MPEP § 2152.07 — Form Paragraphs for Use in Rejections Under AIA 35 U.S.C. 102 (Annotated Rules)
§2152.07 Form Paragraphs for Use in Rejections Under AIA 35 U.S.C. 102
This page consolidates and annotates all enforceable requirements under MPEP § 2152.07, 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.
Form Paragraphs for Use in Rejections Under AIA 35 U.S.C. 102
This section addresses Form Paragraphs for Use in Rejections Under AIA 35 U.S.C. 102. Primary authority: 35 U.S.C. 102, 35 U.S.C. 102(a)(2), and 35 U.S.C. 102(a)(1). Contains: 12 requirements, 8 guidance statements, and 2 permissions.
Key Rules
AIA vs Pre-AIA Practice
2. This form paragraph must be preceded by form paragraphs 7.03.aia and 7.07.aia.
2. This form paragraph must be preceded by form paragraphs 7.03.aia and 7.07.aia and may be preceded by 7.08.aia.
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. This form paragraph must be preceded by form paragraph 7.03.aia.
3. In bracket 2, insert either “(a)(1)” or “(a)(2)” or both. If paragraph (a)(2) of 35 U.S.C. 102 is applicable, use form paragraph 7.15.01.aia, 7.15.02.aia or 7.15.03.aia where applicable.
3. In bracket 2, insert either “(a)(1)” or “(a)(2)” or both. If paragraph (a)(2) of 35 U.S.C. 102 is applicable, use form paragraph 7.15.01.aia, 7.15.02.aia or 7.15.03.aia where applicable.
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. This form paragraph must be preceded by form paragraph 7.03.aia.
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. This form paragraph must be preceded by form paragraph 7.03.aia.
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. This form paragraph must be preceded by form paragraph 7.03.aia.
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. This form paragraph must be preceded by form paragraph 7.03.aia.
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. This form paragraph must be preceded by form paragraph 7.03.aia.
This form paragraph must be preceded by form paragraph 7.07.aia.
6. This rejection must be preceded either by form paragraph 7.07.aia and form paragraphs 7.08.aia, and 7.12.aia as appropriate, or by form paragraph 7.103.
4. If the claims would have been obvious over the invention disclosed in the other copending application, use form paragraph 7.21.01.aia.
8. This form paragraph must be preceded by form paragraph 7.12.aia.
7. This form paragraph must be preceded by form paragraph 7.12.aia.
2. This form paragraph must be preceded either by form paragraphs 7.07.aia and 7.08.aia or by form paragraph 7.103.
5. This rejection must be preceded either by form paragraph 7.14.aia, or by form paragraph 7.103.
AIA Effective Dates
1. This form paragraph must be used in all Office Actions when a prior art rejection is made in an application with an actual filing date on or after March 16, 2013, that claims priority to, or the benefit of, an application filed before March 16, 2013.
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.
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.
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. This form paragraph must be preceded by form paragraph 7.03.aia.
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. This form paragraph must be preceded by form paragraph 7.03.aia.
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. This form paragraph must be preceded by form paragraph 7.03.aia.
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. This form paragraph must be preceded by form paragraph 7.03.aia.
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. This form paragraph must be preceded by form paragraph 7.03.aia.
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. This form paragraph must be preceded by form paragraph 7.03.aia.
1. This form paragraph should only be used for an application or a patent that is being examined under 35 U.S.C. 102 / 103 as amended by the Leahy-Smith America Invents Act (must be preceded by form paragraph 7.03.aia) and MUST contain or have contained 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 a specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application that contains or contained such a claim.
3. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
7. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
11. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
11. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
Assignee as Applicant Signature
9. Under 35 U.S.C. 101, two patents are not permitted to issue on identical subject matter. Any claims in the instant application directed to the same invention claimed in the reference should be provisionally rejected using form paragraphs 8.30 and 8.32. Additionally, the applicant should be required to amend or cancel claims such that the applied reference and the instant application no longer contain claims directed to the same invention using form paragraph 8.27.aia.
9. Under 35 U.S.C. 101, two patents are not permitted to issue on identical subject matter. Any claims in the instant application directed to the same invention claimed in the reference should be provisionally rejected using form paragraphs 8.30 and 8.32. Additionally, the applicant should be required to amend or cancel claims such that the applied reference and the instant application no longer contain claims directed to the same invention using form paragraph 8.27.aia.
9. Under 35 U.S.C. 101, two patents are not permitted to issue on identical subject matter. Any claims in the instant application directed to the same invention claimed in the reference should be rejected (or provisionally rejected if the reference has not yet issued as a patent) on the grounds of statutory double patenting using form paragraphs 8.30 – 8.32. Additionally, the applicant should be required to amend or cancel claims such that the reference and the instant application no longer contain claims directed to the same invention using form paragraph 8.27.aia.
9. Under 35 U.S.C. 101, two patents are not permitted to issue on identical subject matter. Any claims in the instant application directed to the same invention claimed in the reference should be rejected (or provisionally rejected if the reference has not yet issued as a patent) on the grounds of statutory double patenting using form paragraphs 8.30 – 8.32. Additionally, the applicant should be required to amend or cancel claims such that the reference and the instant application no longer contain claims directed to the same invention using form paragraph 8.27.aia.
Content of Patent Application Publication
2. This form paragraph is used to reject claims as anticipated over a U.S. patent, U.S. patent application publication, or WIPO publication with an earlier prior art date under 35 U.S.C. 102(a)(2). These references must have either a common assignee, a common applicant (35 U.S.C. 118), or at least one common (joint) inventor.
2. This form paragraph is used to reject claims as anticipated over a U.S. patent, U.S. patent application publication, or WIPO publication with an earlier prior art date under 35 U.S.C. 102(a)(2). These references must have either a common assignee, a common applicant (35 U.S.C. 118), or at least one common (joint) inventor.
2. This form paragraph is used to reject a claim over a U.S. patent, U.S. patent application publication or WIPO patent application publication with an earlier prior art date under 35 U.S.C. 102(a)(2). The reference is not required to have a common assignee or inventor.
2. This form paragraph is used to reject a claim over a U.S. patent, U.S. patent application publication or WIPO patent application publication with an earlier prior art date under 35 U.S.C. 102(a)(2). The reference is not required to have a common assignee or inventor.
Patented Prior Art (MPEP 2152.02(a))
2. This form paragraph is used to provisionally reject over a copending application that discloses the claimed invention and would constitute prior art under 35 U.S.C. 102(a)(2) if published under 35 U.S.C. 122 or patented. The copending application must have either a common assignee, common applicant (35 U.S.C. 118) or at least one common (joint) inventor.
2. This form paragraph is used to provisionally reject over a copending application that discloses the claimed invention and would constitute prior art under 35 U.S.C. 102(a)(2) if published under 35 U.S.C. 122 or patented. The copending application must have either a common assignee, common applicant (35 U.S.C. 118) or at least one common (joint) inventor.
Prior Art for Designs
3. 35 U.S.C. 102(a)(2) may be applied if the reference names another inventor (i.e., a different inventive entity) and is one of the following:
- a U.S. patent granted under 35 U.S.C. 151 that has an effectively filed date earlier than the application;
- a U.S. Patent Application Publication published under 35 U.S.C. 122(b) that has an effectively filed date earlier than the effective filing date of the claimed invention; or
- a WIPO publication of an international application (PCT) or international design application that designates the United States where the WIPO publication has an effectively filed date earlier than the effective filing date of the claimed invention. If any of the three types of prior art documents under 35 U.S.C. 102(a)(2) issued or was published before the effective filing date of the claimed invention under examination, then the prior art document is also applicable under 35 U.S.C. 102(a)(1).
3. 35 U.S.C. 102(a)(2) may be applied if the reference names another inventor (i.e., a different inventive entity) and is one of the following: If any of the three types of prior art documents under 35 U.S.C. 102(a)(2) was published before the effective filing date of the claimed invention under examination, then the prior art document is also applicable under 35 U.S.C. 102(a)(1).
- a U.S. patent granted under 35 U.S.C. 151 that has an effectively filed date earlier than the effective filing date of the claimed invention;
- a U.S. Patent Application Publication published under 35 U.S.C. 122(b) that has an effectively filed date earlier than the effective filing date of the claimed invention; or
- a WIPO publication of an international application (PCT) or international design application that designates the United States where the WIPO publication has an effectively filed date earlier than the effective filing date of the claimed invention.
International Filing Date
3. 35 U.S.C. 102(a)(2) may be applied if the reference is one of the following: If any of the three types of prior art documents under 35 U.S.C. 102(a)(2) was published before the effective filing date of the claimed invention under examination, then the prior art document is also applicable under 35 U.S.C. 102(a)(1).
- a U.S. patent granted under 35 U.S.C. 151 that has an effectively filed date earlier than the effective filing date of the claimed invention;
- a U.S. Patent Application Publication published under 35 U.S.C. 122(b) that has an effectively filed date earlier than the effective filing date of the claimed invention; or
- a WIPO publication of an international application where the WIPO publication has an effectively filed date earlier than the effective filing date of the claimed invention.
3. 35 U.S.C. 102(a)(2) may be applied if the reference is one of the following: If any of the three types of prior art documents under 35 U.S.C. 102(a)(2) was published before the effective filing date of the claimed invention under examination, then the prior art document is also applicable under 35 U.S.C. 102(a)(1). a WIPO publication of an international application where the WIPO publication has an effectively filed date earlier than the effective filing date of the claimed invention.
Prior Art Under AIA 35 U.S.C. 102 (MPEP 2150-2159)
The following form paragraphs should be used in making the appropriate rejections. Note that the particular part of the reference relied upon to support the rejection should be identified.
The following form paragraphs should be used in making the appropriate rejections. Note that the particular part of the reference relied upon to support the rejection should be identified.
Form Paragraph Usage
2. This form paragraph should only be used ONCE in an Office action.
Request Content and Form
3. This form paragraph should only be used if the reference is one of the following:
- a U.S. patent granted under 35 U.S.C. 151 having an effectively filed date earlier than the application;
- a U.S. Patent Application Publication published under 35 U.S.C. 122(b) having an effectively filed date earlier than the application; or
- a WIPO publication of an international application (PCT) or international design application that designates the United States where the WIPO publication has an effectively filed date earlier than the application.
Effective Filing Date Under 102 (MPEP 2152.01)
If any of these three types of prior art documents under 35 U.S.C. 102(a)(2) was published before the effective filing date of the claims under examination, then the prior art document is also applicable under 35 U.S.C. 102(a)(1).
Anticipation/Novelty
2. This form paragraph must be included following form paragraph 7.20.aia or 7.15.aia where the anticipation rejection is based on a reference that has been excepted under 35 U.S.C. 102(b)(2)(C) but still qualifies as prior art under 35 U.S.C. 102(a)(1).
Examiner Form Paragraphs
Examiner form paragraphs are standard language that you might see in an Office Action or communication from the USPTO. Examiners have latitude to change the form paragraphs, but you will often see this exact language.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103 ) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Citations
| Primary topic | Citation |
|---|---|
| AIA Effective Dates | 35 U.S.C. § 100(i) |
| Assignee as Applicant Signature | 35 U.S.C. § 101 |
| AIA Effective Dates AIA vs Pre-AIA Practice | 35 U.S.C. § 102 |
| Anticipation/Novelty Effective Filing Date Under 102 (MPEP 2152.01) International Filing Date Prior Art for Designs | 35 U.S.C. § 102(a)(1) |
| Content of Patent Application Publication Effective Filing Date Under 102 (MPEP 2152.01) International Filing Date Patented Prior Art (MPEP 2152.02(a)) Prior Art for Designs | 35 U.S.C. § 102(a)(2) |
| Anticipation/Novelty | 35 U.S.C. § 102(b)(2)(C) |
| Content of Patent Application Publication Patented Prior Art (MPEP 2152.02(a)) | 35 U.S.C. § 118 |
| AIA Effective Dates | 35 U.S.C. § 120 |
| Patented Prior Art (MPEP 2152.02(a)) | 35 U.S.C. § 122 |
| International Filing Date Prior Art for Designs Request Content and Form | 35 U.S.C. § 122(b) |
| International Filing Date Prior Art for Designs Request Content and Form | 35 U.S.C. § 151 |
| AIA Effective Dates AIA vs Pre-AIA Practice | Form Paragraph § 7.03 |
| AIA Effective Dates | Form Paragraph § 7.06 |
| AIA vs Pre-AIA Practice | Form Paragraph § 7.07 |
| AIA vs Pre-AIA Practice | Form Paragraph § 7.103 |
| AIA vs Pre-AIA Practice | Form Paragraph § 7.12 |
| AIA vs Pre-AIA Practice | Form Paragraph § 7.14 |
| AIA vs Pre-AIA Practice | Form Paragraph § 7.15.01 |
| Anticipation/Novelty | Form Paragraph § 7.20 |
| AIA vs Pre-AIA Practice | Form Paragraph § 7.21.01 |
| Assignee as Applicant Signature | Form Paragraph § 8.27 |
| – | Form Paragraph § 8.33 |
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 § 2152.07 — Form Paragraphs for Use in Rejections Under AIA 35 U.S.C. 102
Source: USPTO2152.07 Form Paragraphs for Use in Rejections Under AIA 35 U.S.C. 102 [R-07.2022]
The following form paragraphs should be used in making the appropriate rejections. Note that the particular part of the reference relied upon to support the rejection should be identified.
¶ 7.06 Notice re prior art available under both pre-AIA and AIA
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Examiner Note:
- 1. This form paragraph must be used in all Office Actions when a prior art rejection is made in an application with an actual filing date on or after March 16, 2013, that claims priority to, or the benefit of, an application filed before March 16, 2013.
- 2. This form paragraph should only be used ONCE in an Office action.
¶ 7.07.aia Statement of Statutory Basis, 35 U.S.C. 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless—
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 form paragraph 7.103.
- 2. Form paragraphs 7.07.aia, 7.08.aia, 7.12.aia and 7.14.aia are to be used ONLY ONCE in a given Office action.
- 3. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
¶ 7.08.aia 102(a)(1), Activity Before the Effective Filing Date of Claimed Invention
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
- 2. This form paragraph must be preceded by form paragraphs 7.03.aia and 7.07.aia.
¶ 7.12.aia 102(a)(2), U.S. Patent, U.S. Patent Application Publication or WIPO Published Application That Names Another Inventor and Has an Earlier Effectively Filed Date
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
- 2. This form paragraph must be preceded by form paragraphs 7.03.aia and 7.07.aia and may be preceded by 7.08.aia.
- 3. This form paragraph should only be used if the reference is one
of the following:
- a U.S. patent granted under 35 U.S.C. 151 having an effectively filed date earlier than the application;
- a U.S. Patent Application Publication published under 35 U.S.C. 122(b) having an effectively filed date earlier than the application; or
- a WIPO publication of an international application (PCT) or international design application that designates the United States where the WIPO publication has an effectively filed date earlier than the application.
If any of these three types of prior art documents under 35 U.S.C. 102(a)(2) was published before the effective filing date of the claims under examination, then the prior art document is also applicable under 35 U.S.C. 102(a)(1).
¶ 7.14.aia Pre-AIA 102(g), Priority of Invention
(g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.
A rejection on this statutory basis (35 U.S.C. 102(g) as in force on March 15, 2013) is appropriate in an application or patent that is examined under the first to file provisions of the AIA if it 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.
Examiner Note:
This form paragraph must be preceded by form paragraph 7.07.aia.
¶ 7.15.aia Rejection, 35 U.S.C. 102(a)(1)/102(a)(2)
Claim(s) [1] is/are rejected under 35 U.S.C. 102[2] as being [3] by [4].
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. This form paragraph must be preceded by form paragraph 7.03.aia.
- 2. In bracket 1, insert the claim numbers which are under rejection.
- 3. In bracket 2, insert either “(a)(1)” or “(a)(2)” or both. If paragraph (a)(2) of 35 U.S.C. 102 is applicable, use form paragraph 7.15.01.aia, 7.15.02.aia or 7.15.03.aia where applicable.
- 4. In bracket 3, insert either –clearly anticipated– or –anticipated– with an explanation at the end of the paragraph.
- 5. In bracket 4, insert the prior art relied upon.
- 6. This rejection must be preceded either by form paragraph 7.07.aia and form paragraphs 7.08.aia, and 7.12.aia as appropriate, or by form paragraph 7.103.
- 7. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
¶ 7.15.01.aia Provisional Rejection, 35 U.S.C. 102(a)(2) – Common Assignee, Common Applicant, or At Least One Common (Joint) Inventor
Claim(s) [1] is/are provisionally rejected under 35 U.S.C. 102(a)(2) as being anticipated by copending Application No. [2] which has a common [3] with the instant application.
The copending application would constitute prior art under 35 U.S.C. 102(a)(2) if published under 35 U.S.C. 122(b) or patented under 35 U.S.C. 151. This provisional rejection under 35 U.S.C. 102(a)(2) is based upon a presumption of future publication or patenting of the copending application. [4].
This provisional rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the copending application was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the copending application and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
This rejection may not be overcome by the filing of a terminal disclaimer. See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991).
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. This form paragraph must be preceded by form paragraph 7.03.aia.
- 2. This form paragraph is used to provisionally reject over a copending application that discloses the claimed invention and would constitute prior art under 35 U.S.C. 102(a)(2) if published under 35 U.S.C. 122 or patented. The copending application must have either a common assignee, common applicant (35 U.S.C. 118) or at least one common (joint) inventor.
- 3. 35 U.S.C.
102(a)(2) may be applied if the reference names another inventor
(i.e., a different inventive entity) and is one of the following:
- a U.S. patent granted under 35 U.S.C. 151 that has an effectively filed date earlier than the application;
- a U.S. Patent Application Publication published under 35 U.S.C. 122(b) that has an effectively filed date earlier than the effective filing date of the claimed invention; or
- a WIPO publication of an international application (PCT) or
international design application that designates the United States where the WIPO
publication has an effectively filed date earlier than the effective filing date of
the claimed invention.
If any of the three types of prior art documents under 35 U.S.C. 102(a)(2) issued or was published before the effective filing date of the claimed invention under examination, then the prior art document is also applicable under 35 U.S.C. 102(a)(1).
- 4. If the claims would have been obvious over the invention disclosed in the other copending application, use form paragraph 7.21.01.aia.
- 5. In bracket 1, insert claim number(s) under rejection.
- 6. In bracket 2, insert the application number.
- 7. In bracket 3, insert –assignee–, –applicant–, or –joint inventor–.
- 8. In bracket 4, provide an appropriate explanation of the examiner’s position on anticipation.
- 9. Under 35 U.S.C. 101, two patents are not permitted to issue on identical subject matter. Any claims in the instant application directed to the same invention claimed in the reference should be provisionally rejected using form paragraphs 8.30 and 8.32. Additionally, the applicant should be required to amend or cancel claims such that the applied reference and the instant application no longer contain claims directed to the same invention using form paragraph 8.27.aia.
- 10. Any claims in the instant application that are directed to subject matter that is not patentably distinct from an invention claimed in the reference should be rejected (or provisionally rejected if the reference has not yet issued as a patent) on the grounds of nonstatutory double patenting using form paragraph 8.33 and at least one of form paragraphs 8.34 – 8.39.
- 11. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
¶ 7.15.02.aia Rejection, 35 U.S.C. 102(a)(2), Common Assignee, Applicant, or Joint Inventor(s)
Claim(s) [1] is/are rejected under 35 U.S.C. 102(a)(2) as being [2] by [3].
The applied reference has a common [4] with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
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. This form paragraph must be preceded by form paragraph 7.03.aia.
- 2. This form paragraph is used to reject claims as anticipated over a U.S. patent, U.S. patent application publication, or WIPO publication with an earlier prior art date under 35 U.S.C. 102(a)(2). These references must have either a common assignee, a common applicant (35 U.S.C. 118), or at least one common (joint) inventor.
- 3. 35 U.S.C. 102(a)(2) may be applied
if the reference names another inventor (i.e., a different inventive entity) and is one
of the following:
- a U.S. patent granted under 35 U.S.C. 151 that has an effectively filed date earlier than the effective filing date of the claimed invention;
- a U.S. Patent Application Publication published under 35 U.S.C. 122(b) that has an effectively filed date earlier than the effective filing date of the claimed invention; or
- a WIPO publication of an international application (PCT) or international design application that designates the United States where the WIPO publication has an effectively filed date earlier than the effective filing date of the claimed invention.
If any of the three types of prior art documents under 35 U.S.C. 102(a)(2) was published before the effective filing date of the claimed invention under examination, then the prior art document is also applicable under 35 U.S.C. 102(a)(1).
- 4. In bracket 1, insert the claim numbers which are under rejection.
- 5. In bracket 2, insert either –clearly anticipated– or –anticipated– with an explanation at the end of the paragraph.
- 6. In bracket 3, insert the prior art relied upon.
- 7. In bracket 4, insert –assignee–, –applicant–, or –joint inventor–.
- 8. This form paragraph must be preceded by form paragraph 7.12.aia.
- 9. Under 35 U.S.C. 101, two patents are not permitted to issue on identical subject matter. Any claims in the instant application directed to the same invention claimed in the reference should be rejected (or provisionally rejected if the reference has not yet issued as a patent) on the grounds of statutory double patenting using form paragraphs 8.30 – 8.32. Additionally, the applicant should be required to amend or cancel claims such that the reference and the instant application no longer contain claims directed to the same invention using form paragraph 8.27.aia.
- 10. Any claims in the instant application that are directed to subject matter that is not patentably distinct from an invention claimed in the reference should be rejected (or provisionally rejected if the reference has not yet issued as a patent) on the grounds of nonstatutory double patenting using form paragraph 8.33 and at least one of form paragraphs 8.34 – 8.39.
- 11. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
¶ 7.15.03.aia Rejection, 35 U.S.C. 102(a)(2), No Common Assignee or Inventor(s)
Claim(s) [1] is/are rejected under 35 U.S.C. 102(a)(2) as being [2] by [3].
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. This form paragraph must be preceded by form paragraph 7.03.aia.
- 2. This form paragraph is used to reject a claim over a U.S. patent, U.S. patent application publication or WIPO patent application publication with an earlier prior art date under 35 U.S.C. 102(a)(2). The reference is not required to have a common assignee or inventor.
- 3. 35 U.S.C. 102(a)(2) may be applied
if the reference is one of the following:
- a U.S. patent granted under 35 U.S.C. 151 that has an effectively filed date earlier than the effective filing date of the claimed invention;
- a U.S. Patent Application Publication published under 35 U.S.C. 122(b) that has an effectively filed date earlier than the effective filing date of the claimed invention; or
- a WIPO publication of an international application where the WIPO publication has an effectively filed date earlier than the effective filing date of the claimed invention.
If any of the three types of prior art documents under 35 U.S.C. 102(a)(2) was published before the effective filing date of the claimed invention under examination, then the prior art document is also applicable under 35 U.S.C. 102(a)(1).
- 4. In bracket 1, insert the claim numbers which are under rejection.
- 5. In bracket 2, insert either –clearly anticipated– or –anticipated– with an explanation at the end of the paragraph.
- 6. In bracket 3, insert the prior art relied upon.
- 7. This form paragraph must be preceded by form paragraph 7.12.aia.
¶ 7.16.aia Rejection, 35 U.S.C. 102(a)(1), Public Use, On Sale, or Otherwise Publicly Available
Claim [1] rejected under 35 U.S.C. 102(a)(1) based upon a public use or sale or other public availability of the invention. [2]
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. This form paragraph must be preceded by form paragraph 7.03.aia.
- 2. This form paragraph must be preceded either by form paragraphs 7.07.aia and 7.08.aia or by form paragraph 7.103.
- 3. In bracket 1, insert the claim numbers which are under rejection.
- 4. A full explanation of the evidence establishing a public use or sale or other public availability must be provided in bracket 2.
¶ 7.17.aia 102(a)(1) Rejection Using Prior Art Excepted under 102(b)(2)(C)
Applicant has provided evidence in this file showing that the claimed invention and the subject matter disclosed in the prior art reference were owned by, or subject to an obligation of assignment to, the same entity as [1] not later than the effective filing date of the claimed invention, or the subject matter disclosed in the prior art reference was developed and the claimed invention was made by, or on behalf of one or more parties to a joint research agreement in effect not later than the effective filing date of the claimed invention. However, although reference [2] has been excepted as prior art under 35 U.S.C. 102(a)(2), it is still applicable as prior art under 35 U.S.C. 102(a)(1) that cannot be excepted under 35 U.S.C. 102(b)(2)(C).
Applicant may rely on the exception under 35 U.S.C. 102(b)(1)(A) to overcome this rejection under 35 U.S.C. 102(a)(1) by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application, and is therefore not prior art under 35 U.S.C. 102(a)(1). Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(1)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b).
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. This form paragraph must be preceded by form paragraph 7.03.aia.
- 2. This form paragraph must be included following form paragraph 7.20.aia or 7.15.aia where the anticipation rejection is based on a reference that has been excepted under 35 U.S.C. 102(b)(2)(C) but still qualifies as prior art under 35 U.S.C. 102(a)(1).
- 3. In bracket 1, identify the common assignee.
- 4. In bracket 2, identify the reference which has been excepted.
¶ 7.18.aia Rejection, Pre-AIA 35 U.S.C. 102(g)
Claim [1] rejected under pre-AIA 35 U.S.C. 102 (g) as being [2] by [3].
Examiner Note:
- 1. This form paragraph should only be used for an application or a patent that is being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act (must be preceded by form paragraph 7.03.aia) and MUST contain or have contained 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 a specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application that contains or contained such a claim.
- 2. In bracket 1, insert the claim numbers which are under rejection.
- 3. In bracket 2, insert either –clearly anticipated– or –anticipated– with an explanation at the end of the paragraph.
- 4. In bracket 3, insert the prior art relied upon.
- 5. This rejection must be preceded either by form paragraph 7.14.aia, or by form paragraph 7.103.