What are the potential grounds for rejecting claims copied from a patent?

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.

According to MPEP 706.06, claims copied from a patent can be rejected on various grounds. The section states:

“When claims corresponding to claims of a patent are presented in an application, the examiner must determine whether the presented claims are unpatentable on any ground(s), e.g., under 35 U.S.C. 101, 102, 103, 112, double patenting, etc.”

This means that potential grounds for rejection include:

• Lack of patent-eligible subject matter (35 U.S.C. 101)
• Lack of novelty (35 U.S.C. 102)
• Obviousness (35 U.S.C. 103)
• Failure to meet the written description, enablement, or definiteness requirements (35 U.S.C. 112)
• Double patenting
• Other applicable grounds