MPEP Q & A 162: When is a 35 U.S.C. 102 Rejection with Multiple References Proper?

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Question:

When is a 35 U.S.C. 102 rejection with multiple references proper?

Answer:

A 35 U.S.C. 102 rejection over multiple references has been held to be proper when the extra references are cited to:

  • Prove the primary reference contains an “enabled disclosure;”
  • Explain the meaning of a term used in the primary reference; or
  • Show that a characteristic not disclosed in the reference is inherent.

Chapter Details:

The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers patentability.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 2131.01  of the MPEP.  The following is a brief summary of section 2131.01.

2131.01 Multiple Reference 35 U.S.C. 102 Rejections

Normally, only one reference should be used in making a rejection under 35 U.S.C. 102.

However, a 35 U.S.C. 102 rejection over multiple references has been held to be proper when the extra references are cited to:

  • Prove the primary reference contains an “enabled disclosure;”
  • Explain the meaning of a term used in the primary reference; or
  • Show that a characteristic not disclosed in the reference is inherent. This section provides details on these instances.