MPEP § 2120.01 — Rejections Under 35 U.S.C. 102(a)(1) and (a)(2) and Pre-AIA 35 U.S.C. 102(a), (b), or (e): Printed Publication or Patent (Annotated Rules)
§2120.01 Rejections Under 35 U.S.C. 102(a)(1) and (a)(2) and Pre-AIA 35 U.S.C. 102(a), (b), or (e): Printed Publication or Patent
This page consolidates and annotates all enforceable requirements under MPEP § 2120.01, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Rejections Under 35 U.S.C. 102(a)(1) and (a)(2) and Pre-AIA 35 U.S.C. 102(a), (b), or (e): Printed Publication or Patent
This section addresses Rejections Under 35 U.S.C. 102(a)(1) and (a)(2) and Pre-AIA 35 U.S.C. 102(a), (b), or (e): Printed Publication or Patent. Primary authority: 35 U.S.C. 102(a)(1), 35 U.S.C. 102(a), and 35 U.S.C. 102. Contains: 1 requirement, 2 guidance statements, 1 permission, and 2 other statements.
Key Rules
Determining Whether Application Is AIA or Pre-AIA
Once the examiner conducts a search and finds a printed publication or patent which discloses the claimed invention, the examiner should determine whether the rejection should be made under 35 U.S.C. 102(a)(1) or (a)(2) or, if the application is subject to the former prior art regime, pre-AIA 35 U.S.C. 102(a), (b), or (e). See MPEP § 2159 for guidance. Form paragraph 7.03.aia or 7.03.fti should be used in an Office action to indicate whether the application is being examined under the first inventor to file provisions of the AIA or the pre-AIA prior art provisions, respectively.
In order to determine which paragraph of 35 U.S.C. 102 applies, the effective filing date of each claimed invention must be determined and compared with the date of the reference. See MPEP § 2139.01 regarding determination of effective filing date of the claimed invention under pre-AIA law and MPEP § 2152.01 regarding determination of effective filing date of the claimed invention under AIA law.
Prior Art Under AIA 35 U.S.C. 102 (MPEP 2150-2159)
See MPEP § 2152.05 for determining whether to apply 35 U.S.C. 102(a)(1) or (a)(2). See MPEP § 2139.02 for determining whether to apply pre-AIA 35 U.S.C. 102(a), (b), or (e).
See MPEP § 2152.06 for overcoming a rejection under 35 U.S.C. 102(a)(1) or (a)(2). See MPEP §§ 2132.01, 2133.02(a), and 2136.05 et seq. for overcoming prior art rejections under pre-AIA 35 U.S.C. 102(a), (b), and (e), respectively.
Form Paragraph Usage
Once the examiner conducts a search and finds a printed publication or patent which discloses the claimed invention, the examiner should determine whether the rejection should be made under 35 U.S.C. 102(a)(1) or (a)(2) or, if the application is subject to the former prior art regime, pre-AIA 35 U.S.C. 102(a), (b), or (e). See MPEP § 2159 for guidance. Form paragraph 7.03.aia or 7.03.fti should be used in an Office action to indicate whether the application is being examined under the first inventor to file provisions of the AIA or the pre-AIA prior art provisions, respectively.
Assignee as Applicant Signature
In all applications, an applicant may overcome a 35 U.S.C. 102 rejection by persuasively arguing that the claims are patentably distinguishable from the prior art, or by amending the claims to patentably distinguish over the prior art. Additional ways available to overcome a rejection based on 35 U.S.C. 102 prior art depend on whether or not any claim in the application being examined is subject to the first inventor to file provisions of the AIA.
AIA vs Pre-AIA Practice
In all applications, an applicant may overcome a 35 U.S.C. 102 rejection by persuasively arguing that the claims are patentably distinguishable from the prior art, or by amending the claims to patentably distinguish over the prior art. Additional ways available to overcome a rejection based on 35 U.S.C. 102 prior art depend on whether or not any claim in the application being examined is subject to the first inventor to file provisions of the AIA.
First Inventor to File (FITF) System
This form paragraph should be used in any application subject to the first inventor to file provisions of the AIA.
AIA Effective Dates
This form paragraph should be used in any application filed on or after March 16, 2013 that is subject to the pre-AIA prior art provisions.
Citations
| Primary topic | Citation |
|---|---|
| AIA vs Pre-AIA Practice Assignee as Applicant Signature Determining Whether Application Is AIA or Pre-AIA | 35 U.S.C. § 102 |
| Determining Whether Application Is AIA or Pre-AIA Form Paragraph Usage Prior Art Under AIA 35 U.S.C. 102 (MPEP 2150-2159) | 35 U.S.C. § 102(a) |
| Determining Whether Application Is AIA or Pre-AIA Form Paragraph Usage Prior Art Under AIA 35 U.S.C. 102 (MPEP 2150-2159) | 35 U.S.C. § 102(a)(1) |
| – | MPEP § 2124 |
| Prior Art Under AIA 35 U.S.C. 102 (MPEP 2150-2159) | MPEP § 2132.01 |
| Determining Whether Application Is AIA or Pre-AIA | MPEP § 2139.01 |
| Prior Art Under AIA 35 U.S.C. 102 (MPEP 2150-2159) | MPEP § 2139.02 |
| Determining Whether Application Is AIA or Pre-AIA | MPEP § 2152.01 |
| Prior Art Under AIA 35 U.S.C. 102 (MPEP 2150-2159) | MPEP § 2152.05 |
| Prior Art Under AIA 35 U.S.C. 102 (MPEP 2150-2159) | MPEP § 2152.06 |
| Determining Whether Application Is AIA or Pre-AIA Form Paragraph Usage | MPEP § 2159 |
| Determining Whether Application Is AIA or Pre-AIA Form Paragraph Usage | Form Paragraph § 7.03 |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 2120.01 — Rejections Under 35 U.S.C. 102(a)(1) and (a)(2) and Pre-AIA 35 U.S.C. 102(a), (b), or (e): Printed Publication or Patent
Source: USPTO2120.01 Rejections Under 35 U.S.C. 102(a)(1) and (a)(2) and Pre-AIA 35 U.S.C. 102(a), (b), or (e): Printed Publication or Patent [R-01.2024]
Once the examiner conducts a search and finds a printed publication or patent which discloses the claimed invention, the examiner should determine whether the rejection should be made under 35 U.S.C. 102(a)(1) or (a)(2) or, if the application is subject to the former prior art regime, pre-AIA 35 U.S.C. 102(a), (b), or (e). See MPEP § 2159 for guidance. Form paragraph 7.03.aia or 7.03.fti should be used in an Office action to indicate whether the application is being examined under the first inventor to file provisions of the AIA or the pre-AIA prior art provisions, respectively.
¶ 7.03.aia Application Examined Under AIA First Inventor to File Provisions
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA.
Examiner Note:
- This form paragraph should be used in any application subject to the first inventor to file provisions of the AIA.
¶ 7.03.fti Application Examined Under First to Invent provisions
The present application, filed on or after March 16, 2013, is being examined under the pre-AIA first to invent provisions.
Examiner Note:
- This form paragraph should be used in any application filed on or after March 16, 2013 that is subject to the pre-AIA prior art provisions.
In order to determine which paragraph of 35 U.S.C. 102 applies, the effective filing date of each claimed invention must be determined and compared with the date of the reference. See MPEP § 2139.01 regarding determination of effective filing date of the claimed invention under pre-AIA law and MPEP § 2152.01 regarding determination of effective filing date of the claimed invention under AIA law.
The examiner must also determine the issue or publication date of the reference so that a proper comparison between the application and reference dates can be made. See MPEP §§ 2124, 2126, 2128 – 2128.02, and 2152.02 – 2154.02(c) for case law relevant to reference date determination.
See MPEP § 2152.05 for determining whether to apply 35 U.S.C. 102(a)(1) or (a)(2). See MPEP § 2139.02 for determining whether to apply pre-AIA 35 U.S.C. 102(a), (b), or (e).
In all applications, an applicant may overcome a 35 U.S.C. 102 rejection by persuasively arguing that the claims are patentably distinguishable from the prior art, or by amending the claims to patentably distinguish over the prior art. Additional ways available to overcome a rejection based on 35 U.S.C. 102 prior art depend on whether or not any claim in the application being examined is subject to the first inventor to file provisions of the AIA.
See MPEP § 2152.06 for overcoming a rejection under 35 U.S.C. 102(a)(1) or (a)(2). See MPEP §§ 2132.01, 2133.02(a), and 2136.05et seq. for overcoming prior art rejections under pre-AIA 35 U.S.C. 102(a), (b), and (e), respectively.