MPEP § 2166 — Rejections Under 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph (Annotated Rules)
§2166 Rejections Under 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph
This page consolidates and annotates all enforceable requirements under MPEP § 2166, 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. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph
This section addresses Rejections Under 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph. Primary authority: 35 U.S.C. 112(a), 35 U.S.C. 112, and 35 U.S.C. 101. Contains: 3 guidance statements, 1 permission, and 3 other statements.
Key Rules
Test of Enablement (MPEP 2164.01)
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.
7. 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.
Enablement Support for Claims
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.
7. 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.
Evidence of Concealment (MPEP 2165.04)
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. Form paragraphs 7.30.01, 7.31.01 through 7.31.05 and 7.33.01 should be used, as appropriate, to make rejections under 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112.
35 U.S.C. 112(a) – Written Description & Enablement
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. Form paragraphs 7.30.01, 7.31.01 through 7.31.05 and 7.33.01 should be used, as appropriate, to make rejections under 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112.
35 U.S.C. 112 – Disclosure Requirements
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. Form paragraphs 7.30.01, 7.31.01 through 7.31.05 and 7.33.01 should be used, as appropriate, to make rejections under 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112.
Claim Subject Matter
4. 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.
Citations
| Primary topic | Citation |
|---|---|
| 35 U.S.C. 112 – Disclosure Requirements 35 U.S.C. 112(a) – Written Description & Enablement Evidence of Concealment (MPEP 2165.04) | 35 U.S.C. § 101 |
| 35 U.S.C. 112 – Disclosure Requirements 35 U.S.C. 112(a) – Written Description & Enablement Evidence of Concealment (MPEP 2165.04) | 35 U.S.C. § 112 |
| 35 U.S.C. 112 – Disclosure Requirements 35 U.S.C. 112(a) – Written Description & Enablement Evidence of Concealment (MPEP 2165.04) | 35 U.S.C. § 112(a) |
| 35 U.S.C. 112 – Disclosure Requirements 35 U.S.C. 112(a) – Written Description & Enablement Evidence of Concealment (MPEP 2165.04) | MPEP § 2107 |
| 35 U.S.C. 112 – Disclosure Requirements 35 U.S.C. 112(a) – Written Description & Enablement Evidence of Concealment (MPEP 2165.04) | MPEP § 2161 |
| Enablement Support for Claims Test of Enablement (MPEP 2164.01) | MPEP § 2164.01(a) |
| – | MPEP § 2165 |
| – | Form Paragraph § 7.30.01 |
| – | Form Paragraph § 7.31.02 |
| – | Form Paragraph § 7.31.03 |
| – | Form Paragraph § 7.33.01 |
| Enablement Support for Claims Test of Enablement (MPEP 2164.01) | In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1998) |
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 § 2166 — Rejections Under 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph
Source: USPTO2166 Rejections Under 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph [R-10.2019]
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. Form paragraphs 7.30.01, 7.31.01 through 7.31.05 and 7.33.01 should be used, as appropriate, to make 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 applications subject to pre-AIA 35 U.S.C. 112, 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 1, pluralize “Claim” if necessary, insert claim number(s), and insert –is– or –are– as appropriate.
- 3. 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. In bracket 1, pluralize “Claim” if necessary, insert claim number(s), and insert –is– or –are– as appropriate.
- 3. This form paragraph is to be used when the scope of the claims is not commensurate with the scope of the enabling disclosure.
- 4. 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.
- 5. In bracket 3, identify aspect(s) of the claim(s) for which the specification is not enabling.
- 6. In bracket 4, fill in only the appropriate portion of the statute, i.e., one of the following: –make–, –use–, or –make and use–.
- 7. 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 applications subject to pre-AIA 35 U.S.C. 112, 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.
¶ 7.31.05 Rejection, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, First Paragraph: Scope of Enablement of a “Single Means” Claim
Claim [1] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because the claim purports to invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, but fails to recite a combination of elements as required by that statutory provision and thus cannot rely on the specification to provide the structure, material or acts to support the claimed function. As such, the claim recites a function that has no limits and covers every conceivable means for achieving the stated function, while the specification discloses at most only those means known to the inventor. Accordingly, the disclosure is not commensurate with the scope of the claim.
Examiner Note:
- 1. This rejection must be preceded by form paragraph 7.30.01 or 7.103.
- 2. In bracket 1, pluralize “Claim” if necessary, insert claim number(s), and insert –is– or –are– as appropriate.
- 3. This form paragraph is to be used only when the claim recites a single element and that element is in means-plus-function format. This situation should be rare.
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. The disclosure does not enable one of ordinary skill in the art to practice the invention without [2], which is/are critical or essential to the practice of the invention but not included in the claim(s). 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.