MPEP 706.02
Rejection on Prior Art

This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in Januay 2018

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706.02    Rejection on Prior Art [R-07.2015]

35 U.S.C. 102  Conditions for patentability; novelty.

[Editor Note: Applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note) ). See pre-AIA 35 U.S.C. 102 for the law applicable to applications and patents not subject to the first inventor to file provisions of the AIA.]

  • (a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—
    • (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
    • (2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
  • (b) EXCEPTIONS.—
    • (1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—
      • (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
      • (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
    • (2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.—A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—
      • (A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
      • (B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
      • (C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
  • (c) COMMON OWNERSHIP UNDER JOINT RESEARCH AGREEMENTS.—Subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(C) if—
    • (1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;
    • (2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
    • (3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
  • (d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS PRIOR ART.—For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application—
    • (1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or
    • (2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), 365(b), 386(a), or 386(b), or to claim the benefit of an earlier filing date under section 120, 121, 365(c), or 386(c) based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.

35 U.S.C. 102 (pre-AIA) Conditions for patentability; novelty and loss of right to patent.

[Editor Note: With the exception of subsection (g) in limited circumstances, not applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note) ). For an application or patent subject to the first inventor to file provisions of the AIA, see 35 U.S.C. 102.]

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.

35 U.S.C. 103  Conditions for patentability; non-obvious subject matter.

[Editor Note: Applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note) ). See pre-AIA 35 U.S.C. 102 for the law applicable to applications and patents not subject to the first inventor to file provisions of the AIA.]

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

35 U.S.C. 103 (pre-AIA) Conditions for patentability; non-obvious subject matter.

[Editor Note: Not applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note) ). For an application or patent subject to the first inventor to file provisions of the AIA, see 35 U.S.C. 103.]

  • (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, 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, 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 by a reference which does not disclose the inventive concept involved; or
  • (C) the most pertinent reference seems likely avoided by invoking an exception in a 37 CFR 1.130 declaration or to be antedated by a 37 CFR 1.131 affidavit or declaration depending on the applicable version of 35 U.S.C. 102.

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.

Examiners may rely on a machine translation of a foreign language document unless the machine translation is not of sufficient quality to be adequate evidence of the contents of the document. See In re Orbital Technologies Corporation, 603 Fed. App’x 924, 932 (Fed. Cir. 2015). A request by the applicant for the examiner to obtain a human language translation should be granted if the applicant provides evidence (e.g., a translation inconsistent with the machine translation) showing the machine translation does not accurately represent the document’s contents.

An Office action supplying a full text document and/or translation may be made final if the conditions described in MPEP § 706.07(a) or for a first Office action or RCE, in MPEP § 706.07(b), have been met.

Some translation resources available to examiners are discussed in MPEP § 901.05(d).

III.    RELIANCE ON ADMITTED PRIOR ART IN SUPPORT OF REJECTION

A statement by an applicant in the specification or made during prosecution identifying the work of another as "prior art" is an admission which can be relied upon for both anticipation and obviousness determinations, regardless of whether the admitted prior art would otherwise qualify as prior art under the statutory categories of 35 U.S.C. 102. Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354, 66 USPQ2d 1331, 1337 (Fed. Cir. 2003); Constant v. Advanced Micro-Devices Inc., 848 F.2d 1560, 1570, 7 USPQ2d 1057, 1063 (Fed. Cir. 1988). See MPEP §§ 2129 and 2152.03 for discussion on admissions as prior art. Where the admitted prior art anticipates the claim but does not qualify as prior art under any of the paragraphs of 35 U.S.C. 102, the claim may be rejected as being anticipated by the admitted prior art without citing to 35 U.S.C. 102.

IV.    REEXAMINATION

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

V.    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 and 2150 - 2159.04 for guidance on patentability determinations under 35 U.S.C. 102 and 103.

VI.    DETERMINING THE EFFECTIVE FILING DATE OF A CLAIMED INVENTION

The effective filing date of an invention claimed in 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, 365(c), or 386(c) 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 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.
  • (D) If the application claims foreign priority under 35 U.S.C. 119(a) - (d) or 365(a) or (b), the definition of the effective filing date of a claimed inventions depends on whether any claim in the application is subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note) and MPEP § 2159 et seq. for guidance on this determination.
    • In examining applications subject to current (first inventor to file) 35 U.S.C. 102, for each claim the effective filing date is the filing date of the foreign priority document if the claim is adequately supported in the foreign priority document. See MPEP § 2152.01.

In examining applications subject to pre-AIA 35 U.S.C. 102, the effective filing date is the filing date of the U.S. application, unless situation (A) or (B) as set forth above applies. The effective filing date is not the filing date of the foreign priority document, although the filing date of the foreign priority document may be used to overcome certain references. See MPEP §§ 706.02(b) and 2136.05.

See MPEP § 1893.03(b) for determining the effective filing date of an application under 35 U.S.C. 371. See MPEP § 211.01(c) 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.

VII.    REJECTION OF CLAIMS CORRESPONDING TO PATENT CLAIMS

When claims corresponding to claims of a patent are presented in an application, the examiner must determine whether the presented claims are unpatentable on any ground(s), e.g., under 35 U.S.C. 101, 102, 103, 112, double patenting, etc. If any of the claims presented in the application are rejectable on any grounds, they should be so rejected. The ground of rejection of the claims presented in the application may or may not be one which would also be applicable to the corresponding claims in the patent. If the ground of rejection is also applicable to the corresponding claims in the patent, any office action including the rejection must have the approval of the Technology Center Director. See MPEP § 1003. For interferences and derivation proceedings, see MPEP Chapter 2300 and 37 CFR Parts 41 and 42.