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134 terms

MPEP 2100 Patentability outline

STUDY
PLAY
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