706.03 Rejections Not Based on Prior Art
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Under the principles of compact prosecution, each claim should be reviewed for compliance with every statutory requirement for patentability in the initial review of the application, even if one or more claims are found to be deficient with respect to some statutory requirement.
Whenever practicable, USPTO personnel should indicate how rejections may be overcome and how problems may be resolved.
- Where a rejection not based on prior art is proper (lack of adequate written description, enablement, or utility, etc.) such rejection should be stated with a full development of the reasons rather than by a mere conclusion.
706.03(a) Rejections Under 35 U.S.C. 101
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I. DOUBLE PATENTING
35 U.S.C. 101 prevents two patents issuing on the same invention to the same applicant.
- The “same invention” means that identical subject matter is being claimed.
- If more than one patent is sought, a patent applicant will receive a statutory double patenting rejection for claims included in more than one application that are directed to the same invention.
II. SUBJECT MATTER ELIGIBILITY
A claimed invention must be eligible for patenting.
There are two criteria for determining subject matter eligibility:
- (a) first, a claimed invention must fall within one of the four categories of invention recited in 35 U.S.C. 101, i.e., process, machine, manufacture, or composition of matter; and
- (b) second, a claimed invention must be directed to patent-eligible subject matter and not to a judicial exception (unless the claim as a whole includes additional limitations amounting to significantly more than the exception).
The judicial exceptions are subject matter which courts have found to be outside of, or exceptions to, the four statutory categories of invention, and are limited to abstract ideas, laws of nature and natural phenomena (including products of nature).
III. UTILITY
A rejection on the ground of lack of utility is appropriate when:
- it is not apparent why the invention is “useful” because applicant has failed to identify any specific and substantial utility and there is no well established utility, or
- an assertion of specific and substantial utility for the invention is not credible.
Such a rejection can include the more specific grounds of inoperativeness, such as inventions involving perpetual motion.
A rejection under 35 U.S.C. 101 for lack of utility should not be based on grounds that the invention is frivolous, fraudulent or against public policy.
IV. IMPROPER NAMING OF INVENTOR
Although the AIA eliminated pre-AIA 35 U.S.C. 102(f), the patent laws still require the naming of the actual inventor or joint inventors of the claimed subject matter.
- The Office presumes that the named inventor or joint inventors in the application are the actual inventor or joint inventors of the claimed invention.
Where an application has an incorrect inventorship, the applicant should submit a request to correct inventorship under 37 CFR 1.48.
706.03(b) Barred by Atomic Energy Act
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706.03(c) Rejections Under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, First Paragraph
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706.03(d) Rejections Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, Second Paragraph
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706.03(k) Duplicate Claims
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706.03(o) New Matter
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In amended cases, subject matter not disclosed in the original application is sometimes added and a claim directed thereto.
- Such a claim is rejected on the ground that it recites elements without support in the original disclosure under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.
New matter includes not only the addition of wholly unsupported subject matter, but may also include adding specific percentages or compounds after a broader original disclosure, or even the omission of a step from a method.
35 U.S.C. 132(a) should be employed as a basis for objection to amendments to the abstract, specification, or drawings attempting to add new disclosure to that originally disclosed on filing.
If subject matter capable of illustration is originally claimed and it is not shown in the drawing, the claim is not rejected but applicant is required to add it to the drawing.
706.03(u) Disclaimer
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Such disclaimer may arise, for example, from the applicant’s failure to:
- make claims suggested for interference with another application
- copy a claim from a patent when suggested by the examiner, or
- respond or appeal, within the time limit fixed, to the examiner’s rejection of claims copied from a patent
The rejection on disclaimer applies to all claims not patentably distinct from the disclaimed subject matter as well as to the claims directly involved.
706.03(v) After Interference or Former Public Use Proceeding
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Public use proceedings, effective September 16, 2012, are no longer authorized.
- For certain patents, prior public use may be raised in a post-grant review proceeding.
- The outcome of public use proceedings may also be the basis of a rejection.
706.03(w) Res Judicata
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Res judicata may constitute a proper ground for rejection.
- However, res judicata rejections should be applied only when the earlier decision was a decision of the Patent Trial and Appeal Board (or its predecessor Board) or any one of the reviewing courts and when there is no opportunity for further court review of the earlier decision.
The timely filing of a second application copending with an earlier application does not preclude the use of res judicata as a ground of rejection for the second application claims.
- A patent owner or applicant is precluded from seeking a claim that is not patentably distinct from a claim that was finally refused or canceled during an administrative trial.
706.03(x) Reissue
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The granting of a reissue cannot enlarge the scope of the claims of the original patent unless the reissue is applied for within 2 years from the grant of the original patent (or the reissue application properly claims the benefit of a broadening reissue application filed within 2 years of the patent grant).
- This is an absolute bar and cannot be excused.
- This prohibition has been interpreted to apply to any claim which is broader in any respect than the claims of the original patent.
For a reissue application filed prior to September 16, 2012, 35 U.S.C. 251 permits the filing of a reissue application by the assignee of the entire interest only in cases where it does not “enlarge the scope of the claims of the original patent.”
For reissue applications filed on or after September 16, 2012, the assignee of the entire interest may file the reissue application if:
- the application does not seek to enlarge the scope of the claims of the original patent, or
- the application for the original patent was filed under 37 CFR 1.46 by the assignee of the entire interest.
Such claims which do enlarge the scope may also be rejected as barred by the statute.
- A defective reissue oath affords a ground for rejecting all the claims in the reissue application.
706.03(y) Improper Markush Grouping
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I. MARKUSH CLAIM
A “Markush” claim recites a list of alternatively useable members.
The listing of specified alternatives within a Markush claim is referred to as a Markush group or a Markush grouping.
Treatment of claims reciting alternatives is not governed by the particular format used (e.g., alternatives may be set forth as “a material selected from the group consisting of A, B, or C” or “wherein the material is A, B, or C”).
Although the term “Markush claim” is used throughout the MPEP, any claim that recites alternatively usable members, regardless of format, should be treated as a Markush claim.
II. DETERMINE WHETHER MARKUSH GROUPING IS PROPER
A Markush claim may be rejected under judicially approved “improper Markush grouping” principles when the claim contains an improper grouping of alternatively useable members.
A Markush claim contains an “improper Markush grouping” if either:
- (1) the members of the Markush group do not share a “single structural similarity” or
- (2) the members do not share a common use.
A. “Single Structural Similarity” - Members of a Physical, Chemical, or Art-Recognized Class; Common Use Includes Functional Equivalence
Members of a Markush group share a “single structural similarity” when they belong to the same recognized physical or chemical class or to the same art-recognized class (prong 1) and the members of a Markush group share a common function or use when they are disclosed in the specification or known in the art to be functionally equivalent (prong 2).
B. “Single Structural Similarity” - Substantial Structural Feature; Common Use Flows From Substantial Structural Feature
Where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as explained in subsection II.A, above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share a substantial structural feature that is essential to a common use.
III. REJECTION BASED ON IMPROPER MARKUSH GROUPING
When an examiner determines that the members of a Markush group lack either a single structural similarity or a common use, or if the single structural similarity is a substantial structural feature of a chemical compound that is not essential to the common use, then a rejection on the basis that the claim contains an “improper Markush grouping” is appropriate (see subsection II).
