How are rejections under pre-AIA 35 U.S.C. 103(a) formulated?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-29 10 Rules 5 Related FAQs 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. Rejections under pre-AIA 35 U.S.C. 103(a) are formulated using form paragraph 7.21.fti. This paragraph provides the basic structure for stating the rejection: Claim [1] is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over [2]. The examiner fills in the claim numbers being rejected in bracket [1] and the prior art reference(s) being relied upon in bracket [2]. The MPEP instructs: An explanation of the rejection must follow this form paragraph. See MPEP § 2144. For rejections involving additional references, form paragraph 7.22.fti is used: Claim [1] rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over [2] as applied to claim [3] above, and further in view of [4]. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Form Paragraphs for Obviousness Rejections Under Pre-AIA 35 U.S.C. 103 MPEP 2148 Recommended When to Use Rejection Paragraphs Under Pre-AIA 35 U.S.C. 102 or 103(a) MPEP 2148 Recommended Rejection Must Follow Form Paragraph 7.21.fti MPEP 2148 Required Form Paragraph 7.20.01.fti Required for Obviousness Rejections MPEP 2148 Required Requirement for Identifying Reference Under Pre-AIA 103(c) MPEP 2148 Requirement for Including Form Paragraph Following Obviousness Rejection Using Disqualified Prior Art MPEP 2148 Required Requirement for Including Form Paragraph Where Common Ownership Not Proven MPEP 2148 Required Requirement for Including Form Paragraph When Joint Research Agreement Disqualification Fails MPEP 2148 Required Requirement for Pre-AIA Prior Art Under 102(a) or (b) MPEP 2148 Recommended Provisional Rejection Not Allowed for Disqualified Copending Applications MPEP 2148 Recommended Other Related FAQs 5 FAQs Collapse...