Chapter 2100

Patentability

Chapter 2100 is the most heavily tested chapter covering all patentability requirements: subject matter eligibility (101/Alice-Mayo), claim interpretation (BRI), anticipation (102), obviousness (103), and the 112 requirements (written description, enablement, best mode, definiteness).

Core Concepts

Subject Matter Eligibility — 35 USC 101 / MPEP 2105 Four categories: Process, Machine, Manufacture, Composition of matter. Judicial exceptions (NOT eligible): Laws of nature, Natural phenomena, Abstract ideas. Alice/Mayo Framework:

Step 2A Prong 1: Does claim recite mathematical concept, method of organizing human activity, or mental process?
Step 2A Prong 2: Does claim integrate exception into practical application? (improvement to computer, treatment of disease, particular machine)
Step 2B: Does claim include significantly more than the exception? Key rule: Mere instructions to apply exception using generic computer are NOT enough.

Claim Interpretation — BRI / MPEP 2111 Broadest reasonable interpretation consistent with specification. Specification limitations NOT imported into claims. Preamble usually not limiting. Transitional phrases: Comprising = open. Consisting of = closed. Consisting essentially of = partially open.

Product-by-Process Claims — MPEP 2113 Patentability based on PRODUCT not process. Prior art product anticipates even if made by different process.

Prior Art Rules Printed publications (2128): publicly accessible — date of accessibility controls, not printing date. Admissions (2129): statements in spec, arguments, or declarations = AAPA. Under AIA, AAPA is NOT prior art under 35 USC 102 — it is an admission. AAPA can support a rejection but does not qualify as a §102 reference and cannot be combined with §102 prior art as if it were one. Enabling prior art (2121): operability presumed unless applicant proves otherwise. Pre-AIA 102(e) (2138): patents/apps serve as prior art as of filing date — NOT publication date.

Anticipation — 35 USC 102 / MPEP 2131 Every element in SINGLE reference, arranged as claimed, expressly or inherently disclosed. Inherency: necessarily present even if unrecognized. Multiple references = obviousness NOT anticipation.

AIA Grace Period — MPEP 2152 / 35 USC 102(b)(1) Protects inventor own disclosures within 1 year of filing only. Third-party disclosures before filing ARE prior art — no grace period for third parties. Common ownership exception under 102(b)(2)(C) tested with joint research agreements.

Obviousness — 35 USC 103 / MPEP 2141 Graham factors: scope of prior art, differences from claims, level of skill, objective evidence. KSR: rigid TSM rejected, common sense valid, but articulated reasoning still required. Obvious to try valid only with finite solutions and reasonable expectation of success.

112 Requirements — MPEP 2161-2181 Written description (2163): possession at filing date. Separate from enablement. Enablement (2164): PHOSITA can make and use without undue experimentation. Wands 8 factors. Must enable full scope. Best mode (2165): must disclose at filing. AIA: failure no longer invalidates patent. Definiteness (2173): meaning reasonably certain to PHOSITA. Breadth is NOT indefiniteness. Means-plus-function (2181): requires algorithm disclosure — generic computer not sufficient.

Key Rules

1.Four statutory categories: process, machine, manufacture, composition of matter

2.Generic computer implementation is NOT significantly more under Alice Step 2B

3.BRI: specification limitations NOT imported into claims

4.Comprising = open, Consisting of = closed, Consisting essentially of = semi-closed

5.Anticipation requires every element in SINGLE reference — multiple references = obviousness

6.AAPA under AIA: NOT prior art under 35 USC 102 — treated as admission only

7.AIA grace period (MPEP 2152): protects inventor own disclosures only — third party disclosures are prior art

8.Obviousness: examiner must provide articulated reasoning with rational underpinning after KSR

9.Written description and enablement are separate independent requirements under 112(a)

10.Best mode failure no longer invalidates patent under AIA

11.Means-plus-function requires algorithm disclosure for computer-implemented claims

EXAM TIP

Three most tested distinctions: (1) Anticipation requires ONE reference with EVERY element — if you need two references it is obviousness not anticipation. (2) Written description and enablement are SEPARATE requirements under 112(a) — a spec can enable an invention without providing adequate written description. (3) AAPA under AIA is NOT a §102 prior art reference — it is an admission that can support rejection but cannot be combined with other §102 references as if it were prior art.

Common Traps

1.Using multiple references for 102 anticipation rejection — only one reference allowed

2.Importing specification limitations into claims during BRI analysis

3.Treating written description and enablement as the same requirement

4.Thinking breadth makes a claim indefinite — breadth alone is not indefiniteness

5.Missing that best mode failure cannot invalidate a patent under AIA

6.Applying inventor grace period to third-party disclosures under AIA

7.Treating AAPA as a §102 prior art reference — it is an admission, not prior art under AIA

8.Citing §2133 for AIA grace period — correct section is §2152

Search Terms

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Sections

2103Patent Examination Process

2104Requirements of 35 U.S.C. 101

2105Patent Eligible Subject Matter — Living Subject Matter

High Yield

2106Patent Subject Matter Eligibility

2107Guidelines for Examination of Applications for Compliance with the Utility Requirement

High Yield

2109Inventorship

2109.01Joint Inventorship

2111Claim Interpretation; Broadest Reasonable Interpretation

High Yield

2112Requirements of Rejection Based on Inherency; Burden of Proof

2113Product-by-Process Claims

High Yield

2114Apparatus and Article Claims — Functional Language

2115Material or Article Worked Upon by Apparatus

2116Novel, Nonobvious Starting Material or End Product

2117Markush Claims

2120Rejection on Prior Art

2121Prior Art; General Level of Operability Required to Make a Prima Facie Case

High Yield

2122Discussion of Utility in the Prior Art

2123Rejection Over Prior Art’s Broad Disclosure Instead of Preferred Embodiments

2124Exception to the Rule That the Reference Must be Prior Art

High Yield

2125Drawings as Prior Art

2126Availability of a Document as a “Patent” for Purposes of Rejection Under 35 U.S.C. 102(a) or Pre-AIA 35 U.S.C. 102(a), (b), and (d)

2127Domestic and Foreign Patent Applications as Prior Art

High Yield

2128“Printed Publications” as Prior Art

High Yield

2129Admissions as Prior Art

High Yield

2131Anticipation — Application of 35 U.S.C. 102

High Yield

2132Pre-AIA 35 U.S.C. 102(a)

2133Pre-AIA 35 U.S.C. 102(b)

High Yield

2134Pre-AIA 35 U.S.C. 102(c)

2135Pre-AIA 35 U.S.C. 102(d)

2136Pre-AIA 35 U.S.C. 102(e)

2137Pre-AIA 35 U.S.C. 102(f)

High Yield

2138Pre-AIA 35 U.S.C. 102(g)

High Yield

2139Rejections Under Pre-AIA 35 U.S.C. 102

2141Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103

High Yield

2142Legal Concept of Prima Facie Obviousness

2143Examples of Basic Requirements of a Prima Facie Case of Obviousness

High Yield

2144Supporting a Rejection Under 35 U.S.C. 103

High Yield

2145Consideration of Applicant’s Rebuttal Arguments and Evidence

High Yield

2146Pre-AIA 35 U.S.C. 103(c)

2147Biotechnology Process Applications; Pre-AIA 35 U.S.C. 103(b)

2148Form Paragraphs for Use in Rejections Under Pre-AIA 35 U.S.C. 103

2150Examination Guidelines for 35 U.S.C. 102 and 103 as Amended by the First Inventor To File Provisions of the Leahy-Smith America Invents Act

2151Overview of the Changes to 35 U.S.C. 102 and 103 in the AIA

2152Detailed Discussion of AIA 35 U.S.C. 102(a) and (b)

2153Prior Art Exceptions Under 35 U.S.C. 102(b)(1) to AIA 35 U.S.C. 102(a)(1)

2154Provisions Pertaining to Subject Matter in a U.S. Patent or Application Effectively Filed Before the Effective Filing Date of the Claimed Invention

2155Use of Affidavits or Declarations Under 37 CFR 1.130 To Overcome Prior Art Rejections

2156Joint Research Agreements

2157Improper Naming of Inventors

2158AIA 35 U.S.C. 103

2159Applicability Date Provisions and Determining Whether an Application Is Subject to the First Inventor To File Provisions of the AIA

2161Three Separate Requirements for Specification Under 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph

High Yield

2162Policy Underlying 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph

High Yield

2163Guidelines for the Examination of Patent Applications Under the 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, first paragraph, “Written Description” Requirement

High Yield

2164The Enablement Requirement

High Yield

2165The Best Mode Requirement

High Yield

2166Rejections Under 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph

2171Two Separate Requirements for Claims Under 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, Second Paragraph

High Yield

2172Subject Matter Which the Inventor or a Joint Inventor Regards as The Invention

High Yield

2173Claims Must Particularly Point Out and Distinctly Claim the Invention

High Yield

2174Relationship Between the Requirements of 35 U.S.C. 112(a) and (b) or Pre-AIA 35 U.S.C. 112, First and Second Paragraphs

2175Form Paragraphs for Use in Rejections Under 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, Second Paragraph

2181Identifying and Interpreting a 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, Sixth Paragraph Limitation

High Yield

2182Search and Identification of the Prior Art

2183Making a Prima Facie Case of Equivalence

2184Determining Whether an Applicant Has Met the Burden of Proving Nonequivalence After a Prima Facie Case Is Made

2185Related Issues Under 35 U.S.C. 112(a) or (b) and Pre-AIA 35 U.S.C. 112, First or Second Paragraphs

2186Relationship to the Doctrine of Equivalents

2187Form Paragraphs for Use Relating to 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, Sixth Paragraph

2190Prosecution Laches and Res Judicata