MPEP 706.03
Rejections Not Based on Prior Art

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

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706.03    Rejections Not Based on Prior Art [R-08.2017]

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. Deficiencies should be explained clearly, particularly when they serve as a basis for a rejection. 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.

Rejections based on nonstatutory subject matter are explained in MPEP §§ 706.03(a), 2105, and 2106 - 2106.07(c). Rejections based on lack of utility are explained in MPEP §§ 2107 - 2107.02. Rejections based on subject matter barred by the Atomic Energy Act are explained in MPEP § 706.03(b). Rejections based on subject matter that is directed to tax strategies are explained in MPEP § 2124.01, and subject matter that is directed to a human organism is explained in MPEP § 2105. 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) and 2163.06 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.