2d 1241, 1247 (Fed. Cir. 1991); Beckman Instruments v. LKB Produkter AB, 892 F.2d 1547, 1551, 13 USPQ2d 1301, 1304 (Fed. Cir. 1989) (“Even if a reference discloses an inoperative device, it is prior art for all that it teaches.”). Office personnel should continue to follow guidance for formulating an appropriate rationale to support any conclusion of obviousness. See MPEP § 2141 et seq. and the guidance documents available at https://www.uspto.gov/PatentExaminationGuidance.

2158.01 Form Paragraphs for Use in Rejections Under AIA 35 U.S.C. 103 [R-07.2022]

The following form paragraphs should be used in making the appropriate rejections under 35 U.S.C. 103.

¶ 7.06 Notice re prior art available under both pre-AIA and AIA

In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.

Examiner Note:

  • 1.  This form paragraph must be used in all Office Actions when a prior art rejection is made in an application with an actual filing date on or after March 16, 2013, that claims priority to, or the benefit of, an application filed before March 16, 2013.
  • 2.  This form paragraph should only be used ONCE in an Office action.  

¶ 7.20.aia Statement of Statutory Basis, 35 U.S.C. 103

The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:

A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.

Examiner Note:

  • 1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
  • 2. The statute is not to be cited in all Office actions. It is only required in first actions on the merits employing 35 U.S.C. 103 and final rejections. Where the statute is being applied, but is not cited in an action on the merits, use paragraph 7.103.
  • 3. This form paragraph should only be used ONCE in a given Office action.
  • 4. This form paragraph must precede any of form paragraphs 7.20.01.aia, 7.20.02.aia, 7.20.04.aia, 7.20.05.aia, 7.21.aia, 7.21.01.aia, 7.21.02.aia, and 7.22.aia when this form paragraph is used to cite the statute in first actions and final rejections.

¶ 7.20.01.aia 103 Rejection Using Prior Art Excepted Under 102(b)(2)(C) Because Reference is Prior Art Under 102(a)(1)

Applicant has provided a submission in this file that the claimed invention and the subject matter disclosed in the prior art reference were owned by, or subject to an obligation of assignment to, the same entity as [1] not later than the effective filing date of the claimed invention, or the subject matter disclosed in the prior art reference was developed and the claimed invention was made by, or on behalf of one or more parties to a joint research agreement not later than the effective filing date of the claimed invention. However, although subject matter disclosed in the reference [2] has been excepted as prior art under 35 U.S.C. 102(a)(2), it is still applicable as prior art under 35 U.S.C. 102(a)(1) that cannot be excepted under 35 U.S.C. 102(b)(2)(C).

Applicant may overcome this rejection under 35 U.S.C. 102(a)(1) by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application, and is therefore, not prior art as set forth in 35 U.S.C. 102(b)(1)(A). Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(1)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b).

Examiner Note:

  • 1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
  • 2. This form paragraph must be included following form paragraph 7.20.aia or 7.15.aia where the 103 rejection is based on subject matter disclosed in a reference that has since been excepted under 102(b)(2)(C), but still qualifies as prior art under 35 U.S.C. 102(a)(1).
  • 3. In bracket 1, identify the common assignee.
  • 4. In bracket 2, identify the reference which discloses the subject matter that has been excepted.

¶ 7.20.02.aia Joint Inventors, Common Ownership Presumed

This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were effectively filed absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned at the time a later invention was effectively filed in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.

Examiner Note:

  • 1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
  • 2. This paragraph must be used in all applications with joint inventors (unless the claims are clearly restricted to only one claimed invention, e.g., only a single claim is presented in the application).

¶ 7.20.04.aia 102 or 103 Rejection Using Prior Art Under 102(a)(2) That Is Attempted To Be Excepted Under 35 U.S.C. 102(b)(2)(C) Using the Common Ownership or Assignment Provision

Applicant has attempted to show that subject matter disclosed in the reference [1] is excepted as prior art under 35 U.S.C. 102(b)(2)(C) by showing that the claimed invention was owned by, or subject to an obligation of assignment to, the same entity as [2] at the time the claimed invention was effectively filed. However, applicant has failed to provide a statement that the claimed invention and the subject matter disclosed were owned by, or subject to an obligation of assignment to, the same person no later than the effective filing date of the claimed invention in a conspicuous manner, and therefore, the subject matter disclosed in the reference is not excepted as prior art under 35 U.S.C. 102(a)(2). Applicant must file the required submission in order to properly except the subject matter under 35 U.S.C. 102(b)(2)(C). See MPEP § 2154.02(c).

In addition, applicant may rely upon the exception under 35 U.S.C. 102(b)(2)(A) to overcome the rejection under 35 U.S.C. 102(a)(2) either by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application, and is therefore not prior art under 35 U.S.C. 102(a)(2). Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(2)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b).

Examiner Note:

  • 1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
  • 2. This form paragraph should be included in all actions containing rejections using 35 U.S.C. 102(a)(2) prior art, whether anticipation or obviousness rejections, where an attempt has been made to except subject matter disclosed in the reference under 35 U.S.C. 102(b)(2)(C), but where the applicant has not provided a proper statement indicating common ownership or assignment not later than the effective filing date of the claimed invention.
  • 3. In bracket 1, identify the commonly owned applied art (e.g., patent or co-pending application).
  • 4. In bracket 2, identify the common assignee.

¶ 7.20.05.aia 102 or 103 Rejection Using Prior Art Under 102(a)(2) That Is Attempted To Be Excepted Under 35 U.S.C. 102(b)(2)(C) Using the Joint Research Agreement Provisions of 35 U.S.C. 102(c)

Applicant has attempted to show that subject matter disclosed in the reference [1] is excepted as prior art under 35 U.S.C. 102(b)(2)(C) by showing that the claimed invention was subject to a joint research agreement in effect not later than the effective filing date of the claimed invention. However, applicant has failed to [2]. Applicant must file the missing requirements in order to properly except the subject matter disclosed in the reference under 35 U.S.C. 102(b)(2)(C). See 37 CFR 1.71(g)(1) and 1.104(c)(4)(ii).

In addition, applicant may overcome the rejection either by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained, either directly or indirectly from the inventor or a joint inventor of this application, and is therefore, not prior art under 35 U.S.C. 102(a)(2). Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(2)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b).

Examiner Note:

  • 1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
  • 2. This form paragraph must be included in all actions containing obviousness or anticipation rejections where an attempt has been made to except subject matter disclosed in the 35 U.S.C. 102(a)(2) prior art reference under 35 U.S.C. 102(b)(2)(C) using the joint research agreement provisions but the attempt is ineffective.
  • 3. In bracket 1, identify the reference which discloses subject matter that is sought to be excepted via 35 U.S.C. 102(b)(2)(C).
  • 4. In bracket 2, identify the reason(s) why the attempt is ineffective. The reason(s) could be noncompliance with the statutory requirements of 35 U.S.C. 102(b)(2)(C) or rule requirements relating to the CREATE Act, such as failure to submit the required statement or failure to amend the specification to include the names of the parties to the joint research agreement. See 37 CFR 1.71(g)(1) and 1.104(c)(4)(ii).

¶ 7.21.aia Rejection, 35 U.S.C. 103

Claim [1] is/are rejected under 35 U.S.C. 103 as being unpatentable over [2].

Examiner Note:

  • 1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
  • 2. This form paragraph must be preceded by either form paragraph 7.20.aia or form paragraph 7.103.
  • 3. An explanation of the rejection must follow this form paragraph. See MPEP § 2144.
  • 4. If this rejection is a provisional 35 U.S.C. 103 rejection based upon a copending application that would constitute prior art under 35 U.S.C. 102(a)(2) if patented or published, use form paragraph 7.21.01.aia instead of this paragraph.
  • 5. In bracket 1, insert the claim numbers which are under rejection.
  • 6. In bracket 2, insert the prior art relied upon.
  • 7. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.

¶ 7.21.01.aia Provisional Rejection, 35 U.S.C. 103, Common Assignee, Common Applicant, or at Least One Common (Joint) Inventor

Claim [1] is/are provisionally rejected under 35 U.S.C. 103 as being obvious over copending Application No. [2] which has a common [3] with the instant application. The copending application would constitute prior art under 35 U.S.C. 102(a)(2) if published or patented. This provisional rejection under 35 U.S.C. 103 is based upon a presumption of future publication or patenting of the copending application. [4]

This provisional rejection might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the copending application was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the copending application and the claimed invention either were owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.

Examiner Note:

  • 1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
  • 2. This form paragraph is used to provisionally reject claims over a copending application that discloses the claimed invention and would constitute prior art under 35 U.S.C. 102(a)(2) if published under 35 U.S.C. 122 or patented. The copending application must have either a common assignee, common applicant ( 35 U.S.C. 118 ) or at least one common (joint) inventor.
  • 3. If the claimed invention is fully disclosed in the copending application, use form paragraph 7.15.01.aia.
  • 4. In bracket 1, insert the claim number(s) which is/are under rejection.
  • 5. In bracket 2, insert the application number.
  • 6. In bracket 3, insert --assignee--, --applicant--, or --joint inventor--.
  • 7. In bracket 4, insert an explanation of obviousness. See MPEP § 2144.
  • 8. If the claimed invention is not patentably distinct from the invention claimed in the copending application, a provisional nonstatutory double patenting rejection should additionally be made using form paragraphs 8.33 and 8.37.

¶ 7.21.02.aia Rejection, 35 U.S.C. 103, Common Assignee, Common Applicant, or at Least One Common (Joint) Inventor

Claim [1] is/are rejected under 35 U.S.C. 103 as being obvious over [2].

The applied reference has a common [3] with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). [4]

This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.

Examiner Note:

  • 1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
  • 2. This paragraph is used to reject over a reference (patent or published application) that discloses the claimed invention, and that ONLY qualifies as prior art under 35 U.S.C. 102(a)(2). If the reference qualifies as prior art under 35 U.S.C. 102(a)(1), then this form paragraph should not be used (form paragraph 7.21.aia should be used instead). The reference must have either a common assignee, a common applicant (35 U.S.C. 118 ), or at least one common (joint) inventor. This form paragraph should not be used in applications when the reference is not prior art in view of the 35 U.S.C. 102(b)(2)(C) exception.
  • 3. In bracket 3, insert --assignee--, --applicant--, or --joint inventor--.
  • 4. In bracket 4, insert an explanation of obviousness. See MPEP § 2144.

¶ 7.22.aia Rejection, 35 U.S.C. 103, Further in View Of

Claim [1] is/are rejected under 35 U.S.C. 103 as being unpatentable over [2] as applied to claim [3] above, and further in view of [4].

Examiner Note:

  • 1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
  • 2. This form paragraph must be preceded by form paragraph 7.21.aia.
  • 3. An explanation of the rejection must follow this form paragraph. See MPEP § 2144.

¶ 7.23.aia Test for Obviousness

The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:

  • 1. Determining the scope and contents of the prior art.
  • 2. Ascertaining the differences between the prior art and the claims at issue.
  • 3. Resolving the level of ordinary skill in the pertinent art.
  • 4. Considering objective evidence present in the application indicating obviousness or nonobviousness.

Examiner Note:

  • 1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
  • 2. This form paragraph may be used, if appropriate, in response to an argument regarding the applicability of the factors for determining obviousness.

¶ 7.27.aia Rejection, 35 U.S.C. 102 or 103

Claim(s) [1] is/are rejected under 35 U.S.C. 102([2]) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over [3].

Examiner Note:

  • 1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
  • 2. This form paragraph is NOT intended to be commonly used as a substitute for a rejection under 35 U.S.C. 102. In other words, a single rejection under either 35 U.S.C. 102 or 35 U.S.C. 103 should be made whenever possible. Examples of circumstances where this paragraph may be used are as follows:
    • When the interpretation of the claim(s) is or may be in dispute, i.e., given one interpretation, a rejection under 35 U.S.C. 102 is appropriate and given another interpretation, a rejection under 35 U.S.C. 103 is appropriate. See MPEP §§ 2111 - 2116.01 for guidelines on claim interpretation.
    • When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §§ 2112 - 2112.02.
    • When the reference teaches a small genus which places a claimed species in the possession of the public as in In re Schaumann, 572 F.2d 312, 197 USPQ 5 (CCPA 1978), and the species would have been obvious even if the genus were not sufficiently small to justify a rejection under 35 U.S.C. 102. See MPEP §§ 2131.02 and 2144.08 for more information on anticipation and obviousness of species by a disclosure of a genus.
    • When the reference teaches a product that appears to be the same as, or an obvious variant of, the product set forth in a product-by-process claim although produced by a different process. See In re Marosi, 710 F.2d 799, 218 USPQ 289 (Fed. Cir. 1983) and In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). See also MPEP § 2113.
    • When the reference teaches all claim limitations except a means plus function limitation and the examiner is not certain whether the element disclosed in the reference is an equivalent of the claimed element and therefore anticipatory, or whether the prior art element is an obvious variant of the claimed element. See MPEP §§ 2183 - 2184.
    • When the ranges disclosed in the reference and claimed by applicant overlap in scope but the reference does not contain a specific example within the claimed range. See the concurring opinion in Ex parte Lee, 31 USPQ2d 1105 (Bd. Pat. App. & Inter. 1993). See MPEP § 2131.03.
  • 3. If the interpretation of the claim(s) renders the claim(s) indefinite, a rejection under 35 U.S.C. 112(b) may be appropriate.
  • 4. In bracket 1, insert the claim number(s) which is/are under rejection.
  • 5. In bracket 2, insert the appropriate paragraph letter(s) in parenthesis.
  • 6. In bracket 3, insert the prior art reference relied upon for the rejection.
  • 7. A full explanation must follow this form paragraph, i.e., the examiner must provide an explanation of how the claims at issue could be considered to be anticipated, as well as how they could be considered to be obvious.
  • 8. This form paragraph must be preceded by 7.07.aia and 7.08.aia and/or 7.12.aia or by form paragraph 7.103.
  • 9. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.

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