706.03   Rejections Not Based on Prior Art [R-11.2013]

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, § 2106 - § 2106.02, and § 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 2163.06for 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.

706.03(a)   Rejections Under 35 U.S.C. 101 [R-11.2013]

Patents are not granted for all new and useful inventions and discoveries. The subject matter of the invention or discovery must come within the boundaries set forth by 35 U.S.C. 101, which permits a patent to be granted only for "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof."

I.   DOUBLE PATENTING

35 U.S.C. 101  prevents two patents issuing on the same invention to the same applicant. The "same invention" means that identical subject matter is being claimed. If more than one patent is sought, a patent applicant will receive a statutory double patenting rejection for claims included in more than one application that are directed to the same invention.

See MPEP Chapter 800, specifically MPEP § 804 for criteria relevant to the prohibition of "double patenting."

II.   SUBJECT MATTER ELIGIBILITY

A claimed invention must fall within one of the four categories of invention recited in 35 U.S.C. 101: process, machine, manufacture, or composition of matter, as these categories have been interpreted by the courts. Additionally, a claimed invention must not be directed to one of the judicially recognized exceptions, which have been specifically excluded from patent eligibility by the courts. These judicially recognized exceptions include scientific truths, abstract principles, abstract intellectual concepts, laws of nature, natural phenomena, abstract ideas, mental processes, processes of human thinking, and systems that depend for their operation on human intelligence alone. These have been collectively referred to as laws of nature, natural phenomena, or abstract ideas, but encompass the basic tools of scientific and technological work.

See MPEP § 2105 for patent eligibility of living subject matter and MPEP § 2106 for guidelines pertaining to subject matter eligibility in general.

Eligible subject matter is further limited by the Atomic Energy Act explained in MPEP § 706.03(b), which prohibits patents granted on any invention or discovery that is useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon.

III.   UTILITY

A rejection on the ground of lack of utility is appropriate when (1) it is not apparent why the invention is "useful" because applicant has failed to identify any specific and substantial utility and there is no well established utility, or (2) an assertion of specific and substantial utility for the invention is not credible. Such a rejection can include the more specific grounds of inoperativeness, such as inventions involving perpetual motion. A rejection under 35 U.S.C. 101  for lack of utility should not be based on grounds that the invention is frivolous, fraudulent or against public policy. See Juicy Whip Inc. v. Orange Bang Inc., 185 F.3d 1364, 1367-68, 51 USPQ2d 1700, 1702-03 (Fed. Cir. 1999) ("[Y]ears ago courts invalidated patents on gambling devices on the ground that they were immoral…, but that is no longer the law…Congress never intended that the patent laws should displace the police powers of the States, meaning by that term those powers by which the health, good order, peace and general welfare of the community are promoted…we find no basis in section 101 to hold that inventions can be ruled unpatentable for lack of utility simply because they have the capacity to fool some members of the public."). The statutory basis for this rejection is 35 U.S.C. 101. See MPEP § 2107 for guidelines governing rejections for lack of utility. See MPEP § 2107.01 - § 2107.03 for legal precedent governing the utility requirement.

Use Form Paragraphs 8.30, 8.31 and 8.32 for statutory double patenting rejections. Use Form Paragraphs 7.04.01 through 7.05.03 to reject under 35 U.S.C. 101  for failure to claim eligible subject matter and for failure to satisfy the utility requirement.

IV.   IMPROPER NAMING OF INVENTOR

Although the AIA eliminated pre-AIA 35 U.S.C. 102(f), the patent laws still require the naming of the actual inventor or joint inventors of the claimed subject matter. See 35 U.S.C. 115(a). The Office presumes that the named inventor or joint inventors in the application are the actual inventor or joint inventors of the claimed invention. See MPEP § 2137.01. Where an application has an incorrect inventorship, the applicant should submit a request to correct inventorship under 37 CFR 1.48. In the rare situation where it clear that the application does not name the correct inventorship and the applicant has not filed a request to correct inventorship under 37 CFR 1.48, the examiner should reject the claims under 35 U.S.C. 101  and 35 U.S.C. 115  (and pre-AIA 35 U.S.C. 102(f)  for applications subject to pre-AIA 35 U.S.C. 102 ). Use Form Paragraph 7.04.02.aia to reject under 35 U.S.C. 101  and 115  for failing to set forth the correct inventorship.

¶ 7.04.101.aia    Statement of Statutory Bases, 35 U.S.C. 101 and 35 U.S.C. 115— Improper Inventorship

35 U.S.C. 101  reads as follows:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

35 U.S.C. 115(a)  reads as follows (in part):

An application for patent that is filed under section 111(a)  or commences the national stage under section 371  shall include, or be amended to include, the name of the inventor for any invention claimed in the application.

The present application sets forth the incorrect inventorship because [1].

Examiner Note:

1. If form paragraph 7.04.01 is already being used for a rejection that is not based on improper inventorship, then in lieu of this form paragraph, use form paragraph 7.04.102.aia with form paragraph 7.04.01 for a rejection based on improper inventorship.

2. In bracket 1, insert the basis for concluding that the inventorship is incorrect.

3. This form paragraph must be followed by form paragraph 7.04.02.aia.

¶ 7.04.102.aia    Statement of Statutory Basis, 35 U.S.C. 115— Improper Inventorship

35 U.S.C. 115(a)  reads as follows (in part):

An application for patent that is filed under section 111(a)  or commences the national stage under section 371  shall include, or be amended to include, the name of the inventor for any invention claimed in the application.

The present application sets forth the incorrect inventorship because [1].

Examiner Note:

1. This form paragraph is to be used ONLY when a rejection under 35 U.S.C. 101  on another basis has been made and the statutory text thereof is already present.

2. This form paragraph must be preceded by form paragraph 7.04.01 for a rejection based on improper inventorship.

3. In bracket 1, insert an explanation of the supporting evidence establishing that an improper inventor is named.

¶ 7.04.01    Statement of Statutory Basis, 35 U.S.C. 101

35 U.S.C. 101 reads as follows:  

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

Examiner Note:

This form paragraph must precede the first use of 35 U.S.C. 101 in all first actions on the merits and final rejections.  

¶ 7.04.02.aia    Rejection, 35 U.S.C. 101/115

Claim [1] rejected under 35 U.S.C. 101  and 35 U.S.C. 115  for failing to set forth the correct inventorship for the reasons stated above.

Examiner Note:

1. In bracket 1, pluralize "Claim" if necessary, insert "is" or "are" as appropriate, and insert the claim number(s) which are under rejection.

2. This rejection must be preceded by either form paragraph 7.04.101.aia or 7.04.102.aia.

¶ 7.04.03    Human Organism

Section 33(a) of the America Invents Act reads as follows

Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.

Claim [1] rejected under 35 U.S.C. 101  and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101 ). [2]

Examiner Note:

1. This paragraph must be preceded by form paragraph 7.04.01 which quotes 35 U.S.C. 101.

2. In bracket 1, pluralize "Claim" if necessary, insert claim number(s), and insert "is" or "are" as appropriate.

3. In bracket 2, explain why the claim is interpreted to read on a human organism.

¶ 7.05    Rejection, 35 U.S.C. 101, -Heading Only- (Utility, Non-Statutory, Inoperative)

Claim [1] rejected under 35 U.S.C. 101  because

Examiner Note:

1. This form paragraph must be followed by one or more of form paragraphs - 7.05.01, 7.05.011, 7.05.012, 7.05.013, 7.05.02, 7.05.03, or another appropriate reason.

2. Explain the rejection following the recitation of the statute and the use of form paragraph(s) or other reason.

3. See MPEP §§ 706.03(a) and 2105 - 2107.03 for other situations.

4. This form paragraph must be preceded by form paragraph 7.04.01 in first actions and final rejections.

¶ 7.05.01    Rejection, 35 U.S.C. 101, Non-Statutory

the claimed invention is directed to non-statutory subject matter because [1]

Examiner Note:

1. In bracket 1, explain why the claimed invention is not patent eligible subject matter, e.g.,

(a) why the claimed invention does not fall within at least one of the four categories of patent eligible subject matter recited in 35 U.S.C. 101  (process, machine, manufacture, or composition of matter), e.g., the claim is directed to a signal per se, a contract between two parties, or a human being; or

(b) why the claimed invention, although nominally falling within at least one of the four eligible categories, is directed to a judicial exception to 35 U.S.C. 101  (i.e., an abstract idea, natural phenomenon, or law of nature); or

(c) why the claimed invention would impermissibly cover every substantial practical application of, and thereby preempt all use of, an abstract idea, natural phenomenon, or law of nature; or

(d) why the claimed invention is directed to a naturally-occurring nucleic acid or fragment thereof, whether isolated or not, that is not patent-eligible pursuant to the Supreme Court decision in Association for Molecular Pathology v. Myriad Genetics, Inc., -- U.S. -- (June 13, 2013).

2. For a claim that is directed to an abstract idea and is non-statutory, use form paragraph 7.05.011.

¶ 7.05.011    Rejection, 35 U.S.C. 101, Non-Statutory Method (Abstract Idea)

the claimed invention is not directed to patent eligible subject matter. Based upon consideration of all of the relevant factors with respect to the claim as a whole, claim(s) [1] is/are determined to be directed to an abstract idea.  The rationale for this determination is explained below:  [2]

Examiner Note:

1.        This form paragraph should only be used when rejecting method claim(s) directed to an abstract idea.

2.        In bracket 2, identify the decisive factors weighing against patent eligibility under 35 U.S.C. 101, and explain the manner in which these factors support a conclusion of patent ineligibility under 35 U.S.C. 101. For instance, that additional limitations are no more than a field of use or merely involve insignificant extrasolution activity; e.g., data gathering. The explanation needs to be sufficient to establish a prima facie case of patent ineligibility under 35 U.S.C. 101.

¶ 7.05.012    Dependent Claim(s)  - Rejection, 35 U.S.C. 101, Non-Statutory Method (Abstract Idea)

Dependent claim(s) [1] when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 101  because the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea, as detailed below:  [2]

Examiner Note:

1.        This form paragraph should only be used when rejecting dependent method claim(s) directed to an abstract idea.

2.        In bracket 2, provide an explanation as to why the claim(s) is/are directed to an abstract idea; for instance, that the additional limitations are no more than a field of use or merely involve insignificant extrasolution activity; e.g., data gathering.  The explanation needs to be sufficient to establish a prima facie case of patent ineligibility under 35 U.S.C. 101.

¶ 7.05.013    Rejection, 35 U.S.C. 101, Non-Statutory Method (Law of Nature)

the claimed invention is not directed to patent eligible subject matter. Based upon an analysis with respect to the claim as a whole, claim(s) [1] is/are determined to be directed to a law of nature/natural principle. The rationale for this determination is explained below: [2]

Examiner Note:

1. This form paragraph should only be used when rejecting method claim(s) that have a law of nature/natural principle as a claim limitation.

2. In bracket 2, identify the natural principle that is the limiting feature in the claim, and explain why the additional elements or steps in the claim do not integrate the natural principle into the method and/or why the additional elements or steps in the claim are not sufficient to ensure that the claim amounts to significantly more than the natural principle itself. For instance, the additional elements or steps can be shown to be extrasolution activity or mere field of use that impose no meaningful limit on the performance of the method or can be shown to be no more than well-understood, purely conventional, and routinely taken by others in order to apply the natural principle. The explanation needs to be sufficient to establish a prima facie case of patent ineligibility under 35 U.S.C. 101.

¶ 7.05.02    Rejection, 35 U.S.C. 101, Utility Lacking

the claimed invention lacks patentable utility. [1]

Examiner Note:

In bracket 1, provide explanation of lack of utility. See MPEP §§ 706.03(a) and 2105 - 2107.03.

¶ 7.05.03    Rejection, 35 U.S.C. 101, Inoperative

the disclosed invention is inoperative and therefore lacks utility. [1]

Examiner Note:

In bracket 1, explain why invention is inoperative.

¶ 7.05.04    Utility Rejections Under 35 U.S.C. 101 and 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), First Paragraph

Claim [1] rejected under 35 U.S.C. 101  because the claimed invention is not supported by either a [2] asserted utility or a well established utility.

[3]

Claim [4] also rejected under 35 U.S.C. 112(a)  or pre-AIA 35 U.S.C. 112, first paragraph. Specifically, because the claimed invention is not supported by either a [5] asserted utility or a well established utility for the reasons set forth above, one skilled in the art clearly would not know how to use the claimed invention.

Examiner Note:

1. Where the specification would not enable one skilled in the art to make the claimed invention, or where alternative reasons support the enablement rejection, a separate rejection under 35 U.S.C. 112(a)  or pre-AIA 35 U.S.C. 112, first paragraph, enablement should be made using the factors set forth in In re Wands, 858 F.2d 731, 8 USPQ2d 1400 (Fed. Cir. 1988) and an undue experimentation analysis. See MPEP §§ 2164 - 2164.08(c).

2 Use Format A, B, or C below as appropriate.

    Format A:
    • (a) Insert the same claim numbers in brackets 1 and 4.
    • (b) Insert --specific and substantial-- in inserts 2 and 5.
    • (c) In bracket 3, insert the explanation as to why the claimed invention is not supported by either a specific and substantial asserted utility or a well established utility.
    • (d) Format A is to be used when there is no asserted utility and when there is an asserted utility but that utility is not specific and substantial.

    Format B:
    • (a) Insert the same claim numbers in brackets 1 and 4.
    • (b) Insert --credible-- in inserts 2 and 5.
    • (c) In bracket 3, insert the explanation as to why the claimed invention is not supported by either a credible asserted utility or a well established utility.

    Format C: For claims that have multiple utilities, some of which are not specific and substantial, some of which are not credible, but none of which are specific, substantial and credible:
    • (a) Insert the same claim numbers in brackets 1 and 4.
    • (b) Insert --specific and substantial asserted utility, a credible-- in inserts 2 and 5.
    • (c) In bracket 3, insert the explanation as to why the claimed invention is not supported by either a specific and substantial asserted utility, a credible asserted utility or a well established utility. Each utility should be addressed.

706.03(b)   Barred by Atomic Energy Act [R-08.2012]

A limitation on what can be patented is imposed by the Atomic Energy Act of 1954. Section 151(a) (42 U.S.C. 2181(a)) thereof reads in part as follows:

No patent shall hereafter be granted for any invention or discovery which is useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon.

The terms "atomic energy" and "special nuclear material" are defined in Section 11 of the Act (42 U.S.C. 2014).

Sections 151(c) and 151(d) (42 U.S.C. 2181(c) and (d)) set up categories of pending applications relating to atomic energy that must be brought to the attention of the Department of Energy. Under 37 CFR 1.14(d)  , applications for patents which disclose or which appear to disclose, or which purport to disclose, inventions or discoveries relating to atomic energy are reported to the Department of Energy and the Department will be given access to such applications, but such reporting does not constitute a determination that the subject matter of each application so reported is in fact useful or an invention or discovery or that such application in fact discloses subject matter in categories specified by the Atomic Energy Act.

All applications received in the U.S. Patent and Trademark Office are screened by Technology Center (TC) work group 3640 personnel, under 37 CFR 1.14(d), in order for the Director to fulfill his or her responsibilities under section 151(d) (42 U.S.C. 2181(d)) of the Atomic Energy Act. Papers subsequently added must be inspected promptly by the examiner when received to determine whether the application has been amended to relate to atomic energy and those so related must be promptly forwarded to Licensing and Review in TC work group 3640.

All rejections based upon sections 151(a)(42 U.S.C. 2181(a)), 152 (42 U.S.C. 2182), and 155 (42 U.S.C. 2185) of the Atomic Energy Act must be made only by TC work group 3640 personnel.

706.03(c)   Rejections Under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, First Paragraph [R-11.2013]

Rejections based on 35 U.S.C. 112(a)  or the first paragraph of pre-AIA 35 U.S.C. 112  are discussed in MPEP § 2161 - § 2165.04. For a discussion of the utility requirements of 35 U.S.C. 112(a)  or the first paragraph of pre-AIA 35 U.S.C. 112, first paragraph, and 35 U.S.C. 101, see MPEP § 2107 - § 2107.03. The appropriate form paragraphs 7.30.01 and 7.31.01 through 7.33.01 should be used in making rejections under 35 U.S.C. 112(a)  or the first paragraph of pre-AIA 35 U.S.C. 112.

¶ 7.30.01    Statement of Statutory Basis, 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112

The following is a quotation of 35 U.S.C. 112(a):

(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.

The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.

Examiner Note:

1. The statute is no longer being re-cited in all Office actions. It is only required in first actions on the merits and final rejections. Where the statute is not being cited in an action on the merits, use paragraph 7.103.

2. Form paragraphs 7.30.01 and 7.30.02 are to be used ONLY ONCE in a given Office action.

¶ 7.31.01    Rejection, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 1st Paragraph, Description Requirement, Including New Matter Situations

Claim [1] rejected under 35 U.S.C. 112(a)  or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. [2]

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.01 or 7.103.

2. In bracket 2, identify (by suitable reference to page and line numbers and/or drawing figures) the subject matter not properly described in the application as filed, and provide an explanation of your position. The explanation should include any questions the examiner asked which were not satisfactorily resolved and consequently raise doubt as to possession of the claimed invention at the time of filing.

Form paragraph 7.31.02 should be used when it is the examiner’s position that nothing within the scope of the claims is enabled. In such a rejection, the examiner should explain all the reasons why nothing within the scope of the claim is enabled. To make sure all relevant issues are raised, this should include any issues regarding the breadth of the claims relative to the guidance in the disclosure.

¶ 7.31.02    Rejection, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 1st Paragraph, Enablement

Claim [1] rejected under 35 U.S.C. 112(a)  or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. [2]

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.01 or 7.103.

2. If the problem is one of scope, form paragraph 7.31.03 should be used.

3. In bracket 2, identify the claimed subject matter for which the specification is not enabling. Also explain why the specification is not enabling, applying the factors set forth in In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1998) as appropriate. See also MPEP § 2164.01(a) and § 2164.04. The explanation should include any questions the examiner may have asked which were not satisfactorily resolved and consequently raise doubt as to enablement.

4. Where an essential component or step of the invention is not recited in the claims, use form paragraph 7.33.01.

Form paragraph 7.31.03 should be used when it is the examiner’s position that something within the scope of the claims is enabled but the claims are not limited to that scope.

¶ 7.31.03    Rejection, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 1st Paragraph: Scope of Enablement

Claim [1] rejected under 35 U.S.C. 112(a)  or pre-AIA 35 U.S.C. 112, first paragraph, because the specification, while being enabling for [2], does not reasonably provide enablement for [3]. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to [4] the invention commensurate in scope with these claims. [5]

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.01 or 7.103.

2. This form paragraph is to be used when the scope of the claims is not commensurate with the scope of the enabling disclosure.

3. In bracket 2, identify the claimed subject matter for which the specification is enabling. This may be by reference to specific portions of the specification.

4. In bracket 3, identify aspect(s) of the claim(s) for which the specification is not enabling.

5. In bracket 4, fill in only the appropriate portion of the statute, i.e., one of the following: --make--, --use--, or --make and use--.

6. In bracket 5, identify the claimed subject matter for which the specification is not enabling. Also explain why the specification is not enabling, applying the factors set forth in In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1998) as appropriate. See also MPEP § 2164.01(a) and § 2164.04. The explanation should include any questions posed by the examiner which were not satisfactorily resolved and consequently raise doubt as to enablement.

¶ 7.31.04    Rejection, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 1st Paragraph: Best Mode Requirement

Claim [1] rejected under 35 U.S.C. 112(a)  or pre-AIA 35 U.S.C. 112, first paragraph, because the best mode contemplated by the inventor or a joint inventor, or for pre-AIA the inventor(s) has not been disclosed. Evidence of concealment of the best mode is based upon [2].

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.01 or 7.103.

2. In bracket 2, insert the basis for holding that the best mode has been concealed, e.g., the quality of applicant’s disclosure is so poor as to effectively result in concealment.

3. Use of this form paragraph should be rare. See MPEP §§ 2165- 2165.04.

Form paragraph 7.33.01 should be used when it is the examiner’s position that a feature considered critical or essential by applicant to the practice of the claimed invention is missing from the claim.

¶ 7.33.01    Rejection, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 1st Paragraph, Essential Subject Matter Missing From Claims (Enablement)

Claim [1] rejected under 35 U.S.C. 112(a)  or pre-AIA 35 U.S.C. 112, first paragraph, as based on a disclosure which is not enabling. [2] critical or essential to the practice of the invention, but not included in the claim(s) is not enabled by the disclosure. See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976). [3]

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.01 or 7.103.

2. In bracket 2, recite the subject matter omitted from the claims.

3. In bracket 3, give the rationale for considering the omitted subject matter critical or essential.

4. The examiner shall cite the statement, argument, date, drawing, or other evidence which demonstrates that a particular feature was considered essential by the applicant, is not reflected in the claims which are rejected.

706.03(d)   Rejections Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, Second Paragraph [R-11.2013]

Rejections under 35 U.S.C. 112(b)  or pre-AIA 35 U.S.C. 112, second paragraph, are discussed in MPEP § 2171 - § 2174 and § 2181, subsection II. Form paragraphs 7.30.02, 7.34 through 7.34.19, 7.35 and 7.35.01 should be used to make rejections under 35 U.S.C. 112(b)  or pre-AIA 35 U.S.C. 112, second paragraph.

¶ 7.30.02    Statement of Statutory Basis, 35 U.S.C. 112(b) and pre-AIA 35 U.S.C. 112, Second Paragraph

The following is a quotation of 35 U.S.C. 112(b):

(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.

The following is a quotation of pre-AIA 35 U.S.C. 112, second paragraph:

The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.

Examiner Note:

1. The statute is no longer being re-cited in all Office actions. It is only required in first actions on the merits and final rejections. Where the statute is not being cited in an action on the merits, use paragraph 7.103.

2. Paragraphs 7.30.01 and 7.30.02 are to be used ONLY ONCE in a given Office action.

¶ 7.34    Rejection, 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd Paragraph, Failure To Claim Inventor’s Invention

Claim [1] rejected under 35 U.S.C. 112(b)  or pre-AIA 35 U.S.C. 112, second paragraph, as failing to set forth the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant(s) regard as their invention. Evidence that claim [2] fail(s) to correspond in scope with that which the inventor or a joint inventor, or for pre-AIA the applicant(s) regard as the invention can be found in the reply filed [3]. In that paper, the inventor or a joint inventor, or for pre-AIA the applicant has stated [4], and this statement indicates that the invention is different from what is defined in the claim(s) because [5].

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.

2. This paragraph is to be used only where inventor or applicant has stated, somewhere other than in the application, as filed, that the invention is something different from what is defined in the claim(s).

3. In bracket 3, identify the submission by inventor or applicant (which is not the application, as filed, but may be in the remarks by applicant, in the brief, in an affidavit, etc.) by the date the paper was filed in the USPTO.

4. In bracket 4, set forth what inventor or applicant has stated in the submission to indicate a different invention.

5. In bracket 5, explain how the statement indicates an invention other than what is being claimed.

¶ 7.34.01    Rejection, 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd Paragraph, Failure To Particularly Point out and Distinctly Claim (Indefinite)

Claim [1] rejected under 35 U.S.C. 112(b)  or pre-AIA 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.

2. This form paragraph should be followed by one or more of the following form paragraphs 7.34.02 - 7.34.11, as applicable. If none of these form paragraphs are appropriate, a full explanation of the deficiency of the claims should be supplied. Whenever possible, identify the particular term(s) or limitation(s) which render the claim(s) indefinite and state why such term or limitation renders the claim indefinite. If the scope of the claimed subject matter can be determined by one having ordinary skill in the art, a rejection using this form paragraph would not be appropriate. See MPEP §§ 2171 - 2174 for guidance. See also form paragraph 7.34.15 for pro se applicants.

¶ 7.34.02    Terminology Used Inconsistent with Accepted Meaning

Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term "[1]" in claim [2] is used by the claim to mean "[3]", while the accepted meaning is "[4]." The term is indefinite because the specification does not clearly redefine the term.

Examiner Note:

1. In bracket 3, point out the meaning that is assigned to the term by applicant’s claims, taking into account the entire disclosure.

2. In bracket 4, point out the accepted meaning of the term. Support for the examiner’s stated accepted meaning should be provided through the citation of an appropriate reference source, e.g., textbook or dictionary. See MPEP § 2173.05(a).

3. This paragraph must be preceded by form paragraph 7.34.01.

4. This paragraph should only be used where the specification does not clearly redefine the claim term at issue.

¶ 7.34.03    Relative Term - Term of Degree Rendering Claim Indefinite

The term "[1]" in claim [2] is a relative term which renders the claim indefinite. The term "[1]" is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. [3]

Examiner Note:

1. In bracket 3, explain which parameter, quantity, or other limitation in the claim has been rendered indefinite by the use of the term appearing in bracket 1.

2. This form paragraph must be preceded by form paragraph 7.34.01.

¶ 7.34.04    Broader Range/Limitation And Narrow Range/Limitation in Same Claim

A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Note the explanation given by the Board of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), as to where broad language is followed by "such as" and then narrow language. The Board stated that this can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Note also, for example, the decisions of Ex parte Steigewald, 131 USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949). In the present instance, claim [1] recites the broad recitation [2], and the claim also recites [3] which is the narrower statement of the range/limitation.

Examiner Note:

1. In bracket 2, insert the broader range/limitation and where it appears in the claim; in bracket 3, insert the narrow range/limitation and where it appears. This form paragraph may be modified to fit other instances of indefiniteness in the claims.

2. This form paragraph must be preceded by form paragraph 7.34.01.

¶ 7.34.05    Lack of Antecedent Basis in the Claims

Claim [1] recites the limitation [2] in [3]. There is insufficient antecedent basis for this limitation in the claim.

Examiner Note:

1. In bracket 2, insert the limitation which lacks antecedent basis, for example --said lever-- or --the lever--.

2. In bracket 3, identify where in the claim(s) the limitation appears, for example, --line 3--, --the 3rd paragraph of the claim--, --the last 2 lines of the claim--, etc.

3. This form paragraph should ONLY be used in aggravated situations where the lack of antecedent basis makes the scope of the claim indeterminate. It must be preceded by form paragraph 7.34.01.

¶ 7.34.06    Use Claims

Claim [1] provides for the use of [2], but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Claim [3] is rejected under 35 U.S.C. 101  because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).

Examiner Note:

1. In bracket 2, insert what is being used. For example, insert --the monoclonal antibodies of claim 4--, where the claim recites "a method for using monoclonal antibodies of claim 4 to purify interferon."

2. See MPEP § 2173.05(q).

3. This form paragraph must be preceded by form paragraph 7.34.01.

¶ 7.34.07    Claims Are a Literal Translation

The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors.

Examiner Note:

This form paragraph must be preceded by form paragraph 7.34.01.

¶ 7.34.08    Indefinite Claim Language: "For Example"

Regarding claim [1], the phrase "for example" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).

Examiner Note:

This form paragraph must be preceded by form paragraph 7.34.01.

¶ 7.34.09    Indefinite Claim Language: "Or The Like"

Regarding claim [1], the phrase "or the like" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "or the like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).

Examiner Note:

This form paragraph must be preceded by form paragraph 7.34.01.

¶ 7.34.10    Indefinite Claim Language: "Such As"

Regarding claim [1], the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).

Examiner Note:

This form paragraph must be preceded by form paragraph 7.34.01.

¶ 7.34.11    Modifier of "Means" Lacks Function

Regarding claim [1], the word "means" is preceded by the word(s) "[2]" in an attempt to use a "means" clause to recite a claim element as a means for performing a specified function. However, since no function is specified by the word(s) preceding "means," it is impossible to determine the equivalents of the element, as required by 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. See Ex parte Klumb, 159 USPQ 694 (Bd. App. 1967).

Examiner Note:

1. It is necessary for the words which precede "means" to convey a function to be performed. For example, the phrase "latch means" is definite because the word "latch" conveys the function "latching." In general, if the phrase can be restated as "means for ________," and it still makes sense, it is definite. In the above example, "latch means" can be restated as "means for latching." This is clearly definite. However, if "conduit means" is restated as "means for conduiting," the phrase makes no sense because the word "conduit" has no functional connotation, and the phrase is indefinite.

2. This form paragraph must be preceded by form paragraph 7.34.01.

¶ 7.34.12    Essential Steps Omitted

Claim [1] rejected under 35 U.S.C. 112(b)  or pre-AIA 35 U.S.C. 112, second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: [2]

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.

2. In bracket 2, recite the steps omitted from the claims.

3. Give the rationale for considering the omitted steps critical or essential.

¶ 7.34.13    Essential Elements Omitted

Claim [1] rejected under 35 U.S.C. 112(b)  or pre-AIA 35 U.S.C. 112, second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: [2]

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.

2. In bracket 2, recite the elements omitted from the claims.

3. Give the rationale for considering the omitted elements critical or essential.

¶ 7.34.14    Essential Cooperative Relationships Omitted

Claim [1] rejected under 35 U.S.C. 112(b)  or pre-AIA 35 U.S.C. 112, second paragraph, as being incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. See MPEP § 2172.01. The omitted structural cooperative relationships are: [2]

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.

2. In bracket 2, recite the structural cooperative relationships of elements omitted from the claims.

3. Give the rationale for considering the omitted structural cooperative relationships of elements being critical or essential.

¶ 7.34.15    Rejection Under 35 U.S.C. 112, Pro Se

Claim [1] rejected as failing to define the invention in the manner required by 35 U.S.C. 112(b)  or pre-AIA 35 U.S.C. 112, second paragraph.

The claim(s) are narrative in form and replete with indefinite language. The structure which goes to make up the device must be clearly and positively specified. The structure must be organized and correlated in such a manner as to present a complete operative device. The claim(s) must be in one sentence form only. Note the format of the claims in the patent(s) cited.

¶ 7.34.16     Rejections Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, Second Paragraph, Unclear Whether the Recited Structure, Material, or Acts in the Claim Preclude Application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, Sixth Paragraph

The claim limitation "[1]" uses the phrase "means for" or "step for" or a generic placeholder coupled with functional language, but it is modified by some structure, material, or acts recited in the claim. It is unclear whether the recited structure, material, or acts are sufficient for performing the claimed function because [2].

If applicant wishes to have the claim limitation treated under 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may amend the claim so that the phrase "means for" or "step for" or the generic placeholder is clearly not modified by sufficient structure, material, or acts for performing the claimed function, or may present a sufficient showing that the claim limitation is written as a function to be performed and the claim does not recite sufficient structure, material, or acts for performing the claimed function.

If applicant does not wish to have the claim limitation treated under 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may amend the claim so that it will clearly not invoke 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph

Examiner Note:

1.       In bracket 1, recite the claim limitation that causes the claim to be rejected under 35 U.S.C. 112(b)  or pre-AIA 35 U.S.C. 112, second paragraph.

2.       In bracket 2, explain why it is unclear whether the claim limitation invokes 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., why it is unclear whether the limitation recites sufficient structure, material, or acts to preclude the application of 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph.)

3.        This form paragraph may be used when the phrase "means for" or "step for" is used in the claim limitation and it is unclear to one of ordinary skill in the art whether the recited structure, material, or acts in the claim are sufficient for performing the claimed function.

4.        This form paragraph must be preceded by form paragraphs 7.30.02 and 7.34.01.

¶ 7.34.17     Rejections Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd Paragraph, Applicant Asserts that Claim Limitation Is Invoking 35 U.S.C. 112(f) or pre-AIA 35 US.C. 112, Sixth Paragraph, but the Phrase "Means for" or "Step for" Is Not Used

Applicant asserts that the claim element "[1]" is a limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, it is unclear whether the claim element invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because [2].  If applicant wishes to have the claim limitation treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may:

(a)        Amend the claim to include the phrase "means for" or "step for". The phrase "means for" or "step for" must be modified by functional language, and the phrase or term must not be modified by sufficient structure, material, or acts for performing the claimed function; or

(b)        Present a sufficient showing that the claim limitation is written as a function to be performed and the claim does not recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. For more information, see MPEP § 2181.

Examiner Note:

1.        This form paragraph may be used in response to an applicant’s reply in which applicant asserted that a claim limitation is invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, even though the phrase "means for" or "step for" is not used in the claim limitation. See MPEP § 706.07(a) for guidance on when the second action may be made final.  

2.        In bracket 1, recite the claim limitation that causes the claim to be rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.

3.        In bracket 2, explain why it is unclear whether the claim limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. For example, it is unclear whether the claim limitation is modified by sufficient structure for performing the claimed function or it is unclear whether the corresponding structure is sufficiently disclosed in the written description of the specification.

4.        This form paragraph must be preceded by form paragraphs 7.30.02 and 7.34.01.

¶ 7.34.18     Rejections Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd Paragraph, No Disclosure or Insufficient Disclosure of the Structure, Material, or Acts for Performing the Function Recited in a Claim Limitation Invoking 35 U.S.C. 112, Sixth Paragraph

Claim element "[1]" is a limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for the claimed function. [2]

Applicant may:

(a)        Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph; or

(b)        Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the claimed function, without introducing any new matter (35 U.S.C. 132(a) ).

If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:

(a)        Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a) ); or

(b)        Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d)  and MPEP § 608.01(o) and 2181.

Examiner Note:

1.        In bracket 1, recite the limitation that invokes 35 U.S.C. 112, sixth paragraph.

2.        In bracket 2, explain why there is insufficient disclosure of the corresponding structure, material, or acts for performing the claimed function.

3.        This form paragraph must be preceded by form paragraphs 7.30.02 and 7.34.01.

¶ 7.34.19     Rejections Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd Paragraph, Fails To Clearly Link or Associate the Disclosed Structure, Material, or Acts to the Function Recited in a Claim Limitation Invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, Sixth Paragraph

Claim element "[1]" is a limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to clearly link or associate the disclosed structure, material, or acts to the claimed function such that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function. [2]

Applicant may:

(a)        Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph; or

(b)        Amend the written description of the specification such that it clearly links or associates the corresponding structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or

(c)        State on the record where the corresponding structure, material, or acts are set forth in the written description of the specification and linked or associated to the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.

Examiner Note:

1.        In bracket 1, recite the limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112  , sixth paragraph.

2.        In bracket 2, explain why the written description of the specification fails to clearly link or associate the structure, material, or acts to the claimed function.

3.        This form paragraph must be preceded by form paragraphs 7.30.02 and 7.34.01.

¶ 7.35    Rejection, 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd Paragraph, Failure To Particularly Point out and Distinctly Claim - Omnibus Claim

Claim [1] rejected under 35 U.S.C. 112(b)  or pre-AIA 35 U.S.C. 112, second paragraph, as being indefinite in that it fails to point out what is included or excluded by the claim language. This claim is an omnibus type claim.

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.

2. Use this paragraph to reject an "omnibus" type claim. No further explanation is necessary.

3. See MPEP § 1302.04(b) for cancellation of such a claim by examiner’s amendment upon allowance.

4. An example of an omnibus claim is: "A device substantially as shown and described."

¶ 7.35.01    Trademark or Trade Name as a Limitation in the Claim

Claim [1] contains the trademark/trade name [2]. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b)  or pre-AIA 35 U.S.C. 112, second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe [3] and, accordingly, the identification/description is indefinite.

Examiner Note:

1. In bracket 2, insert the trademark/trade name and where it is used in the claim.

2. In bracket 3, specify the material or product which is identified or described in the claim by the trademark/trade name.

706.03(e)   Form Paragraphs for Use Relating to 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, Sixth Paragraph [R-11.2013]

Form paragraphs 7.34.20 - 7.34.22 should be used when a claim limitation invokes 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph. See MPEP § 2181. For rejections under 35 U.S.C. 112(b)  or pre-AIA 35 U.S.C. 112, second paragraph relating to 35 U.S.C. 112, sixth paragraph, use form paragraphs 7.34.16 to 7.34.19, reproduced in MPEP § 706.03(d).

¶ 7.34.20     The Specification Is Objected To; the Written Description Only Implicitly or Inherently Discloses the Structure, Material, or Acts for Performing the Function Recited in a Claim Limitation Invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, Sixth Paragraph

Claim element "[1]" is a limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The written description only implicitly or inherently sets forth the corresponding structure, material, or acts that perform the claimed function.

Pursuant to 37 CFR 1.75(d)  and MPEP §§ 608.01(o) and 2181, applicant should:

(a)        Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph; or

(b)        Amend the written description of the specification such that it expressly recites the corresponding structure, material, or acts that perform the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a) ); or

(c)        State on the record what corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function.

Examiner Note:

In bracket 1, recite the limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.

¶ 7.34.21    Claim Limitation Interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, Sixth Paragraph

Claim limitation(s) "[1]" has/have been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses/they use a generic placeholder "[2]" coupled with functional language "[3]" without reciting sufficient structure to achieve the function.  Furthermore, the generic placeholder is not preceded by a structural modifier.  [4].

Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claim(s) [5] has/have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.  

A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation: [6].  

If applicant wishes to provide further explanation or dispute the examiner's interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.

If applicant does not intend to have the claim limitation(s) treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may amend the claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.

For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).

Examiner Note:

1. Use this form paragraph ONLY when additional explanation regarding treatment under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is necessary. For example, use this paragraph if clarification is needed when a claim element does not use the word "means" but no structure for performing the function is recited in the claim itself or when the associated structure in the specification for performing the function is needs explanation. If the claim element clearly invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph and the corresponding structure is easily identified in the specification for performing the claimed function, it is not necessary to use this form paragraph.

Examiner Note:

2. This paragraph may be used to explain more than one claim when multiple claims recite similar language or raise similar issues.

Examiner Note:

3. In bracket 1, recite the claim limitation that has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.

4. In bracket 2, recite the generic placeholder that is merely a substitute for the term "means."

5. In bracket 3, recite the functional language.

6. In bracket 4, provide an explanation, if appropriate, why the generic placeholder is not recognized as the name of a structure but is merely a substitute for the term "means."

7. In bracket 5, recite the claim number(s) of the claim(s) that contains/contain the claim limitation.

8. In bracket 6, recite the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters.

¶ 7.34.22    Rejections Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd paragraph, Applicant Asserts that Claim Limitation Does Not Invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, 6th Paragraph, but No Structure is Recited to Perform the Claimed Function

Applicant asserts that the claim element "[1]" is a limitation that does not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, 6th paragraph. However, it is unclear whether the claim element invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, 6th paragraph because [2]. If applicant does not wish to have the claim limitation treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, 6th Paragraph applicant may:

    • (a) Amend the claim to add structure, material or acts that are sufficient to perform the claimed function; or
    • (b) Present a sufficient showing that the claim limitation recites sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. For more information, see MPEP § 2181.

Examiner Note:

1. This form paragraph may be used in response to an applicant’s reply in which applicant asserted that a claim limitation does not invoke 35 U.S.C. 112(f), even though no structure is provided in the claim limitation for performing the function. See MPEP § 706.07(a) for guidance on when the second action may be made final.

2. In bracket 1, recite the claim limitation that causes the claim to be rejected under 35 U.S.C. 112(b)  or pre-AIA 35 U.S.C. 112, second paragraph.

3. In bracket 2, explain why it is unclear whether the claim limitation invokes 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph. For example, it is unclear whether the claim limitation is modified by sufficient structure for performing the claimed function.

4. This form paragraph must be preceded by form paragraphs 7.30.02 and 7.34.01.

706.03(f) - 706.03(j)   [Reserved]

706.03(k)   Duplicate Claims [R-08.2012]

Inasmuch as a patent is supposed to be limited to only one invention or, at most, several closely related indivisible inventions, limiting an application to a single claim, or a single claim to each of the related inventions might appear to be logical as well as convenient. However, court decisions have confirmed applicant’s right to restate (i.e., by plural claiming) the invention in a reasonable number of ways. Indeed, a mere difference in scope between claims has been held to be enough.

Nevertheless, when two claims in an application are duplicates, or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other claim under 37 CFR 1.75  as being a substantial duplicate of the allowed claim.

Form paragraphs 7.05.05 and 7.05.06 may be used where duplicate claims are present in an application.

¶ 7.05.05    Duplicate Claims, Warning

Applicant is advised that should claim [1] be found allowable, claim [2] will be objected to under 37 CFR 1.75  as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 706.03(k).

Examiner Note:

1. Use this form paragraph whenever two claims are found to be substantial duplicates, but they are not allowable. This will give the applicant an opportunity to correct the problem and avoid a later objection.

2. If the claims are allowable, use form paragraph 7.05.06.

¶ 7.05.06    Duplicate Claims, Objection

Claim [1] objected under 37 CFR 1.75  as being a substantial duplicate of claim [2]. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 706.03(k).

Examiner Note:

If the duplicate claims are not allowable, use form paragraph 7.05.05.

See MPEP § 804 for double patenting rejections of inventions not patentable over each other.

706.03(l)   [Reserved]

706.03(m)   Nonelected Inventions [R-08.2012]

See MPEP § 821 to § 821.03 for treatment of claims held to be drawn to nonelected inventions.

706.03(n)   [Reserved]

706.03(o)   New Matter [R-08.2012]

35 U.S.C. 132   Notice of rejection; reexamination.

  • (a) Whenever, on examination, any claim for a patent is rejected, or any objection or requirement made, the Director shall notify the applicant thereof, stating the reasons for such rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application; and if after receiving such notice, the applicant persists in his claim for a patent, with or without amendment, the application shall be reexamined. No amendment shall introduce new matter into the disclosure of the invention.

*****

In amended cases, subject matter not disclosed in the original application is sometimes added and a claim directed thereto. Such a claim is rejected on the ground that it recites elements without support in the original disclosure under 35 U.S.C. 112(a)  or pre-AIA 35 U.S.C. 112, first paragraph, Waldemar Link, GmbH & Co. v. Osteonics Corp., 32 F.3d 556, 559, 31 USPQ2d 1855, 1857 (Fed. Cir. 1994); In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981). See MPEP § 2163.06 - § 2163.07(b) for a discussion of the relationship of new matter to 35 U.S.C. 112(a)  or pre-AIA 35 U.S.C. 112, first paragraph. New matter includes not only the addition of wholly unsupported subject matter, but may also include adding specific percentages or compounds after a broader original disclosure, or even the omission of a step from a method. See MPEP § 608.04 to § 608.04(c). See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) and MPEP § 2163.05 for guidance in determining whether the addition of specific percentages or compounds after a broader original disclosure constitutes new matter.

In the examination of an application following amendment thereof, the examiner must be on the alert to detect new matter. 35 U.S.C. 132(a)  should be employed as a basis for objection to amendments to the abstract, specification, or drawings attempting to add new disclosure to that originally disclosed on filing.

If subject matter capable of illustration is originally claimed and it is not shown in the drawing, the claim is not rejected but applicant is required to add it to the drawing. See MPEP § 608.01(l).

If new matter is added to the specification, it should be objected to by using Form Paragraph 7.28.

¶ 7.28    Objection to New Matter Added to Specification

The amendment filed [1] is objected to under 35 U.S.C. 132 (a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a)  states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: [2].

Applicant is required to cancel the new matter in the reply to this Office action.

Examiner Note:

1. This form paragraph is not to be used in reissue applications; use form paragraph 14.22.01 instead.

2. In bracket 2, identify the new matter by page and the line numbers and/or drawing figures and provide an appropriate explanation of your position. This explanation should address any statement by applicant to support the position that the subject matter is described in the specification as filed. It should further include any unresolved questions which raise a doubt as to the possession of the claimed invention at the time of filing.

3. If new matter is added to the claims, or affects the claims, a rejection under 35 U.S.C. 112(a)  or pre-AIA 35 U.S.C. 112, first paragraph, using form paragraph 7.31.01 should also be made. If new matter is added only to a claim, an objection using this paragraph should not be made, but the claim should be rejected using form paragraph 7.31.01. As to any other appropriate prior art or 35 U.S.C. 112  rejection, the new matter must be considered as part of the claimed subject matter and cannot be ignored.

706.03(p) - 706.03(r)   [Reserved]

706.03(s)   Foreign Filing Without License [R-11.2013]

35 U.S.C. 182   Abandonment of invention for unauthorized disclosure.

The invention disclosed in an application for patent subject to an order made pursuant to section 181  may be held abandoned upon its being established by the Commissioner of Patents that in violation of said order the invention has been published or disclosed or that an application for a patent therefor has been filed in a foreign country by the inventor, his successors, assigns, or legal representatives, or anyone in privity with him or them, without the consent of the Commissioner of Patents. The abandonment shall be held to have occurred as of the time of violation. The consent of the Commissioner of Patents shall not be given without the concurrence of the heads of the departments and the chief officers of the agencies who caused the order to be issued. A holding of abandonment shall constitute forfeiture by the applicant, his successors, assigns, or legal representatives, or anyone in privity with him or them, of all claims against the United States based upon such invention.

35 U.S.C. 184   Filing of application in foreign country.

    • (a) FILING IN FOREIGN COUNTRY.—Except when authorized by a license obtained from the Commissioner of Patents a person shall not file or cause or authorize to be filed in any foreign country prior to six months after filing in the United States an application for patent or for the registration of a utility model, industrial design, or model in respect of an invention made in this country. A license shall not be granted with respect to an invention subject to an order issued by the Commissioner of Patents pursuant to section 181  without the concurrence of the head of the departments and the chief officers of the agencies who caused the order to be issued. The license may be granted retroactively where an application has been filed abroad through error and the application does not disclose an invention within the scope of section 181.
    • (b) APPLICATION.—The term "application" when used in this chapter includes applications and any modifications, amendments, or supplements thereto, or divisions thereof.
    • (c) SUBSEQUENT MODIFICATIONS, AMENDMENTS, AND SUPPLEMENTS.—The scope of a license shall permit subsequent modifications, amendments, and supplements containing additional subject matter if the application upon which the request for the license is based is not, or was not, required to be made available for inspection under section 181  and if such modifications, amendments, and supplements do not change the general nature of the invention in a manner which would require such application to be made available for inspection under such section 181. In any case in which a license is not, or was not, required in order to file an application in any foreign country, such subsequent modifications, amendments, and supplements may be made, without a license, to the application filed in the foreign country if the United States application was not required to be made available for inspection under section 181  and if such modifications, amendments, and supplements do not, or did not, change the general nature of the invention in a manner which would require the United States application to have been made available for inspection under such section 181.

35 U.S.C. 185   Patent barred for filing without license.

Notwithstanding any other provisions of law any person, and his successors, assigns, or legal representatives, shall not receive a United States patent for an invention if that person, or his successors, assigns, or legal representatives shall, without procuring the license prescribed in section 184, have made, or consented to or assisted another’s making, application in a foreign country for a patent or for the registration of a utility model, industrial design, or model in respect of the invention. A United States patent issued to such person, his successors, assigns, or legal representatives shall be invalid, unless the failure to procure such license was through error, and the patent does not disclose subject matter within the scope of section 181.

If, upon examining an application, the examiner learns of the existence of a corresponding foreign application which appears to have been filed before the United States application had been on file for 6 months, and if the invention apparently was made in this country, he or she shall refer the application to Licensing and Review Section of Technology Center (TC) working group 3640, calling attention to the foreign application. Pending investigation of the possible violation, the application may be returned to the TC for prosecution on the merits. When it is otherwise in condition for allowance, the application will be again submitted to Licensing and Review Section of TC work group 3640 unless the latter has already reported that the foreign filing involves no bar to the United States application.

If it should be necessary to take action under 35 U.S.C. 185, Licensing and Review Section of TC work group 3640 will request transfer of the application to it.

706.03(t)   [Reserved]

706.03(u)   Disclaimer [R-11.2013]

Claims may be rejected on the ground that applicant has disclaimed the subject matter involved. Such disclaimer may arise, for example, from the applicant’s failure to:

    • (A) make claims suggested for interference with another application under 37 CFR 41.202(c)  (See MPEP Chapter 2300 ),
    • (B) copy a claim from a patent when suggested by the examiner (MPEP Chapter 2300 ), or
    • (C) respond or appeal, within the time limit fixed, to the examiner’s rejection of claims copied from a patent (see MPEP Chapter 2300 ).

The rejection on disclaimer applies to all claims not patentably distinct from the disclaimed subject matter as well as to the claims directly involved.

Rejections based on disclaimer should be made by using one of Form Paragraphs 7.48 and 7.49.

¶ 7.48.fti    Failure To Present Claims for Interference

Claim [1] rejected under pre-AIA 35 U.S.C. [2] based upon claim [3] of Patent No. [4].

Failure to present claims and/or take necessary steps for interference purposes after notification that interfering subject matter is claimed constitutes a disclaimer of the subject matter. This amounts to a concession that, as a matter of law, the patentee is the first inventor in this country. See In re Oguie, 517 F.2d 1382, 186 USPQ 227 (CCPA 1975).

Examiner Note:

1. This form paragraph should be used only after applicant has been notified that interference proceedings must be instituted before the claims can be allowed and applicant has refused to copy the claims.

2. In bracket 2, insert --102(g)-- or --102(g)/103(a)--.

3. In bracket 4, insert the patent number, and --in view of _____-- if another reference is also relied upon. When the rejection is under pre-AIA 35 U.S.C. 103(a), the examiner’s basis for a finding of obviousness should be included. Note that interferences may include obvious variants, see MPEP Chapter 2300.

¶ 7.48.aia    Failure To Present Claims for Interference

Claim [1] rejected under pre-AIA 35 U.S.C. [2] based upon claim [3] of Patent No. [4].

Failure to present claims and/or take necessary steps for interference purposes after notification that interfering subject matter is claimed constitutes a disclaimer of the subject matter. This amounts to a concession that, as a matter of law, the patentee is the first inventor in this country. See In re Oguie, 517 F.2d 1382, 186 USPQ 227 (CCPA 1975).

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, and the application also contains or contained at any time (1) a claim to an invention having an effective filing date as defined in 35 U.S.C. 100(i)  that is before March 16, 2013, or (2) a specific reference under 35 U.S.C. 120, 121, or 365(c)  to any patent or application that contains or contained at any time such a claim.

2. This form paragraph should be used only after applicant has been notified that interference proceedings must be instituted before the claims can be allowed and applicant has refused to copy the claims.

3. In bracket 2, insert --102(g)-- or --102(g)/103(a)--.

4. In bracket 4, insert the patent number, and --in view of _____-- if another reference is also relied upon. When the rejection is under pre-AIA 35 U.S.C. 102(g) /103(a), the examiner’s basis for a finding of obviousness should be included. Note that interferences may include obvious variants, see MPEP Chapter 2300.

5. This form paragraph must be preceded by form paragraph 7.14.aia, or by form paragraph 7.103.

¶ 7.49    Rejection, Disclaimer, Failure To Appeal

An adverse judgment against claim [1] has been entered by the Board. Claim [2] stand(s) finally disposed of for failure to reply to or appeal from the examiner’s rejection of such claim(s) presented for interference within the time for appeal or civil action specified in 37 CFR 90.3. Adverse judgment against a claim is a final action of the Office requiring no further action by the Office to dispose of the claim permanently. See 37 CFR 41.127(a)(2).

706.03(v)   After Interference or Former Public Use Proceeding [R-11.2013]

For rejections following an interference, see MPEP Chapter 2300.

The outcome of public use proceedings may also be the basis of a rejection. See 37 CFR 1.292 in effect on September 15, 2012, and In re Kaslow, 707 F.2d 1366, 217 USPQ 1089 (Fed. Cir. 1983). Public use proceedings, effective September 16, 2012, are no longer authorized. For certain patents, prior public use may be raised in a post-grant review proceeding. See 35 U.S.C. 321 -329. Information on prior public use may continue to be submitted by third parties via a protest in a pending application when the requirements of 37 CFR 1.291  have been met, and utilization of 37 CFR 1.291  will promote Office efficiency with respect to treatment of these issues. See MPEP § 1901.02.

706.03(w)   Res Judicata [R-11.2013]

Res judicata may constitute a proper ground for rejection. However, res judicata rejections should be applied only when the earlier decision was a decision of the Patent Trial and Appeal Board (or its predecessor Board) or any one of the reviewing courts and when there is no opportunity for further court review of the earlier decision.

The timely filing of a second application copending with an earlier application does not preclude the use of res judicata as a ground of rejection for the second application claims. A patent owner or applicant is precluded from seeking a claim that is not patentably distinct from a claim that was finally refused or canceled during an administrative trial. Similarly, a patent owner is precluded from seeking an amendment of a specification or drawing that was denied entry during a trial if the application or patent for which the amendment is sought has the same written description as the patent or application that was the subject of the administrative trial. See 37 CFR 42.73(d)(3).

When making a rejection on res judicata, action should ordinarily be made also on the basis of prior art, especially in continuing applications. In most situations the same prior art which was relied upon in the earlier decision would again be applicable.

In the following cases a rejection of a claim on the ground of res judicata was sustained where it was based on a prior adjudication, against the inventor on the same claim, a patentably nondistinct claim, or a claim involving the same issue.

In re Freeman, 30 F.3d 1459, 31 USPQ 2d 1444 (Fed. Cir. 1994).

Edgerton v. Kingland, 168 F. 2d 121, 75 USPQ 307 (D.C. Cir. 1947).

In re Szwarc, 319 F.2d 277, 138 USPQ 208 (CCPA 1963).

In re Katz, 467 F.2d 939, 167 USPQ 487 (CCPA 1970) (prior decision by District Court).

In the following cases for various reasons, res judicata rejections were reversed.

In re Fried, 312 F.2d 930, 136 USPQ 429 (CCPA 1963) (differences in claims).

In re Szwarc, 319 F.2d 277, 138 USPQ 208 (CCPA 1963) (differences in claim).

In re Hellbaum, 371 F.2d 1022, 152 USPQ 571 (CCPA 1967) (differences in claims).

In re Herr, 377 F.2d 610, 153 USPQ 548 (CCPA 1967) (same claims, new evidence, prior decision by CCPA).

In re Kaghan, 387 F.2d 398, 156 USPQ 130 (CCPA 1967) (prior decision by Board of Appeals, final rejection on prior art withdrawn by examiner "to simplify the issue," differences in claims; holding of waiver based on language in MPEP at the time).

In re Craig, 411 F.2d 1333, 162 USPQ 157 (CCPA 1969) (Board of Appeals held second set of claims patentable over prior art).

In re Fisher, 427 F.2d 833, 166 USPQ 18 (CCPA 1970) (difference in claims).

In re Russell, 439 F.2d 1228, 169 USPQ 426 (CCPA 1971) (new evidence, rejection on prior art reversed by court).

In re Ackermann, 444 F.2d 1172, 170 USPQ 340 (CCPA 1971) (prior decision by Board of Appeals, new evidence, rejection on prior art reversed by court).

Plastic Contact Lens Co. v. Gottschalk, 484 F.2d 837, 179 USPQ 262 (D.C. Cir. 1973) (follows In re Kaghan).

706.03(x)   Reissue [R-11.2013]

The examination of reissue applications is covered in MPEP Chapter 1400.

35 U.S.C. 251  forbids the granting of a reissue "enlarging the scope of the claims of the original patent" unless the reissue is applied for within 2 years from the grant of the original patent (or the reissue application properly claims the benefit of a broadening reissue application filed within 2 years of the patent grant). This is an absolute bar and cannot be excused. This prohibition has been interpreted to apply to any claim which is broader in any respect than the claims of the original patent. Such claims may be rejected as being barred by 35 U.S.C. 251.

For a reissue application filed prior to September 16, 2012, 35 U.S.C. 251  permits the filing of a reissue application by the assignee of the entire interest only in cases where it does not "enlarge the scope of the claims of the original patent." For reissue applications filed on or after September 16, 2012, the assignee of the entire interest may file the reissue application if (1) the application does not seek to enlarge the scope of the claims of the original patent, or (2) the application for the original patent was filed under 37 CFR 1.46  by the assignee of the entire interest. Such claims which do enlarge the scope may also be rejected as barred by the statute. In In re Bennett, 766 F.2d 524, 226 USPQ 413 (Fed. Cir. 1985), however, the court permitted the erroneous filing by the assignee in such a case to be corrected.

A defective reissue oath affords a ground for rejecting all the claims in the reissue application. See MPEP § 1444.

Note that a reissue application is "special" and remains so even if applicant does not make a prompt reply. See MPEP § 1442.