MPEP § 706.06 — Rejection of Claims Copied From Patent (Annotated Rules)

§706.06 Rejection of Claims Copied From Patent

USPTO MPEP version: BlueIron's Update: 2025-12-31

This page consolidates and annotates all enforceable requirements under MPEP § 706.06, 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.

Rejection of Claims Copied From Patent

This section addresses Rejection of Claims Copied From Patent. Primary authority: 35 U.S.C. 101. Contains: 2 requirements, 1 prohibition, 1 guidance statement, and 1 other statement.

Key Rules

Topic

Rejections Not Based on Prior Art

3 rules
StatutoryRequiredAlways
[mpep-706-06-5a70dea37aa608ee9760aeac]
Examiner Must Determine Unpatentability of Claims
Note:
The examiner must assess if claims in an application are unpatentable under various grounds including 35 U.S.C. 101, 102, 103, and 112.

When claims corresponding to claims of a patent are presented in an application, the examiner must determine whether the presented claims are unpatentable on any ground(s), e.g., under 35 U.S.C. 101, 102, 103, 112, double patenting, etc. If any of the claims presented in the application are rejectable on any grounds, they should be so rejected. The ground of rejection of the claims presented in the application may or may not be one which would also be applicable to the corresponding claims in the patent. If the ground of rejection is also applicable to the corresponding claims in the patent, any Office action including the rejection must have the approval of the Technology Center Director. See MPEP § 1003. For interferences and derivation proceedings, see MPEP Chapter 2300 and 37 CFR Parts 41 and 42.

Jump to MPEP SourceRejections Not Based on Prior ArtRejection on Prior ArtRejection of Claims
StatutoryRecommendedAlways
[mpep-706-06-2b2bed648dab83feadd2fb7c]
Claims Must Be Rejected If Rejectable
Note:
Examiner must reject claims in an application if they are unpatentable on any grounds, regardless of whether the same grounds apply to a corresponding patent.

When claims corresponding to claims of a patent are presented in an application, the examiner must determine whether the presented claims are unpatentable on any ground(s), e.g., under 35 U.S.C. 101, 102, 103, 112, double patenting, etc. If any of the claims presented in the application are rejectable on any grounds, they should be so rejected. The ground of rejection of the claims presented in the application may or may not be one which would also be applicable to the corresponding claims in the patent. If the ground of rejection is also applicable to the corresponding claims in the patent, any Office action including the rejection must have the approval of the Technology Center Director. See MPEP § 1003. For interferences and derivation proceedings, see MPEP Chapter 2300 and 37 CFR Parts 41 and 42.

Jump to MPEP SourceRejections Not Based on Prior ArtRejection on Prior ArtRejection of Claims
StatutoryInformativeAlways
[mpep-706-06-9b94625f4cddb60d083bd125]
Rejection Grounds Not Applicable to Patent Claims
Note:
If the rejection ground is not applicable to patent claims, it must be approved by the Technology Center Director.

When claims corresponding to claims of a patent are presented in an application, the examiner must determine whether the presented claims are unpatentable on any ground(s), e.g., under 35 U.S.C. 101, 102, 103, 112, double patenting, etc. If any of the claims presented in the application are rejectable on any grounds, they should be so rejected. The ground of rejection of the claims presented in the application may or may not be one which would also be applicable to the corresponding claims in the patent. If the ground of rejection is also applicable to the corresponding claims in the patent, any Office action including the rejection must have the approval of the Technology Center Director. See MPEP § 1003. For interferences and derivation proceedings, see MPEP Chapter 2300 and 37 CFR Parts 41 and 42.

Jump to MPEP SourceRejections Not Based on Prior ArtRejection on Prior ArtRejection of Claims
Topic

Rejection of Claims

2 rules
StatutoryProhibitedAlways
[mpep-706-06-18c511b55e52e1b51b759751]
Ground of Rejection May Not Apply to Patent Claims
Note:
The examiner must determine if the claims in an application are unpatentable, but the rejection ground may or may not apply to corresponding patent claims.

When claims corresponding to claims of a patent are presented in an application, the examiner must determine whether the presented claims are unpatentable on any ground(s), e.g., under 35 U.S.C. 101, 102, 103, 112, double patenting, etc. If any of the claims presented in the application are rejectable on any grounds, they should be so rejected. The ground of rejection of the claims presented in the application may or may not be one which would also be applicable to the corresponding claims in the patent. If the ground of rejection is also applicable to the corresponding claims in the patent, any Office action including the rejection must have the approval of the Technology Center Director. See MPEP § 1003. For interferences and derivation proceedings, see MPEP Chapter 2300 and 37 CFR Parts 41 and 42.

Jump to MPEP SourceRejection of ClaimsRejections Not Based on Prior ArtRejection on Prior Art
StatutoryRequiredAlways
[mpep-706-06-3b3209141ff81444fd7e2436]
Office Action Including Rejection Requires Director's Approval When Applicable to Patent Claims
Note:
If the ground of rejection is also applicable to corresponding claims in a patent, any Office action including the rejection must have the approval of the Technology Center Director.

When claims corresponding to claims of a patent are presented in an application, the examiner must determine whether the presented claims are unpatentable on any ground(s), e.g., under 35 U.S.C. 101, 102, 103, 112, double patenting, etc. If any of the claims presented in the application are rejectable on any grounds, they should be so rejected. The ground of rejection of the claims presented in the application may or may not be one which would also be applicable to the corresponding claims in the patent. If the ground of rejection is also applicable to the corresponding claims in the patent, any Office action including the rejection must have the approval of the Technology Center Director. See MPEP § 1003. For interferences and derivation proceedings, see MPEP Chapter 2300 and 37 CFR Parts 41 and 42.

Jump to MPEP SourceRejection of ClaimsExamination ProceduresRejections Not Based on Prior Art

Citations

Primary topicCitation
Rejection of Claims
Rejections Not Based on Prior Art
35 U.S.C. § 101
Rejection of Claims
Rejections Not Based on Prior Art
MPEP § 1003

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.

BlueIron Last Updated: 2025-12-31