MPEP 2100 Patentability outline

134 terms by ima777 

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2103

Patent Examination Process

2104

Patentable Subject Matter

2105

Patentable Subject Matter--Living Subject Matter

2106

Patent Subject Matter Eligibility

2106.01

Subject Matter Eligibility Analysis of Process Claims Involving Laws of Nature

2107

Guidelines for Examination of Applications for Compliance with with the Utility Requirement

2107.01

General Principles Governing Utility Rejections

2107.02

Procedural Considerations Related to Rejections for Lack of Utility

2107.03

Special Considerations for herapeutic or Pharmacological Utilities

2111

Claim Interpretation; Broadest Reasonable Interpretations

2111.01

Plain Meaning

2111.02

Effect of Preamble

2111.03

Transitional Phrases

2111.04

"adapted to,""adapted for,""wherein," and "whereby" clauses

2111.05

Functional and Nonfunctional Descriptive Material

2112

Requirements of Rejections Based on Inherency; Burden of Proof

2112.01

Composition, Product, and Apparatus Claims

2112.02

Process Claims

2113

Product-by-Process Claims

2114

Apparatus and Article Claims--Functional Language

2115

Material or Article Worked Upon by Apparatus

2116

Material Manipulated in Process

2116.01

Novel, Unobvious Starting Material or End Product

2121

Prior Art; General Level of Operability Required to Make a Prima Facie Case

2121.01

Use of Prior Art in Rejections Where Operability Is in Question

2121.02

Compounds and Compositions--What Constitutes Enabling Prior Art

2121.03

Plant Genetics---What Constitiutes enabling prior art

2121.04

Apparatus and Articles--What Constitutes Enabling Prior Art

2122

Discussion of Utility in the Prior Art

2123

Rejection Over Prior Art's Broad Disclosure Instead of Preferred Embodiments

2124

Exception to the Rule That the Critical Reference Date Must Precede the Filing Date

2124.01

Tax Strategies Deemed Within the Prior Art

2125

Drawing as Prior Art

2126

Availability of a Document as a "Patent" for Purposes of Rejection Under 35 USC 102(a),(b), and (d)

2126.01

Date of Availability of a Patent as Reference

2126.02

Scope of Reference's Disclosure Which Can Be Used to Reject Claims When the Reference Is a "Patent" but Not a "Publication"

2127

Domestic and Foreign Patent Applications as Prior Art

2128

"Printed Publication" as Prior Art

2128.01

Level of Public Accessibility Required

2128.02

Date Publication Is Available as a Reference

2129

Admissions as Prior Art

2131

Anticipation--Application of 35 USC 102(a), (b), and (e)

2131.01

Multiple Reference 35 USC 102 Rejections

2131.02

Genus-Species Situations

2131.03

Anticipation of Ranges

2131.04

Secondary Considerations

2131.05

Nonanalogous or Disparaging Prior Art

2132

35 USC 102(a)

2132.01

Publications as 35 USC 102(a) Prior Art

2133

35 USC 102(b)

2133.01

Rejections of CIP

2133.02

Rejections Based on Publications and Patents

2133.03

Rejections Based on "Public Use: or "On Sale"

2134

35 USC 102(c)

2135

35 USC 102(d)

2135.01

The Four Requirements of 35 USC 102(d)

2136

35 USC 102(e)

2136.01

Status of US Application as a Reference

2136.02

Content of the Prior Art Available Against the Claims

2136.03

Critical Reference Date

2136.04

Different Inventive Entity; Meaning of :By Another"

2136,05

Overcoming a Rejection Under 35 USC 102(e)

2137

35 USC 102(f)

2137.01

Inventorship

2137.02

Applicability of 35 USC 103(c)

2138

35 USC 102(g)

2138.01

Interference Practice

2138.02

"The Invention was made in this country"

2138.03

"By another who has not abandoned, suppressed, or concealed it"

2138.04

"conception"

2138.05

Reduction to Practice

2138.06

Reasonable Diligence

2141

Examination Guidelines for Determining Obviousness Under 35 USC 103

2141.01

Scope and Content of the Prior Art

2141.02

Difference Between Prior Art and Claimed Invention

2141.03

Level of Ordinary Skill in the Art

2142

Legal Concept of Prima Facie Obviousness

2143

Examples of Basic Requirements of a Prima Facia Case of Obviousness

2143.01

Suggestion or Motivation To Modify the References

2143.02

Reasonable Expectation of Success Is Required

2143.03

All Claim Limitations Must Be Considered

2144

Supporting Rejection Under 35 USC 103

2144.01

Implicit Disclosure

2144.02

Reliance on Scientific Theory

2144.03

Reliance on Common Knowledge in the Art or "Well Known" Prior Art

2144.04

Legal Precedent as Source of Supporting Rationale

2144.05

Obviousness of Ranges

2144.06

Art Recognized Equivalence for the Same Purpose

2144.07

Art Recognized Suitability for an Intended Purpose

2144.08

Obviousness of Species When Prior Art Teaches Genus

2144.09

Close Structural Similarity Between Chemical Compounds (Homologs, Analogues, Isomers)

2145

Consideration of Applicant's Rebuttal Arguments

2146

35 USC 103(c)

2161

Three Separate Requirements for Specification Under 35 USC 112, 1st Paragraph

2161.01

Computer Programming and 35 USC 112, 1st Paragraph

2162

Policy Underlying 35 USC 112, First Paragraph

2163

Guidelines for the Examination of Patent Applications Under the 35 USC 112, para 1, "Written Description" Requirement

2163.01

Support for the Claimed Subject Matter in Disclosure

2163.02

Standard for Determining Compliance With the Written Description Requirement

2163.03

Typical Circumstances Where Adequate Written Description Issue Arises

2163.04

Burden on the Examiner with Regard to the Written Description Requirement

2163.05

Change to the Scope of Claims

2163.06

Relationship of Written Description Requirement to New Matter

2163.07

Amendments to Application Which Are Supported in the Original Description

2164

The Enablement Requirement

2164.01

Test of Enablement

2164.02

Working Example

2164.03

Relationship of Predictability of the Art and the Enablement Requirement

2164.04

Burden on the Examiner Under the Enablement Requirement

2164.05

Determination of Enablement Based on Evidence as a Whole

2164.06

Quantity of Experimentation

2164.07

Relationship of Enablement Requirement to Utility Requirement of 35 USC 101 Enablement Commensurate in Scope With the Claims

2164.08

Enablement Commensurate in Scope With the Claims

2165

The Best Mode Requirement

2165.01

Considerations Relevant to Best Mode

2165.02

Best Mode Requirement Compared to Enablement Requirement

2165.03

Requirements for Rejection for Lack of Best Mode

2165.04

Examples of Evidence of Concealment

2171

Two Separate Requirements for Claims Under 35 USC 112, 2nd Paragraph

2172.01

Unclaimed Essential Matter

2173

Claims Must Particularly Point Out and Distinctly Claim the Invention

2173.01

Interpreting the Claims

2173.02

Determining Whether Claim Language is Definite

2173.03

Correspondence Between Specification and Claims

2173.04

Breadth Is not Indefiniteness

2173.06

Practice Compact Prosecution

2174

Relationship Between the Requirements of the 1st and 2nd Paragraph of 35 USC 112

2181

Identifying a 35 USC 112, 6th Paragraph Limitation

2182

Scope of the Search and Identification of the Prior Art

2183

Making a Prima Facie Case of Equivlence

2184

Determining Whether an applicant has met the burden of proving Nonequivalence after a prima facie case is made

2185

Related Issues Under 35 USC 112, First or Second Paragraphs

2186

Relationshop to the Doctrine of Equivalents

2190

Prosecution Laches

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