Can canceled matter from a patent application be used in a 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e) rejection?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

Canceled matter from a patent application cannot be used in a 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e) rejection. The MPEP clearly states:

“Canceled matter in the application file of a U.S. patent or application publication cannot be relied upon in a rejection under 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e).” Ex Parte Stalego, 154 USPQ 52, 53 (Bd. App. 1966).

However, it’s important to note the following:

• Canceled matter may become available as prior art from the date the application file history becomes publicly available.
• Such matter may be available as prior art under 35 U.S.C. 102(a)(1) or pre-AIA 35 U.S.C. 102(b).

For more information on available prior art for use in pre-AIA 35 U.S.C. 102(e) rejections, refer to MPEP § 2136.02. For 35 U.S.C. 102(a)(2) rejections, see MPEP § 2154 et seq.