MPEP § 706.03 — Rejections Not Based on Prior Art (Annotated Rules)
§706.03 Rejections Not Based on Prior Art
This page consolidates and annotates all enforceable requirements under MPEP § 706.03, 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 Not Based on Prior Art
This section addresses Rejections Not Based on Prior Art.
Key Rules
Prior Art in Reissue
Rejections based on nonstatutory subject matter are explained in MPEP §§ 2105 and 2106 – 2106.07(c). Rejections based on lack of utility are explained in MPEP §§ 2107 – 2107.03. Rejections based on subject matter barred by the Atomic Energy Act are explained in MPEP § 2104.01. Rejections based on subject matter that is directed to tax strategies are explained in MPEP § 2124.01, and rejections based on subject matter that is directed to a human organism are explained in MPEP § 2105. Rejections based on duplicate claims are addressed in MPEP § 608.01(m), and double patenting rejections are addressed in MPEP § 804. See MPEP §§ 608.04 and 2163.06 for rejections based on new matter. Foreign filing without a license is discussed in MPEP § 140. Disclaimer and rejections after interference are explained in MPEP Chapter 2300, res judicata is discussed in MPEP § 2190, rejections in reissue applications are explained in MPEP Chapter 1400, and improper Markush groupings are explained in MPEP § 2117. Rejections based on 35 U.S.C. 112 are discussed in MPEP §§ 2161 – 2174 and 2185.
Rejections based on nonstatutory subject matter are explained in MPEP §§ 2105 and 2106 – 2106.07(c). Rejections based on lack of utility are explained in MPEP §§ 2107 – 2107.03. Rejections based on subject matter barred by the Atomic Energy Act are explained in MPEP § 2104.01. Rejections based on subject matter that is directed to tax strategies are explained in MPEP § 2124.01, and rejections based on subject matter that is directed to a human organism are explained in MPEP § 2105. Rejections based on duplicate claims are addressed in MPEP § 608.01(m), and double patenting rejections are addressed in MPEP § 804. See MPEP §§ 608.04 and 2163.06 for rejections based on new matter. Foreign filing without a license is discussed in MPEP § 140. Disclaimer and rejections after interference are explained in MPEP Chapter 2300, res judicata is discussed in MPEP § 2190, rejections in reissue applications are explained in MPEP Chapter 1400, and improper Markush groupings are explained in MPEP § 2117. Rejections based on 35 U.S.C. 112 are discussed in MPEP §§ 2161 – 2174 and 2185.
Rejections based on nonstatutory subject matter are explained in MPEP §§ 2105 and 2106 – 2106.07(c). Rejections based on lack of utility are explained in MPEP §§ 2107 – 2107.03. Rejections based on subject matter barred by the Atomic Energy Act are explained in MPEP § 2104.01. Rejections based on subject matter that is directed to tax strategies are explained in MPEP § 2124.01, and rejections based on subject matter that is directed to a human organism are explained in MPEP § 2105. Rejections based on duplicate claims are addressed in MPEP § 608.01(m), and double patenting rejections are addressed in MPEP § 804. See MPEP §§ 608.04 and 2163.06 for rejections based on new matter. Foreign filing without a license is discussed in MPEP § 140. Disclaimer and rejections after interference are explained in MPEP Chapter 2300, res judicata is discussed in MPEP § 2190, rejections in reissue applications are explained in MPEP Chapter 1400, and improper Markush groupings are explained in MPEP § 2117. Rejections based on 35 U.S.C. 112 are discussed in MPEP §§ 2161 – 2174 and 2185.
Rejections based on nonstatutory subject matter are explained in MPEP §§ 2105 and 2106 – 2106.07(c). Rejections based on lack of utility are explained in MPEP §§ 2107 – 2107.03. Rejections based on subject matter barred by the Atomic Energy Act are explained in MPEP § 2104.01. Rejections based on subject matter that is directed to tax strategies are explained in MPEP § 2124.01, and rejections based on subject matter that is directed to a human organism are explained in MPEP § 2105. Rejections based on duplicate claims are addressed in MPEP § 608.01(m), and double patenting rejections are addressed in MPEP § 804. See MPEP §§ 608.04 and 2163.06 for rejections based on new matter. Foreign filing without a license is discussed in MPEP § 140. Disclaimer and rejections after interference are explained in MPEP Chapter 2300, res judicata is discussed in MPEP § 2190, rejections in reissue applications are explained in MPEP Chapter 1400, and improper Markush groupings are explained in MPEP § 2117. Rejections based on 35 U.S.C. 112 are discussed in MPEP §§ 2161 – 2174 and 2185.
Rejections based on nonstatutory subject matter are explained in MPEP §§ 2105 and 2106 – 2106.07(c). Rejections based on lack of utility are explained in MPEP §§ 2107 – 2107.03. Rejections based on subject matter barred by the Atomic Energy Act are explained in MPEP § 2104.01. Rejections based on subject matter that is directed to tax strategies are explained in MPEP § 2124.01, and rejections based on subject matter that is directed to a human organism are explained in MPEP § 2105. Rejections based on duplicate claims are addressed in MPEP § 608.01(m), and double patenting rejections are addressed in MPEP § 804. See MPEP §§ 608.04 and 2163.06 for rejections based on new matter. Foreign filing without a license is discussed in MPEP § 140. Disclaimer and rejections after interference are explained in MPEP Chapter 2300, res judicata is discussed in MPEP § 2190, rejections in reissue applications are explained in MPEP Chapter 1400, and improper Markush groupings are explained in MPEP § 2117. Rejections based on 35 U.S.C. 112 are discussed in MPEP §§ 2161 – 2174 and 2185.
Double Patenting in Reissue
Rejections based on nonstatutory subject matter are explained in MPEP §§ 2105 and 2106 – 2106.07(c). Rejections based on lack of utility are explained in MPEP §§ 2107 – 2107.03. Rejections based on subject matter barred by the Atomic Energy Act are explained in MPEP § 2104.01. Rejections based on subject matter that is directed to tax strategies are explained in MPEP § 2124.01, and rejections based on subject matter that is directed to a human organism are explained in MPEP § 2105. Rejections based on duplicate claims are addressed in MPEP § 608.01(m), and double patenting rejections are addressed in MPEP § 804. See MPEP §§ 608.04 and 2163.06 for rejections based on new matter. Foreign filing without a license is discussed in MPEP § 140. Disclaimer and rejections after interference are explained in MPEP Chapter 2300, res judicata is discussed in MPEP § 2190, rejections in reissue applications are explained in MPEP Chapter 1400, and improper Markush groupings are explained in MPEP § 2117. Rejections based on 35 U.S.C. 112 are discussed in MPEP §§ 2161 – 2174 and 2185.
Reissue Patent Practice
Rejections based on nonstatutory subject matter are explained in MPEP §§ 2105 and 2106 – 2106.07(c). Rejections based on lack of utility are explained in MPEP §§ 2107 – 2107.03. Rejections based on subject matter barred by the Atomic Energy Act are explained in MPEP § 2104.01. Rejections based on subject matter that is directed to tax strategies are explained in MPEP § 2124.01, and rejections based on subject matter that is directed to a human organism are explained in MPEP § 2105. Rejections based on duplicate claims are addressed in MPEP § 608.01(m), and double patenting rejections are addressed in MPEP § 804. See MPEP §§ 608.04 and 2163.06 for rejections based on new matter. Foreign filing without a license is discussed in MPEP § 140. Disclaimer and rejections after interference are explained in MPEP Chapter 2300, res judicata is discussed in MPEP § 2190, rejections in reissue applications are explained in MPEP Chapter 1400, and improper Markush groupings are explained in MPEP § 2117. Rejections based on 35 U.S.C. 112 are discussed in MPEP §§ 2161 – 2174 and 2185.
Equivalents Under 112(f) (MPEP 2185)
Rejections based on nonstatutory subject matter are explained in MPEP §§ 2105 and 2106 – 2106.07(c). Rejections based on lack of utility are explained in MPEP §§ 2107 – 2107.03. Rejections based on subject matter barred by the Atomic Energy Act are explained in MPEP § 2104.01. Rejections based on subject matter that is directed to tax strategies are explained in MPEP § 2124.01, and rejections based on subject matter that is directed to a human organism are explained in MPEP § 2105. Rejections based on duplicate claims are addressed in MPEP § 608.01(m), and double patenting rejections are addressed in MPEP § 804. See MPEP §§ 608.04 and 2163.06 for rejections based on new matter. Foreign filing without a license is discussed in MPEP § 140. Disclaimer and rejections after interference are explained in MPEP Chapter 2300, res judicata is discussed in MPEP § 2190, rejections in reissue applications are explained in MPEP Chapter 1400, and improper Markush groupings are explained in MPEP § 2117. Rejections based on 35 U.S.C. 112 are discussed in MPEP §§ 2161 – 2174 and 2185.
Citations
| Primary topic | Citation |
|---|---|
| Double Patenting in Reissue Equivalents Under 112(f) (MPEP 2185) Prior Art in Reissue Reissue Patent Practice | 35 U.S.C. § 112 |
| Double Patenting in Reissue Equivalents Under 112(f) (MPEP 2185) Prior Art in Reissue Reissue Patent Practice | MPEP § 140 |
| Double Patenting in Reissue Equivalents Under 112(f) (MPEP 2185) Prior Art in Reissue Reissue Patent Practice | MPEP § 2104.01 |
| Double Patenting in Reissue Equivalents Under 112(f) (MPEP 2185) Prior Art in Reissue Reissue Patent Practice | MPEP § 2105 |
| Double Patenting in Reissue Equivalents Under 112(f) (MPEP 2185) Prior Art in Reissue Reissue Patent Practice | MPEP § 2107 |
| Double Patenting in Reissue Equivalents Under 112(f) (MPEP 2185) Prior Art in Reissue Reissue Patent Practice | MPEP § 2117 |
| Double Patenting in Reissue Equivalents Under 112(f) (MPEP 2185) Prior Art in Reissue Reissue Patent Practice | MPEP § 2124.01 |
| Double Patenting in Reissue Equivalents Under 112(f) (MPEP 2185) Prior Art in Reissue Reissue Patent Practice | MPEP § 2161 |
| Double Patenting in Reissue Equivalents Under 112(f) (MPEP 2185) Prior Art in Reissue Reissue Patent Practice | MPEP § 2190 |
| Double Patenting in Reissue Equivalents Under 112(f) (MPEP 2185) Prior Art in Reissue Reissue Patent Practice | MPEP § 608.01(m) |
| Double Patenting in Reissue Equivalents Under 112(f) (MPEP 2185) Prior Art in Reissue Reissue Patent Practice | MPEP § 608.04 |
| Double Patenting in Reissue Equivalents Under 112(f) (MPEP 2185) Prior Art in Reissue Reissue Patent Practice | MPEP § 804 |
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 § 706.03 — Rejections Not Based on Prior Art
Source: USPTO706.03 Rejections Not Based on Prior Art [R-10.2019]
Under the principles of compact prosecution, each claim should be reviewed for compliance with every statutory requirement for patentability in the initial review of the application, even if one or more claims are found to be deficient with respect to some statutory requirement. Deficiencies should be explained clearly, particularly when they serve as a basis for a rejection. Whenever practicable, USPTO personnel should indicate how rejections may be overcome and how problems may be resolved. Where a rejection not based on prior art is proper (lack of adequate written description, enablement, or utility, etc.) such rejection should be stated with a full development of the reasons rather than by a mere conclusion.
Rejections based on nonstatutory subject matter are explained in MPEP §§ 2105 and 2106 – 2106.07(c). Rejections based on lack of utility are explained in MPEP §§ 2107 – 2107.03. Rejections based on subject matter barred by the Atomic Energy Act are explained in MPEP § 2104.01. Rejections based on subject matter that is directed to tax strategies are explained in MPEP § 2124.01, and rejections based on subject matter that is directed to a human organism are explained in MPEP § 2105. Rejections based on duplicate claims are addressed in MPEP § 608.01(m), and double patenting rejections are addressed in MPEP § 804. See MPEP §§ 608.04 and 2163.06 for rejections based on new matter. Foreign filing without a license is discussed in MPEP § 140. Disclaimer and rejections after interference are explained in MPEP Chapter 2300, res judicata is discussed in MPEP § 2190, rejections in reissue applications are explained in MPEP Chapter 1400, and improper Markush groupings are explained in MPEP § 2117. Rejections based on 35 U.S.C. 112 are discussed in MPEP §§ 2161 – 2174 and 2185.