What are the grounds for rejecting claims in a patent application?
Source: FAQ (MPEP-Based)BlueIron Update: 2024-09-10
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 grounds for rejecting claims in a patent application are specified in MPEP 706 and include:
- Lack of novelty under 35 U.S.C. 102
- Obviousness under 35 U.S.C. 103
- Double patenting
- Lack of utility under 35 U.S.C. 101
- Lack of enablement or written description under 35 U.S.C. 112(a)
- Indefiniteness under 35 U.S.C. 112(b)
- Improper dependent form under 35 U.S.C. 112(d)
The MPEP states: “All Office actions in the examination of applications for patent are to be complete as to all matters, except as to matters of form expressly noted or left undetermined.” This means that examiners must consider and address all potential grounds for rejection in their office actions.