Can a prior art reference be used for both anticipation and obviousness rejections?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

Yes, a single prior art reference can be used for both anticipation (35 U.S.C. 102) and obviousness (35 U.S.C. 103) rejections. The MPEP 2136.02 states:

“A rejection under 35 U.S.C. 102 and 103 can be made when the prior art product seems to be identical except that the prior art is silent as to an inherent characteristic.”

This means that an examiner can use the same reference to:

• Reject claims under 35 U.S.C. 102 for anticipation if all elements are explicitly or inherently disclosed.
• Reject claims under 35 U.S.C. 103 for obviousness if some elements are not explicitly disclosed but would have been obvious to a person of ordinary skill in the art.

The flexibility in using prior art references for multiple types of rejections allows for a more comprehensive examination of patent applications.