706.03 Rejections Not Based on Prior Art [R-10.2019]
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 §§ 2105 and 2106 - 2106.07(c). Rejections based on lack of utility are explained in MPEP §§ 2107 - 2107.03. Rejections based on subject matter barred by the Atomic Energy Act are explained in MPEP § 2104.01. Rejections based on subject matter that is directed to tax strategies are explained in MPEP § 2124.01, and rejections based on subject matter that is directed to a human organism are explained in MPEP § 2105. Rejections based on duplicate claims are addressed in MPEP § 608.01(m), and double patenting rejections are addressed in MPEP § 804. See MPEP §§ 608.04 and 2163.06 for rejections based on new matter. Foreign filing without a license is discussed in MPEP § 140. Disclaimer and rejections after interference are explained in MPEP Chapter 2300, res judicata is discussed in MPEP § 2190, rejections in reissue applications are explained in MPEP Chapter 1400, and improper Markush groupings are explained in MPEP § 2117. Rejections based on 35 U.S.C. 112 are discussed in MPEP §§ 2161 - 2174 and 2185.
706.03(a) [Reserved] [R-10.2019]
[Editor Note: The overview of the requirements of 35 U.S.C. 101 has been moved to MPEP § 2104. Form paragraphs for use in rejections based on lack of subject matter eligibility have been moved to MPEP § 2106.07(a)(1), the form paragraph for use in rejecting a claim as being directed to a human organism has been moved to MPEP § 2105, form paragraphs for use in rejections based on lack of utility have been moved to MPEP § 2107.02, subsection IV, and form paragraphs for use in rejecting claims based on improper inventorship in applications subject to AIA 35 U.S.C. 102 have been moved to MPEP § 2157.]
706.03(b) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to patents barred by the Atomic Energy Act has been moved to MPEP § 2104.01.]
706.03(c) [Reserved] [R-10.2019]
[Editor Note: Form paragraphs for use in rejections made under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, have been moved to MPEP § 2166.]
706.03(d) [Reserved] [R-10.2019]
[Editor Note: Form paragraphs for use in rejections made under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, have been moved to MPEP § 2175.]
706.03(e) [Reserved] [R-10.2019]
[Editor Note: Form paragraphs for use in rejections made under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, have been moved to MPEP § 2187.]
706.03(f) - 706.03(j) [Reserved]
706.03(k) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to duplicate claims has been moved to MPEP § 608.01(m).]
706.03(l) - 706.03(n) [Reserved]
706.03(o) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to objection to an amendment that adds new matter to the specification has been moved to MPEP § 608.04(a).]
706.03(p) - 706.03(r) [Reserved]
706.03(s) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to foreign filing without a foreign filing license has been moved to MPEP § 140, subsection III.]
706.03(t) [Reserved]
706.03(u) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to rejections based on disclaimer has been moved to MPEP § 2304.04(c).]
706.03(v) [Reserved] [R-10.2019]
[Editor Note: For rejections following an interference, see MPEP Chapter 2300. Effective September 16, 2012, former 37 CFR. 1.292 authorizing petitions seeking institution of public use proceedings was removed from title 37. For information regarding rejections after the institution of public use proceedings, see MPEP § 706.03(v) of the August 2012 revision of the MPEP available from www.uspto.gov/web/offices/pac/mpep/old/ mpep_E8R9.htm.]
706.03(w) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to rejections based on res judicata has been moved to MPEP § 2190, subsection II.]
706.03(x) [Reserved] [R-10.2019]
[Editor Note: The examination of reissue applications is covered in MPEP Chapter 1400. See especially MPEP § 1412.03 for rejection of improperly broadened reissue claims, MPEP § 1444 for rejection of claims as being based on a defective reissue oath or declaration, and MPEP § 1442 for the special status of reissue applications.]
706.03(y) [Reserved] [R-10.2019]
[Editor Note: Information pertaining to improper Markush groupings has been moved to MPEP § 2117.]