What are the main types of non-prior art rejections in patent examination?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-10 10 Rules 5 Related FAQs 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 MPEP 706.03 outlines several types of rejections not based on prior art that may occur during patent examination. These include: Non-statutory subject matter (35 U.S.C. 101) – See MPEP 2106 Lack of utility (35 U.S.C. 101) – See MPEP 2107 Subject matter barred by the Atomic Energy Act – See MPEP 2104.01 Subject matter directed to tax strategies – See MPEP 2124.01 Subject matter directed to a human organism – See MPEP 2105 Duplicate claims – See MPEP 608.01(m) New matter – See MPEP 608.04 and MPEP 2163.06 Improper Markush groupings – See MPEP 2117 Rejections based on 35 U.S.C. 112 (written description, enablement, indefiniteness) – See MPEP 2161-2174 These rejections focus on statutory requirements beyond novelty and non-obviousness, ensuring that patent applications meet all legal criteria for patentability. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Rejections Based on 35 U.S.C. 112 Explained in MPEP Sections MPEP 706.03 Categories of Statutory Subject Matter Required MPEP 2105 Patent Claims Barred by Atomic Energy Act MPEP 2104.01 Permitted Claims Requirement for Statutory Subject Matter MPEP 2107 Required Multiple Ways to Formulate Proper Markush Groupings MPEP 2117 Permitted Patent Applications Relating to Atomic Energy Must Be Reported MPEP 2104.01 Required Claims Directed to Human Organism Not Eligible MPEP 2105 Requirement for Quoting 35 U.S.C. 101 MPEP 2105 Required 35 U.S.C. 101 Rejection Must Incorporate 112(a) Grounds MPEP 2107 Recommended Tax Strategies Deemed Part of Prior Art Under AIA MPEP 2124.01 Required Other Related FAQs 5 FAQs Collapse What is the proper format for a multiple dependent claim? Can a claim refer to figures or tables in ...