MPEP § 707.07(g) — Piecemeal Examination (Annotated Rules)
§707.07(g) Piecemeal Examination
This page consolidates and annotates all enforceable requirements under MPEP § 707.07(g), 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.
Piecemeal Examination
This section addresses Piecemeal Examination. Contains: 4 guidance statements.
Key Rules
Statutory Authority for Examination
Reissue Patent Practice
On the other hand, a rejection on the grounds of res judicata, no prima facie showing for reissue, new matter, or inoperativeness (not involving perpetual motion) should be accompanied by rejection on all other available grounds.
Citations
| Primary topic | Citation |
|---|---|
| Statutory Authority for Examination | MPEP § 2173.05(n) |
| Statutory Authority for Examination | MPEP § 702.01 |
| Statutory Authority for Examination | MPEP § 803 |
| – | MPEP § 904.03 |
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 § 707.07(g) — Piecemeal Examination
Source: USPTO707.07(g) Piecemeal Examination [R-07.2015]
Piecemeal examination should be avoided as much as possible. The examiner ordinarily should reject each claim on all valid grounds available, avoiding, however, undue multiplication of references. (See MPEP § 904.03.) Rejections on grounds such as lack of proper disclosure, lack of enablement, indefiniteness and res judicata should be applied where appropriate even though there may be a seemingly sufficient rejection on the basis of prior art. Where a non-prior art ground of rejection is proper, it should be stated with a full development of reasons rather than by a mere conclusion coupled with a boiler plate expression.
Certain technical rejections (e.g., negative limitations, indefiniteness) should not be made where the examiner, recognizing the limitations of the English language, is not aware of an improved manner of reciting the claimed invention.
Some situations exist where examination of an application appears best accomplished by limiting action on the claim thereof to a particular issue. These situations include the following:
- (A) Where an application is too informal for a complete action on the merits. See MPEP § 702.01;
- (B) Where there is an undue multiplicity of claims, and there has been no successful telephone request for election of a limited number of claims for full examination. See MPEP § 2173.05(n);
- (C) Where there is a misjoinder of inventions and there has been no successful telephone request for election. See MPEP §§ 803, 810, and 812.01;
- (D) Where disclosure is directed to perpetual motion. See Ex parte Payne, 1904 C.D. 42, 108 OG 1049 (Comm’r Pat. 1903). However, in such cases, the best prior art readily available should be cited and its pertinence pointed out without specifically applying it to the claims.
On the other hand, a rejection on the grounds of res judicata, no prima facie showing for reissue, new matter, or inoperativeness (not involving perpetual motion) should be accompanied by rejection on all other available grounds.