How does the USPTO handle rejections based on lack of utility and enablement?

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.

The USPTO handles rejections based on lack of utility (35 U.S.C. 101) and lack of enablement (35 U.S.C. 112(a)) separately to avoid confusion. The MPEP states:

“To avoid confusion during examination, any rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, based on grounds other than ‘lack of utility’ should be imposed separately from any rejection imposed due to ‘lack of utility’ under 35 U.S.C. 101 and 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.”

However, if an invention is shown to be nonuseful or inoperative, it will fail both requirements:

“If a claim fails to meet the utility requirement of 35 U.S.C. 101 because it is shown to be nonuseful or inoperative, then it necessarily fails to meet the how-to-use aspect of the enablement requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.”

In such cases, the examiner should make both rejections, clearly stating the reasons for each.