Chapter 2100 Patentability
`
`[Reserved]
`
`2101
`-2102
`2103
`2104
`
`2105
`
`2106
`2106.01
`2106.02
`2106.03
`
`2106.04
`
`2106.04(a)
`2106.04(a)(1)
`
`2106.04(a)(2)
`
`2106.04(b)
`
`2106.04(c)
`
`2106.05
`
`2106.05(a)
`
`2106.05(b)
`2106.05(c)
`2106.05(d)
`
`2106.05(e)
`2106.05(f)
`
`2106.05(g)
`
`2106.05(h)
`
`2106.06
`2106.06(a)
`2106.06(b)
`
`2106.07
`
`2106.07(a)
`
`Patent Examination Process
`Inventions Patentable - Requirements
`of 35 U.S.C. 101
`Patent Eligible Subject Matter —
`Living Subject Matter
`Patent Subject Matter Eligibility
`[Reserved]
`[Reserved]
`Eligibility Step 1: The Four
`Categories of Statutory Subject Matter
`Eligibility Step 2: Whether a Claim
`is Directed to a Judicial Exception
`Abstract Ideas
`Examples of Claims That Are
`Not Directed To Abstract
`Ideas
`Examples of Concepts The
`Courts Have Identified As
`Abstract Ideas
`Laws of Nature, Natural
`Phenomena & Products of Nature
`The Markedly Different
`Characteristics Analysis
`Eligibility Step 2B: Whether a Claim
`Amounts to Significantly More
`Improvements to the Functioning
`of a Computer or To Any Other
`Technology or Technical Field
`Particular Machine
`Particular Transformation
`Well-Understood, Routine,
`Conventional Activity
`Other Meaningful Limitations
`Mere Instructions To Apply An
`Exception
`Insignificant Extra-Solution
`Activity
`Field of Use and Technological
`Environment
`Streamlined Analysis
`Eligibility is Self Evident
`Clear Improvement to a
`Technology or to Computer
`Functionality
`Formulating and Supporting
`Rejections For Lack Of Subject
`Matter Eligibility
`Formulating a Rejection For Lack
`of Subject Matter Eligibility
`
`2106.07(b)
`Evaluating Applicant's Response
`2106.07(c)
`Clarifying the Record
`Guidelines for Examination of
`2107
`Applications for Compliance with the
`Utility Requirement
`General Principles Governing Utility
`Rejections
`Procedural Considerations Related to
`Rejections for Lack of Utility
`Special Considerations for Asserted
`Therapeutic or Pharmacological
`Utilities
`[Reserved]
`
`2107.01
`
`2107.02
`
`2107.03
`
`2108
`-2110
`2111
`
`2111.01
`2111.02
`2111.03
`2111.04
`
`2111.05
`
`2112
`
`2112.01
`
`2112.02
`2113
`2114
`
`2115
`
`2116
`2116.01
`
`2117
`2118
`-2120
`2121
`
`2121.01
`
`2121.02
`
`2121.03
`
`2121.04
`
`Claim Interpretation; Broadest
`Reasonable Interpretation
`Plain Meaning
`Effect of Preamble
`Transitional Phrases
`“Adapted to,” “Adapted for,”
`“Wherein,” “Whereby,” and
`Contingent Clauses
`Functional and Nonfunctional
`Descriptive Material
`Requirements of Rejection Based on
`Inherency; Burden of Proof
`Composition, Product, and Apparatus
`Claims
`Process Claims
`Product-by-Process Claims
`Apparatus and Article Claims —
`Functional Language
`Material or Article Worked Upon by
`Apparatus
`[Reserved]
`Novel, Unobvious Starting Material
`or End Product
`Markush Claims
`[Reserved]
`
`Prior Art; General Level of Operability
`Required to Make a Prima Facie Case
`Use of Prior Art in Rejections Where
`Operability is in Question
`Compounds and Compositions —
`What Constitutes Enabling Prior Art
`Plant Genetics — What Constitutes
`Enabling Prior Art
`Apparatus and Articles — What
`Constitutes Enabling Prior Art
`Discussion of Utility in the Prior Art
`Rev. 08.2017, January 2018
`
`2122
`2100-1
`
`Fraunhofer Ex 2045-p 1
`Sirius v Fraunhofer
`IPR2018-00690
`
`

`

`MANUAL OF PATENT EXAMINING PROCEDURE
`
`2133.03(e)
`
`Permitted Activity; Experimental
`Use
`
`2133.03(e)(1)
`2133.03(e)(2)
`2133.03(e)(3)
`
`2133.03(e)(4)
`
`2133.03(e)(5)
`
`2133.03(e)(6)
`
`2133.03(e)(7)
`
`Commercial Exploitation
`Intent
`“Completeness” of the
`Invention
`Factors Indicative of an
`Experimental Purpose
`Experimentation and Degree
`of Supervision and Control
`Permitted Experimental
`Activity and Testing
`Activity of an Independent
`Third Party Inventor
`Pre-AIA 35 U.S.C. 102(c)
`Pre-AIA 35 U.S.C. 102(d)
`The Four Requirements of Pre-AIA
`35 U.S.C. 102(d)
`Pre-AIA 35 U.S.C. 102(e)
`Status of U.S. Application as a
`Reference
`Content of the Prior Art Available
`Against the Claims
`Critical Reference Date
`Different Inventive Entity; Meaning
`of “By Another”
`Overcoming a Rejection Under
`Pre-AIA 35 U.S.C. 102(e)
`Pre-AIA 35 U.S.C. 102(f)
`Inventorship
`Applicability of Pre-AIA 35 U.S.C.
`103(c)
`Pre-AIA 35 U.S.C. 102(g)
`Interference Practice
`“The Invention Was Made in This
`Country”
`“By Another Who Has Not
`Abandoned, Suppressed, or
`Concealed It”
`“Conception”
`“Reduction to Practice”
`“Reasonable Diligence”
`[Reserved]
`
`2134
`2135
`2135.01
`
`2136
`2136.01
`
`2136.02
`
`2136.03
`2136.04
`
`2136.05
`
`2137
`2137.01
`2137.02
`
`2138
`2138.01
`2138.02
`
`2138.03
`
`2138.04
`2138.05
`2138.06
`2139
`-2140
`2141
`
`Examination Guidelines for
`Determining Obviousness Under 35
`U.S.C. 103
`Scope and Content of the Prior Art
`Analogous and Nonanalogous Art
`Differences Between Prior Art and
`Claimed Invention
`
`2141.01
`2141.01(a)
`2141.02
`
`2123
`
`2124
`
`2124.01
`
`2125
`2126
`
`2126.01
`
`2126.02
`
`2127
`
`2128
`2128.01
`
`2128.02
`
`2129
`2130
`2131
`
`2131.01
`
`2131.02
`2131.03
`2131.04
`2131.05
`
`2132
`2132.01
`
`2133
`2133.01
`
`2133.02
`
`2133.03
`
`Rejection Over Prior Art’s Broad
`Disclosure Instead of Preferred
`Embodiments
`Exception to the Rule That the Critical
`Reference Date Must Precede the Filing
`Date
`Tax Strategies Deemed Within the
`Prior Art
`Drawings as Prior Art
`Availability 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)
`Date of Availability of a Patent as a
`Reference
`Scope of Reference’s Disclosure
`Which Can Be Used to Reject Claims
`When the Reference Is a “Patent” but
`Not a “Publication”
`Domestic and Foreign Patent
`Applications as Prior Art
`“Printed Publications” as Prior Art
`Level of Public Accessibility
`Required
`Date Publication Is Available as a
`Reference
`Admissions as Prior Art
`[Reserved]
`Anticipation — Application of 35 U.S.C.
`102
`
`Multiple Reference 35 U.S.C. 102
`Rejections
`Genus-Species Situations
`Anticipation of Ranges
`Secondary Considerations
`Nonanalogous or Disparaging Prior
`Art
`Pre-AIA 35 U.S.C. 102(a)
`Publications as Pre-AIA 35 U.S.C.
`102(a) Prior Art
`Pre-AIA 35 U.S.C. 102(b)
`Rejections of Continuation-In-Part
`(CIP) Applications
`Rejections Based on Publications and
`Patents
`Rejections Based on “Public Use” or
`“On Sale”
`“Public Use”
`“On Sale”
`The “Invention”
`“In This Country”
`
`2133.03(a)
`2133.03(b)
`2133.03(c)
`2133.03(d)
`
`Rev. 08.2017, January 2018
`
`2100-2
`
`Fraunhofer Ex 2045-p 2
`Sirius v Fraunhofer
`IPR2018-00690
`
`

`

`PATENTABILITY
`
`2152.02(a)
`2152.02(b)
`2152.02(c)
`2152.02(d)
`2152.02(e)
`2152.02(f)
`2152.03
`2152.04
`2153
`
`2153.01
`
`2141.03
`2142
`
`2143
`
`2143.01
`
`2143.02
`
`2143.03
`
`2144
`
`2144.01
`2144.02
`2144.03
`
`2144.04
`
`2144.05
`
`2144.06
`
`2144.07
`
`2144.08
`
`2144.09
`
`2145
`
`2146
`2147
`-2149
`2150
`
`2151
`
`2152
`
`2152.01
`
`2152.02
`
`Level of Ordinary Skill in the Art
`Legal Concept of Prima Facie
`Obviousness
`Examples of Basic Requirements of a
`Prima Facie Case of Obviousness
`Suggestion or Motivation To Modify
`the References
`Reasonable Expectation of Success
`Is Required
`All Claim Limitations Must Be
`Considered
`Supporting a Rejection Under 35 U.S.C.
`103
`
`Implicit Disclosure
`Reliance on Scientific Theory
`Reliance on Common Knowledge in
`the Art or “Well Known” Prior Art
`Legal Precedent as Source of
`Supporting Rationale
`Obviousness of Similar and
`Overlapping Ranges, Amounts, and
`Proportions
`Art Recognized Equivalence for the
`Same Purpose
`Art Recognized Suitability for an
`Intended Purpose
`Obviousness of Species When Prior
`Art Teaches Genus
`Close Structural Similarity Between
`Chemical Compounds (Homologs,
`Analogues, Isomers)
`Consideration of Applicant’s Rebuttal
`Arguments
`Pre-AIA 35 U.S.C. 103(c)
`[Reserved]
`
`Examination 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
`Overview of the Changes to 35 U.S.C.
`102 and 103 in the AIA
`Detailed Discussion of AIA 35 U.S.C.
`102(a) and (b)
`Effective Filing Date of the Claimed
`Invention
`Prior Art Under AIA 35 U.S.C.
`102(a)(1) (Patented, Described in a
`Printed Publication, or in Public Use,
`on Sale, or Otherwise Available to the
`Public)
`
`Patented
`Described in a Printed Publication
`In Public Use
`On Sale
`Otherwise Available to the Public
`No Requirement of "By Others"
`Admissions
`The Meaning of "Disclosure"
`Prior Art Exceptions Under 35 U.S.C.
`102(b)(1) to AIA 35 U.S.C. 102(a)(1)
`Prior Art Exception Under AIA 35
`U.S.C. 102(b)(1)(A) To AIA 35
`U.S.C. 102(a)(1) (Grace Period
`Inventor Or Inventor-Originated
`Disclosure Exception)
`Grace Period Inventor Disclosure
`Exception
`Grace Period Inventor-Originated
`Disclosure Exception
`Prior Art Exception Under AIA 35
`U.S.C. 102(b)(1)(B) to AIA 35 U.S.C.
`102(a)(1) (Inventor Or
`Inventor-Originated Prior Public
`Disclosure Exception)
`Provisions Pertaining to Subject Matter
`in a U.S. Patent or Application
`Effectively Filed Before the Effective
`Filing Date of the Claimed Invention
`Prior Art Under AIA 35 U.S.C.
`102(a)(2) “U.S. Patent Documents”
`WIPO Published Applications
`Determining When Subject
`Matter Was Effectively Filed
`Under AIA 35 U.S.C. 102(d)
`Requirement Of “Names Another
`Inventor”
`Prior Art Exceptions Under 35 U.S.C.
`102(b)(2) to AIA 35 U.S.C. 102(a)(2)
`Prior Art Exception Under AIA
`35 U.S.C. 102(b)(2)(A) to AIA
`35 U.S.C. 102(a)(2)
`(Inventor-Originated Disclosure
`Exception)
`Prior Art Exception Under AIA
`35 U.S.C. 102(b)(2)(B) to AIA
`35 U.S.C. 102(a)(2) (Inventor or
`Inventor-Originated Prior Public
`Disclosure Exception)
`Prior Art Exception Under AIA
`35 U.S.C. 102(b)(2)(C) to AIA
`35 U.S.C. 102(a)(2) (Common
`
`2153.01(a)
`
`2153.01(b)
`
`2153.02
`
`2154
`
`2154.01
`
`2154.01(a)
`2154.01(b)
`
`2154.01(c)
`
`2154.02
`
`2154.02(a)
`
`2154.02(b)
`
`2154.02(c)
`
`2100-3
`
`Rev. 08.2017, January 2018
`
`Fraunhofer Ex 2045-p 3
`Sirius v Fraunhofer
`IPR2018-00690
`
`

`

`MANUAL OF PATENT EXAMINING PROCEDURE
`
`2155
`
`2155.01
`
`2155.02
`
`2155.03
`
`2155.04
`2155.05
`
`2155.06
`
`2156
`2157
`2158
`2159
`
`2159.01
`
`2159.02
`
`2159.03
`
`2159.04
`
`2160
`2161
`
`2161.01
`
`Ownership or Obligation of
`Assignment)
`Use of Affidavits or Declarations Under
`37 CFR 1.130 To Overcome Prior Art
`Rejections
`Showing That the Disclosure Was
`Made by the Inventor or a Joint
`Inventor
`Showing That the Subject Matter
`Disclosed Had Been Previously
`Publicly Disclosed by the Inventor or
`a Joint Inventor
`Showing That the Disclosure was
`Made, or That Subject Matter had
`Been Previously Publicly Disclosed,
`by Another Who Obtained the Subject
`Matter Disclosed Directly or
`Indirectly From the Inventor or a Joint
`Inventor
`Enablement
`Who May File an Affidavit or
`Declaration Under 37 CFR 1.130
`Situations in Which an Affidavit or
`Declaration Is Not Available
`Joint Research Agreements
`Improper Naming of Inventors
`AIA 35 U.S.C. 103
`Applicability Date Provisions and
`Determining Whether an Application
`Is Subject to the First Inventor To File
`Provisions of the AIA
`Applications Filed Before March 16,
`2013
`Applications Filed on or After March
`16, 2013
`Applications Subject to the AIA but
`Also Containing a Claimed Invention
`Having an Effective Filing Date
`Before March 16, 2013
`Applicant Statement in Transition
`Applications Containing a Claimed
`Invention Having an Effective Filing
`Date on or After March 16, 2013
`[Reserved]
`Three Separate Requirements for
`Specification Under 35 U.S.C. 112(a) or
`Pre-AIA 35 U.S.C. 112, First Paragraph
`Computer Programming, Computer
`Implemented Inventions, and 35
`U.S.C. 112(a) or Pre-AIA 35 U.S.C.
`112, First Paragraph
`
`2162
`
`2163
`
`2163.01
`
`2163.02
`
`2163.03
`
`2163.04
`
`2163.05
`2163.06
`
`2163.07
`
`Policy Underlying 35 U.S.C. 112(a) or
`Pre-AIA 35 U.S.C. 112, First Paragraph
`Guidelines 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
`Support for the Claimed Subject
`Matter in Disclosure
`Standard for Determining Compliance
`With the Written Description
`Requirement
`Typical Circumstances Where
`Adequate Written Description Issue
`Arises
`Burden on the Examiner with Regard
`to the Written Description
`Requirement
`Changes to the Scope of Claims
`Relationship of Written Description
`Requirement to New Matter
`Amendments to Application Which
`Are Supported in the Original
`Description
`Inherent Function, Theory, or
`Advantage
`2163.07(b)
`Incorporation by Reference
`2164
`The Enablement Requirement
`2164.01
`Test of Enablement
`2164.01(a)
`Undue Experimentation Factors
`2164.01(b)
`How to Make the Claimed
`Invention
`How to Use the Claimed
`Invention
`Working Example
`Relationship of Predictability of the
`Art and the Enablement Requirement
`Burden on the Examiner Under the
`Enablement Requirement
`Determination of Enablement Based
`on Evidence as a Whole
`Specification Must Be Enabling
`as of the Filing Date
`Specification Must Be Enabling
`to Persons Skilled in the Art
`Quantity of Experimentation
`Examples of Enablement
`Issues-Missing Information
`Examples of Enablement Issues
`— Chemical Cases
`
`2163.07(a)
`
`2164.01(c)
`
`2164.02
`2164.03
`
`2164.04
`
`2164.05
`
`2164.05(a)
`
`2164.05(b)
`
`2164.06
`2164.06(a)
`
`2164.06(b)
`
`Rev. 08.2017, January 2018
`
`2100-4
`
`Fraunhofer Ex 2045-p 4
`Sirius v Fraunhofer
`IPR2018-00690
`
`

`

`PATENTABILITY
`
`2173.05(k)
`2173.05(l)
`2173.05(m)
`2173.05(n)
`2173.05(o)
`2173.05(p)
`
`2173.05(q)
`2173.05(r)
`2173.05(s)
`2173.05(t)
`2173.05(u)
`
`2173.05(v)
`2173.06
`2174
`
`Aggregation
`[Reserved]
`Prolix
`Multiplicity
`Double Inclusion
`Claim Directed to Product-By-
`Process or Product and Process
`“Use” Claims
`Omnibus Claim
`Reference to Figures or Tables
`Chemical Formula
`Trademarks or Trade Names in a
`Claim
`Mere Function of Machine
`Practice Compact Prosecution
`Relationship Between the Requirements
`of 35 U.S.C. 112(a) and (b) or Pre-AIA
`35 U.S.C. 112, First and Second
`Paragraphs
`[Reserved]
`
`2175
`-2180
`2181
`
`2182
`
`2183
`
`2184
`
`2185
`
`2186
`
`2187
`-2189
`2190
`
`Identifying and Interpreting a 35 U.S.C.
`112(f) or Pre-AIA 35 U.S.C. 112, Sixth
`Paragraph Limitation
`Search and Identification of the Prior
`Art
`Making a Prima Facie Case of
`Equivalence
`Determining Whether an Applicant Has
`Met the Burden of Proving
`Nonequivalence After a Prima Facie
`Case Is Made
`Related Issues Under 35 U.S.C. 112(a)
`or (b) and Pre-AIA 35 U.S.C. 112, First
`or Second Paragraphs
`Relationship to the Doctrine of
`Equivalents
`[Reserved]
`
`Prosecution Laches
`
`2164.06(c)
`
`2164.07
`
`2164.08
`
`Examples of Enablement Issues
`– Computer Programming Cases
`Relationship of Enablement
`Requirement to Utility Requirement
`of 35 U.S.C. 101
`Enablement Commensurate in Scope
`With the Claims
`2164.08(a)
`Single Means Claim
`2164.08(b)
`Inoperative Subject Matter
`2164.08(c)
`Critical Feature Not Claimed
`2165
`The Best Mode Requirement
`2165.01
`Considerations Relevant to Best Mode
`2165.02
`Best Mode Requirement Compared
`to Enablement Requirement
`Requirements for Rejection for Lack
`of Best Mode
`Examples of Evidence of
`Concealment
`[Reserved]
`
`2165.03
`
`2165.04
`
`2166
`-2170
`2171
`
`2172
`
`2172.01
`2173
`
`2173.01
`2173.02
`
`2173.03
`
`2173.04
`2173.05
`
`Two Separate Requirements for Claims
`Under 35 U.S.C. 112 (b) or Pre-AIA 35
`U.S.C. 112, Second Paragraph
`Subject Matter Which the Inventor or
`a Joint Inventor Regards as The
`Invention
`Unclaimed Essential Matter
`Claims Must Particularly Point Out
`and Distinctly Claim the Invention
`Interpreting the Claims
`Determining Whether Claim
`Language is Definite
`Correspondence Between
`Specification and Claims
`Breadth Is Not Indefiniteness
`Specific Topics Related to Issues
`Under 35 U.S.C. 112(b) or Pre-AIA
`35 U.S.C. 112, Second Paragraph
`New Terminology
`Relative Terminology
`Numerical Ranges and Amounts
`Limitations
`Exemplary Claim Language (“for
`example,” “such as”)
`Lack of Antecedent Basis
`Reference to Limitations in
`Another Claim
`Functional Limitations
`Alternative Limitations
`Negative Limitations
`Old Combination
`
`2173.05(a)
`2173.05(b)
`2173.05(c)
`
`2173.05(d)
`
`2173.05(e)
`2173.05(f)
`
`2173.05(g)
`2173.05(h)
`2173.05(i)
`2173.05(j)
`
`2100-5
`
`Rev. 08.2017, January 2018
`
`Fraunhofer Ex 2045-p 5
`Sirius v Fraunhofer
`IPR2018-00690
`
`

`

`PATENTABILITY
`
`§ 2136
`
` In re Kathawala, 9 F.3d 942, 28 USPQ2d 1789
`(Fed. Cir. 1993) (An invention is “patented” for
`purposes of pre-AIA 35 U.S.C. 102(d) when the
`patentee’s rights under the patent become fixed. The
`fact that applicant’s Spanish application was not
`published until after the U.S. filing date is immaterial
`since the Spanish patent was granted before U.S.
`filing.);
` Gramme Elec. Co. v. Arnoux and
`Hochhausen Elec. Co., 17 F. 838, 1883 C.D. 418
`(S.D.N.Y. 1883)
`(Rejection made under a
`predecessor of pre-AIA 35 U.S.C. 102(d) based on
`an Austrian patent granted an exclusionary right for
`1 year but was kept secret, at the option of the
`patentee, for that period. The court held that the
`Austrian patent grant date was the relevant date
`under the statute for purposes of pre-AIA 35 U.S.C.
`102(d) but that the patent could not have been used
`to in a rejection under pre-AIA 35 U.S.C. 102(a) or
`(b).); In re Talbott, 443 F.2d 1397, 170 USPQ 281
`(CCPA 1971) (Applicant cannot avoid a pre-AIA
`35 U.S.C. 102(d) rejection by exercising an option
`to keep
`the subject matter of a German
`Gebrauchsmuster (petty patent) in secrecy until time
`of U.S. filing.).
`
`IV. THE SAME INVENTION MUST BE INVOLVED
`
` “Same Invention” Means That the Application Claims
`Could Have Been Presented in the Foreign Patent
`
`Under pre-AIA 35 U.S.C. 102(d), the “invention...
`patented” in the foreign country must be the same
`as the invention sought to be patented in the U.S.
`When the foreign patent contains the same claims
`as the U.S. application, there is no question that “the
`invention was first patented... in a foreign country.”
` In re Kathawala, 9 F.3d 942, 945, 28 USPQ2d 1785,
`1787 (Fed. Cir. 1993). However, the claims need
`not be identical or even within the same statutory
`class. If applicant is granted a foreign patent which
`fully discloses the invention and which gives
`applicant a number of different claiming options in
`the U.S., the reference in pre-AIA 35 U.S.C. 102(d)
`to “‘invention... patented’ necessarily includes all
`the disclosed aspects of the invention. Thus, the
`[pre-AIA] section 102(d) bar applies regardless
`whether the foreign patent contains claims to less
`than all aspects of the invention.” 9 F.3d at 946,
`28 USPQ2d at 1788. In essence, a pre-AIA 35 U.S.C.
`102(d) rejection applies if applicant’s foreign
`
`application supports the subject matter of the U.S.
`claims. Id. at 944, 947, 28 USPQ2d at 1786, 1789
`(Applicant was granted a Spanish patent claiming a
`method of making a composition. The patent
`disclosed compounds, methods of use and processes
`of making the compounds. After the Spanish patent
`was granted, the applicant filed a U.S. application
`with claims directed to the compound but not the
`process of making it. The Federal Circuit held that
`it did not matter that the claims in the U.S.
`application were directed to the composition instead
`of the process because the foreign specification
`would have supported claims to the composition. It
`was
`immaterial
`that
`the
`formulations were
`unpatentable pharmaceutical compositions in Spain.).
`
`2136 Pre-AIA 35 U.S.C. 102(e) [R-11.2013]
`
` [Editor Note: This MPEP section is not applicable
`to applications subject to examination under the first
`inventor to file (FITF) provisions of the AIA as set
`forth in 35 U.S.C. 100 (note), except for determining
`eligibility of SIRs as eligible prior art. See MPEP §
`2159 et seq. to determine whether an application is
`subject to examination under the FITF provisions,
`and MPEP § 2150 et seq. for examination of
`applications subject to those provisions.]
`
`Pre-AIA 35 U.S.C. 102 Conditions for patentability; novelty
`and loss of right to patent.
`
`A person shall be entitled to a patent unless-
`
`*****
`
`(e) the invention was described in — (1) an application for
`patent, published under section 122(b), by another filed in the
`United States before the invention by the applicant for patent
`or (2) a patent granted on an application for patent by another
`filed in the United States before the invention by the applicant
`for patent, except that an international application filed under
`the treaty defined in section 351(a) shall have the effects for the
`purposes of this subsection of an application filed in the United
`States only if the international application designated the United
`States and was published under Article 21(2) of such treaty in
`the English language.
`
`*****
`
`Pre-AIA 35 U.S.C. 102(e) allows the use of certain
`international application publications and U.S. patent
`application publications, and certain U.S. patents as
`prior art under pre-AIA 35 U.S.C. 102(e) as of their
`respective U.S. filing dates, including certain
`international filing dates. The prior art date of a
`
`2100-167
`
`Rev. 08.2017, January 2018
`
`Fraunhofer Ex 2045-p 6
`Sirius v Fraunhofer
`IPR2018-00690
`
`

`

`§ 2136.01
`
`MANUAL OF PATENT EXAMINING PROCEDURE
`
`reference under pre-AIA 35 U.S.C. 102(e) may be
`the international filing date if the international filing
`date was on or after November 29, 2000, the
`international application designated the United
`States, and
`the
`international application was
`published by the World Intellectual Property
`Organization (WIPO) under the Patent Cooperation
`Treaty (PCT) Article 21(2) in the English language.
`See MPEP § 706.02(f)(1) for examination guidelines
`on the application of pre-AIA 35 U.S.C. 102(e).
`References based on international applications that
`were filed prior to November 29, 2000 are subject
`to the pre-AIPA version of 35 U.S.C. 102(e) (i.e.,
`the version in force on November 28, 2000). See
`MPEP § 2136.03 for additional information.
`
`I. STATUTORY INVENTION REGISTRATIONS
`(SIRs) ARE ELIGIBLE AS PRIOR ART UNDER 35
`U.S.C. 102 and Pre-AIA 35 U.S.C. 102(e)
`
`In accordance with former 35 U.S.C. 157(c), a
`published SIR will be treated the same as a U.S.
`patent for all defensive purposes, usable as a
`reference as of its filing date in the same manner as
`a U.S. patent. A SIR is prior art under all applicable
`sections of 35 U.S.C. 102 including pre-AIA 35
`U.S.C. 102(e). See MPEP § 1111.
`
`II. DEFENSIVE PUBLICATIONS ARE NOT PRIOR
`ART AS OF THEIR FILING DATE
`
`The Defensive Publication Program, available
`between April 1968 and May 1985, provided for the
`voluntary publication of the abstract of the technical
`disclosure of a pending application under certain
`conditions. A defensive publication is not a patent
`or an application publication under 35 U.S.C. 122(b);
`it is a publication. Therefore, it is prior art only as
`of its publication date. Ex parte Osmond, 191 USPQ
`334 (Bd. App. 1973). See MPEP § 711.06(a) for
`more information on Defensive Publications.
`
`2136.01 Status of U.S. Application as a
`Reference [R-11.2013]
`
` [Editor Note: This MPEP section is not applicable
`to applications subject to examination under the first
`inventor to file (FITF) provisions of the AIA as set
`forth in 35 U.S.C. 100 (note). See MPEP § 2159 et
`seq. to determine whether an application is subject
`
`to examination under the FITF provisions, and
`MPEP § 2150 et seq. for examination of applications
`subject to those provisions.]
`
`I. WHEN THERE IS NO COMMON ASSIGNEE OR
`INVENTOR, A U.S. APPLICATION MUST ISSUE
`AS A PATENT OR BE PUBLISHED AS A SIR OR
`AS AN APPLICATION PUBLICATION BEFORE
`IT IS AVAILABLE AS PRIOR ART UNDER Pre-AIA
`35 U.S.C. 102(e)
`
`In addition to U.S. patents and SIRs, certain U.S.
`application publications and certain international
`application publications are also available as prior
`art under pre-AIA 35 U.S.C. 102(e) as of their
`effective U.S. filing dates (which will include certain
`international filing dates). See MPEP § 706.02(a).
`
`II. WHEN THERE IS A COMMON ASSIGNEE OR
`INVENTOR, A PROVISIONAL Pre-AIA 35 U.S.C.
`102(e) REJECTION OVER AN EARLIER FILED
`UNPUBLISHED APPLICATION CAN BE MADE
`
`Based on the assumption that an application will
`ripen into a U.S. patent (or into an application
`publication), it is permissible to provisionally reject
`a later application over an earlier filed, and
`unpublished, application under pre-AIA 35 U.S.C.
`102(e) when there is a common assignee or inventor.
`In re Irish, 433 F.2d 1342, 167 USPQ 764 (CCPA
`1970). In addition, a provisional pre-AIA 35 U.S.C.
`102(e) rejection may be made if the earlier filed
`copending U.S. application has been published as
`redacted (37 CFR 1.217) and the subject matter
`relied upon in the rejection is not supported in the
`redacted publication of the patent application. Such
`a provisional rejection “serves to put applicant on
`notice at the earliest possible time of the possible
`prior
`art
`relationship
`between
`copending
`applications” and gives applicant
`the fullest
`opportunity to overcome the rejection by amendment
`or submission of evidence. In addition, since both
`applications are pending and usually have the same
`assignee, more options are available to applicant for
`overcoming the provisional rejection than if the other
`application were already issued. Ex parte Bartfeld,
`16 USPQ2d 1714 (Bd. Pat. App. & Int. 1990) aff’d
`on other grounds, 925 F.2d 1450, 17 USPQ2d 1885
`(Fed. Cir. 1991). Note that provisional rejections
`over pre-AIA 35 U.S.C. 102(e) are only authorized
`when there is a common inventor or assignee,
`
`Rev. 08.2017, January 2018
`
`2100-168
`
`Fraunhofer Ex 2045-p 7
`Sirius v Fraunhofer
`IPR2018-00690
`
`

`

`PATENTABILITY
`
`§ 2136.02
`
`otherwise the copending application prior to
`publication must remain confidential. MPEP
`§ 706.02(f)(2) and MPEP § 706.02(k) discuss the
`procedures to be used in provisional rejections over
`pre-AIA 35 U.S.C. 102(e) and pre-AIA 35 U.S.C.
`102(e)/103.
`
`For applications filed on or after November 29, 1999
`or pending on or after December 10, 2004, a
`provisional rejection under 35 U.S.C. 103(a) using
`prior art under pre-AIA 35 U.S.C. 102(e) is not
`proper if the application contains evidence that the
`application and the prior art reference were owned
`by the same person, or subject to an obligation of
`assignment to the same person, at the time the
`invention was made. The changes to pre-AIA 35
`U.S.C. 102(e) in the Intellectual Property and High
`Technology Technical Amendments Act of 2002
`(Public Law 107-273, 116 Stat. 1758 (2002)) did
`not affect 35 U.S.C. 103(c) as amended on
`November 29, 1999. See MPEP § 706.02(l)(1)
`through § 706.02(l)(3) for information relating to
`rejections under pre-AIA 35 U.S.C. 103 and
`evidence of common ownership.
`
`In addition, certain non-commonly owned references
`may be disqualified from being applied in a rejection
`under pre-AIA 35 U.S.C. 103(a) due to the
`Cooperative Research and Technology Enhancement
`Act of 2004 (CREATE Act) (Public Law 108-453;
`118 Stat. 3596 (2004)), which was enacted on
`December 10, 2004 and was effective for all patents
`granted on or after December 10, 2004. The
`CREATE Act amended pre-AIA 35 U.S.C. 103(c)
`to provide that subject matter developed by another
`person shall be treated as owned by the same person
`or subject to an obligation of assignment to the same
`person for purposes of determining obviousness if
`certain conditions are met. Pre-AIA 35 U.S.C.103(c),
`as amended by the CREATE Act, continues to apply
`only to subject matter which qualifies as prior art
`under pre-AIA 35 U.S.C. 102(e), (f) or (g), and
`which is being relied upon in a rejection under 35
`U.S.C. 103. It does not apply to or affect subject
`matter which is applied in a rejection under pre-AIA
`35 U.S.C. 102 or a double patenting rejection (see
`37 CFR 1.78(c) and MPEP § 804). In addition, if
`the subject matter qualifies as prior art under any
`other subsection of pre-AIA 35 U.S.C. 102 (e.g.,
`pre-AIA 35 U.S.C. 102(a) or (b)) it will not be
`
`disqualified as prior art under pre-AIA 35 U.S.C.
`103(c). See also MPEP § 706.02(l)(1) through §
`706.02(l)(3) for information relating to rejections
`under pre-AIA 35 U.S.C. 103 and evidence of joint
`research agreements.
`
`2136.02 Content of the Prior Art Available
`Against the Claims [R-08.2017]
`
` Editor Note: This MPEP section is not applicable
`to applications subject to examination under the first
`inventor to file (FITF) provisions of the AIA as set
`forth in 35 U.S.C. 100 (note). See MPEP § 2159 et
`seq. to determine whether an application is subject
`to examination under the FITF provisions, and
`MPEP § 2150 et seq. for examination of applications
`subject to those provisions.]
`
`I. A 35 U.S.C. 102(e) REJECTION MAY RELY ON
`ANY PART OF THE PATENT OR APPLICATION
`PUBLICATION DISCLOSURE
`
`Under pre-AIA 35 U.S.C. 102(e), the entire
`disclosure of a U.S. patent, a U.S. patent application
`publication, or an
`international application
`publication having an earlier effective U.S. filing
`date (which will include certain international filing
`dates) can be relied on to reject the claims. Sun
`Studs, Inc. v. ATA Equip. Leasing, Inc., 872 F.2d
`978, 983, 10 USPQ2d 1338, 1342 (Fed. Cir. 1989).
`See MPEP § 706.02(a).
`
`II. REFERENCE MUST ITSELF CONTAIN THE
`SUBJECT MATTER RELIED ON IN THE
`REJECTION
`
`When a U.S. patent, a U.S. patent application
`publication, or an
`international application
`publication is used to reject claims under pre-AIA
`35 U.S.C. 102(e), the disclosure relied on in the
`rejection must be present in the issued patent or
`application publication. It is the earliest effective
`U.S.
`filing date (which will
`include certain
`international filing dates) of the U.S. patent or
`application publication being relied on as the critical
`reference date and subject matter not included in the
`patent or application publication itself can only be
`used when that subject matter becomes public.
`Portions of the patent application which were
`canceled are not part of the patent or application
`
`2100-169
`
`Rev. 08.2017, January 2018
`
`Fraunhofer Ex 2045-p 8
`Sirius v Fraunhofer
`IPR2018-00690
`
`

`

`§ 2136.03
`
`MANUAL OF PATENT EXAMINING PROCEDURE
`
`publication and thus cannot be relied on in a pre-AIA
`35 U.S.C. 102(e) rejection over the issued patent or
`application publication. Ex parte Stalego, 154 USPQ
`52 (Bd. App. 1966). Similarly, subject matter that
`is disclosed in an abandoned, unpublished parent
`application but was not carried over into the child
`patent or application publication may not be relied
`on as prior art under pre-AIA 35 U.S.C. 102(e). In
`re Klesper, 397 F.2d 882, 886, 158 USPQ 256, 258
`(CCPA 1968). See MPEP § 901.02 for more
`information on availability of abandoned applications
`as prior art. Likewise, subject matter which is
`disclosed in a parent application, but not included
`in the child continuation-in-part (CIP) cannot be
`relied on in a pre-AIA 35 U.S.C. 102(e) rejection
`over the issued or published CIP. In re Lund, 376
`F.2d 982, 153 USPQ 625 (CCPA 1967) (The
`examiner made a pre-AIA 35 U.S.C. 102(e) rejection
`over an
`issued U.S. patent which was a
`continuation-in-part (CIP). The parent application
`of the U.S. patent reference contained an example
`II which was not carried over to the CIP. The court
`held that the subject matter embodied in the canceled
`example II could not be relied on as of either parent
`or child filing date. Thus, the use of example II
`subject matter to reject the claims under pre-AIA 35
`U.S.C. 102(e) was improper.).
`
`Where a U.S. patent claims benefit to a provisional
`application, at least one claim of the patent must be
`supported by the disclosure of the relied upon
`provisional application in compliance withpre-AIA
`35 U.S.C. 112, first paragraph , in order for the patent
`to be usable as prior art under pre-AIA 35 U.S.C.
`102(e) as of the relied upon provisional application’s
`filing date. See MPEP § 2136.03, subsection III.
`
`III. THE SUPREME COURT HAS AUTHORIZED
`35 U.S.C. 103 REJECTIONS BASED ON PRE-AIA
`35 U.S.C. 102(e)
`
`U.S. patents may be used as of their filing dates to
`show that the claimed subject matter is anticipated
`or obvious. Obviousness can be shown by combining
`other prior art with the U.S. patent reference in a
`35 U.S.C. 103 rejection. Hazeltine Research v.
`Brenner, 382 U.S. 252, 147 USPQ 429 (1965).
`Similarly, certain U.S. application publications and
`certain international application publications may
`also be used as of their earliest effective U.S. filing
`
`dates (which will include certain international filing
`dates) to show that the claimed subject matter would
`have been anticipated or obvious.
`
`See MPEP § 706.02(1)(1) through § 706.02(l)(3) for
`additional information on rejections under 35 U.S.C.
`103 and evidence of common ownership or a joint
`research agreement.
`
`2136.03 Critical Reference Date [R-08.2017]
`
` [Editor Note: This MPEP section is not applicable
`to applications subject to examination under the first
`inventor to file (FITF) provisions of the AIA as set
`forth in 35 U.S.C. 100 (note). See MPEP § 2159 et
`seq. to determine whether an application is subject
`to examination under the FITF provisions, and
`MPEP § 2150 et seq. for examination of applications
`subject to those provisions.]
`
`I. FOREIGN PRIORITY DATE
`
` Reference’s Foreign Priority Date Under 35 U.S.C.
`1