706.02 Rejection on Prior Art [R-10.2019]
[Editor Note: Information pertaining to the choice of best art, reliance on abstracts and foreign language documents, and the distinction between 35 U.S.C. 102 and 103 has been moved to MPEP § 2120. Information pertaining to determining the effective filing date of a claimed invention has been moved to MPEP § 2139.01 for applications subject to pre-AIA 35 U.S.C. 102 and MPEP § 2152.01 for applications subject to AIA 35 U.S.C. 102. Information pertaining to the rejection of claims corresponding to patent claims has been moved to MPEP § 706.06.]
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).
For general information on rejections based on prior art, see MPEP § 2120 et seq. For information specific to rejections based on pre-AIA 35 U.S.C. 102, see MPEP §§ 2132 - 2139.03. For information specific to rejections under AIA 35 U.S.C. 102, see MPEP §§ 2151 -2156.
706.02(a) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to rejections under 35 U.S.C. 102(a)(1) or (a)(2) and pre-AIA 35 U.S.C. 102(a), (b), or (e) based on a printed publication or patent has been moved to MPEP § 2120.01.]
706.02(a)(1) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to determining whether to apply 35 U.S.C. 102(a)(1) or 102(a)(2) has been moved to MPEP § 2152.05.]
706.02(a)(2) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to whether to apply pre-AIA 35 U.S.C.102(a), (b), or (e) has been moved to MPEP § 2139.02.]
706.02(b) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to overcoming a 35 U.S.C. 102 rejection based on a printed publication or patent has been moved to MPEP § 2120.01.]
706.02(b)(1) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to overcoming a 35 U.S.C. 102(a)(1) or 102(a)(2) rejection based on a printed publication or patent has been moved to MPEP § 2152.06.]
706.02(b)(2) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to overcoming a rejection based on a printed publication or patent has been moved to MPEP § 2132.01 for rejections under pre-AIA 35 U.S.C. 102(a), MPEP § 2133.02(a) for rejections under pre-AIA 35 U.S.C. 102(b), and MPEP §§ 2136.05 - 2136.05(b) for rejections under pre-AIA 35 U.S.C. 102(e).]
706.02(c) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to rejections under 35 U.S.C. 102(a)(1) and pre-AIA 35 U.S.C. 102(a) or (b) based on knowledge by others or public use or sale has been moved to MPEP § 2120.02.]
706.02(c)(1) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to rejections under 35 U.S.C. 102(a)(1) based on public use has been moved to MPEP § 2152.02(c), and information pertaining to rejections under 35 U.S.C. 102(a)(1) based on sales or offers for sale has been moved to MPEP § 2152.02(d).]
706.02(c)(2) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to whether to make a rejection under pre-AIA 35 U.S.C. 102(a) or (b) when the claimed invention was known, in public use, or on sale, has been moved to MPEP § 2139.02. For additional information relating to such rejections see MPEP § 2132 for a discussion of rejections under pre-AIA 35 U.S.C. 102(a) and MPEP § 2133.03 et seq. for a discussion of case law treating the "public use" and "on sale" statutory bars of pre-AIA 35 U.S.C. 102(b).]
706.02(d) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to rejections under pre-AIA 35 U.S.C. 102(c) has been moved to MPEP § 2134.]
706.02(e) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to rejections under pre-AIA 35 U.S.C. 102(d) has been moved to MPEP § 2135.]
706.02(f) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to rejections under pre-AIA 35 U.S.C. 102(e) has been moved to MPEP § 2136.]
706.02(f)(1) [Reserved] [R-10.2019]
[Editor Note: Examination guidelines for applying references under pre-AIA 35 U.S.C. 102(e) have been moved to MPEP § 2136.]
706.02(f)(2) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to provisional rejections based on a copending U.S. application has been moved to MPEP § 2154.01(d) for rejections under AIA 35 U.S.C. 102(a)(2) and to MPEP § 2136.01 for rejections under pre-AIA 35 U.S.C. 102(e).]
706.02(g) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to rejections under pre-AIA 35 U.S.C. 102(f) has been moved to MPEP § 2137.]
706.02(h) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to rejections under pre-AIA 35 U.S.C. 102(g) has been moved to MPEP § 2138.]
706.02(i) [Reserved] [R-10.2019]
[Editor Note: Form paragraphs for use in rejections under AIA 35 U.S.C. 102 have been moved to MPEP § 2152.07, and form paragraphs for use in rejections under pre-AIA 35 U.S.C. 102 have been moved to MPEP § 2139.03.]
706.02(j) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to the contents of a 35 U.S.C. 103 rejection has been moved to MPEP § 2142.]
706.02(k) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to provisional obviousness rejections using provisional prior art under pre-AIA 35 U.S.C. 102(e) has been moved to MPEP § 2146.03(a), and information pertaining to the requirements to claim the benefit of a prior filed application under 35 U.S.C. 120 has been moved to MPEP § 2109, subsection VI.]
706.02(l) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to the applicability of pre-AIA 35 U.S.C. 103(c) to obviousness rejections using prior art under only pre-AIA 35 U.S.C. 102(e), (f), or (g) has been moved to MPEP § 2146.]
706.02(l)(1) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to prior art disqualification under pre-AIA 35 U.S.C. 103(c) has been moved to MPEP § 2146.01.]
706.02(l)(2) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to establishing common ownership or joint research agreement under pre-AIA 35 U.S.C. 103(c) has been moved to MPEP § 2146.02.]
706.02(l)(3) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to examination procedure with respect to pre-AIA 35 U.S.C. 103(c) has been moved to MPEP § 2146.03.]
706.02(m) [Reserved] [R-10.2019]
[Editor Note: Form paragraphs for making rejections under pre-AIA 35 U.S.C. 103(a) have been moved to MPEP § 2148 and form paragraphs for making rejections under AIA 35 U.S.C. 103 have been moved to MPEP § 2158.01. In addition, form paragraph 7.06.01 has been moved to MPEP § 2124.01.]
706.02(n) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to biotechnology process applications and pre-AIA 35 U.S.C. 103(b) has been moved to MPEP § 2147.]