Chapter 700 Examination of Applications
`
`701
`702
`702.01
`703
`704
`
`Statutory Authority for Examination
`Requisites of the Application
`Obviously Informal Cases
`[Reserved]
`Search and Requirements for
`Information
`Search
`[Reserved]
`
`704.01
`704.02
`-704.09
`704.10
`704.11
`704.11(a)
`
`704.11(b)
`
`704.12
`
`704.12(a)
`
`704.12(b)
`
`704.12(c)
`
`704.13
`704.14
`
`704.14(a)
`704.14(b)
`
`704.14(c)
`
`704.14(d)
`
`705
`705.01
`705.01(a)
`
`705.01(b)
`705.01(c)
`705.01(d)
`705.01(e)
`705.01(f)
`706
`706.01
`706.02
`706.02(a)
`
`Requirements for Information
`What Information May Be Required
`Examples of Information
`Reasonably Required
`When May a Requirement for
`Information Be Made
`Replies to a Requirement for
`Information
`Relationship of Requirement for
`Information to Duty of Disclosure
`What Constitutes a Complete
`Reply
`Treatment of an Incomplete
`Reply
`Time Periods for Reply
`Making a Requirement for
`Information
`Format of the Requirement
`Examiner’s Obligation Following
`Applicant’s Reply
`Petitions to Requirements Under
`37 CFR 1.105
`Relationship to Information
`Disclosure Statements
`Patentability Reports
`Instructions re Patentability Reports
`Nature of P.R., Its Use and
`Disposal
`Sequence of Examination
`Counting and Recording P.R.s
`[Reserved]
`Limitation as to Use
`Interviews With Applicants
`Rejection of Claims
`Contrasted With Objections
`Rejection on Prior Art
`Rejections Under 35 U.S.C.
`102(a)(1) and (a)(2) and Pre-AIA
`35 U.S.C. 102(a), (b), or (e);
`Printed Publication or Patent
`
`706.02(a)(1)
`
`706.02(a)(2)
`
`706.02(b)
`
`706.02(b)(1)
`
`706.02(b)(2)
`
`706.02(c)
`
`706.02(c)(1)
`
`
`706.02(c)(2)
`
`706.02(d)
`
`706.02(e)
`
`706.02(f)
`
`706.02(f)(1)
`
`706.02(f)(2)
`
`706.02(g)
`
`706.02(h)
`
`706.02(i)
`
`706.02(j)
`
`706.02(k)
`
`700-1
`
`Determining Whether To
`Apply 35 U.S.C. 102(a)(1) or
`102(a)(2)
`Determining Whether To
`Apply Pre-AIA 35 U.S.C.
`102(a), (b), or (e)
`Overcoming a 35 U.S.C. 102
`Rejection Based on a Printed
`Publication or Patent
`Overcoming a 35 U.S.C.
`102(a)(1) or 102(a)(2)
`Rejection Based on a Printed
`Publication or Patent
`Overcoming a Pre-AIA 35
`U.S.C. 102(a), (b), or (e)
`Rejection Based on a Printed
`Publication or Patent
`Rejections Under 35 U.S.C.
`102(a)(1) or Pre-AIA 35 U.S.C.
`102(a) or (b); Knowledge by
`Others or Public Use or Sale
`Rejections under 35 U.S.C.
`102(a)(1); Public Use or
`Public Sale
`Rejections under Pre-AIA 35
`U.S.C. 102(a) and (b); Public
`Use or On Sale
`Rejections Under Pre-AIA 35
`U.S.C. 102(c)
`Rejections Under Pre-AIA 35
`U.S.C. 102(d)
`Rejection Under Pre-AIA 35
`U.S.C. 102(e)
`Examination Guidelines for
`Applying References Under
`Pre-AIA 35 U.S.C. 102(e)
`Provisional Rejections Under
`35 U.S.C. 102(a)(2) or
`Pre-AIA 35 U.S.C. 102(e);
`Reference Is a Copending
`U.S. Patent Application
`Rejections Under Pre-AIA 35
`U.S.C. 102(f)
`Rejections Under Pre-AIA 35
`U.S.C. 102(g)
`Form Paragraphs for Use in
`Rejections Under 35 U.S.C. 102
`Contents of a 35 U.S.C. 103
`Rejection
`Provisional Rejection
`(Obviousness) Under 35 U.S.C.
`Rev. 08.2017, January 2018
`
`Fraunhofer Ex 2047-p 1
`Sirius v Fraunhofer
`IPR2018-00690
`
`

`

`MANUAL OF PATENT EXAMINING PROCEDURE
`
`103 Using Provisional Prior Art
`Under Pre-AIA 35 U.S.C. 102(e)
`Rejections Under Pre-AIA 35
`U.S.C. 103(a) Using Prior Art
`Under Only Pre-AIA 35 U.S.C.
`102 (e), (f), or (g)
`Rejections Under Pre-AIA 35
`U.S.C. 103(a) Using Prior Art
`Under Pre-AIA 35 U.S.C.
`102(e), (f), or (g); Prior Art
`Disqualification Under
`Pre-AIA 35 U.S.C. 103(c)
`Establishing Common
`Ownership or Joint Research
`Agreement Under Pre-AIA
`35 U.S.C. 103(c)
`Examination Procedure With
`Respect to Pre-AIA 35
`U.S.C. 103(c)
`Form Paragraphs for Use in
`Rejections Under 35 U.S.C. 103
`Biotechnology Process
`Applications; Pre-AIA 35 U.S.C.
`103(b)
`Rejections Not Based on Prior Art
`Rejections Under 35 U.S.C. 101
`Barred by Atomic Energy Act
`Rejections Under 35 U.S.C.
`112(a) or Pre-AIA 35 U.S.C. 112,
`First Paragraph
`Rejections Under 35 U.S.C.
`112(b) or Pre-AIA 35 U.S.C. 112,
`Second Paragraph
`Form Paragraphs for Use Relating
`to 35 U.S.C. 112(f) or Pre-AIA
`35 U.S.C. 112, Sixth Paragraph
`[Reserved]
`
`Duplicate Claims
`[Reserved]
`Nonelected Inventions
`[Reserved]
`New Matter
`[Reserved]
`
`Foreign Filing Without License
`[Reserved]
`Disclaimer
`After Interference or Former
`Public Use Proceeding
`Res Judicata
`
`706.02(l)
`
`706.02(l)(1)
`
`706.02(l)(2)
`
`706.02(l)(3)
`
`706.02(m)
`
`706.02(n)
`
`706.03
`706.03(a)
`706.03(b)
`706.03(c)
`
`706.03(d)
`
`706.03(e)
`
`706.03(f)
`-706.03(j)
`706.03(k)
`706.03(l)
`706.03(m)
`706.03(n)
`706.03(o)
`706.03(p)
`-706.03(r)
`706.03(s)
`706.03(t)
`706.03(u)
`706.03(v)
`
`706.03(w)
`
`Rev. 08.2017, January 2018
`
`700-2
`
`706.03(x)
`706.03(y)
`706.04
`
`706.05
`
`706.06
`
`706.07
`706.07(a)
`
`706.07(b)
`
`706.07(c)
`706.07(d)
`
`706.07(e)
`
`706.07(f)
`706.07(g)
`706.07(h)
`
`Reissue
`Improper Markush Grouping
`Rejection of Previously Allowed
`Claims
`Rejection After Allowance of
`Application
`Rejection of Claims Copied From
`Patent
`Final Rejection
`Final Rejection, When Proper on
`Second Action
`Final Rejection, When Proper on
`First Action
`Final Rejection, Premature
`Final Rejection, Withdrawal of,
`Premature
`Withdrawal of Final Rejection,
`General
`Time for Reply to Final Rejection
`Transitional After-Final Practice
`Request for Continued
`Examination (RCE) Practice
`Examiner’s Letter or Action
`Primary Examiner Indicates Action
`for New Assistant
`Applications Up for Third Action and
`5-Year Applications
`[Reserved]
`Citation of References
`Copies of Cited References
`Citation of Related Art and
`Information by Applicants
`Order of Listing
`Reference Cited in Subsequent
`Actions
`Data Used in Citing References
`[Reserved]
`Incorrect Citation of References
`Citation of Decisions, Orders
`Memorandums, and Notices
`Completeness and Clarity of
`Examiner’s Action
`Complete Action on Formal
`Matters
`[Reserved]
`
`707
`707.01
`
`707.02
`
`707.03-707.04
`707.05
`707.05(a)
`707.05(b)
`
`707.05(c)
`707.05(d)
`
`707.05(e)
`707.05(f)
`707.05(g)
`707.06
`
`707.07
`
`707.07(a)
`
`707.07(b)
`-707.07(c)
`707.07(d)
`
`707.07(e)
`
`707.07(f)
`
`Language To Be Used in
`Rejecting Claims
`Note All Outstanding
`Requirements
`Answer All Material Traversed
`
`Fraunhofer Ex 2047-p 2
`Sirius v Fraunhofer
`IPR2018-00690
`
`

`

`EXAMINATION OF APPLICATIONS
`
`707.07(g)
`707.07(h)
`
`707.07(i)
`
`707.07(j)
`
`707.07(k)
`707.07(l)
`707.08
`
`707.09
`
`707.10
`707.11
`707.12
`707.13
`708
`708.01
`708.02
`708.02(a)
`708.02(b)
`708.02(c)
`
`708.03
`709
`709.01
`
`710
`710.01
`710.01(a)
`710.02
`
`710.02(a)
`710.02(b)
`
`710.02(c)
`
`710.02(d)
`
`710.02(e)
`710.03
`710.04
`710.04(a)
`710.05
`
`710.06
`
`711
`
`Piecemeal Examination
`Notify of Inaccuracies in
`Amendment
`Each Claim To Be Mentioned in
`Each Office Action
`State When Claims Are
`Allowable
`Numbering Paragraphs
`Comment on Examples
`Reviewing and Initialing by Assistant
`Examiner
`Signing by Primary or Other
`Authorized Examiner
`Entry
`Date
`Mailing
`Returned Office Action
`Order of Examination
`List of Special Cases
`Petition To Make Special
`Accelerated Examination
`Prioritized Examination
`Patent Prosecution Highway
`Program
`Examiner Tenders Resignation
`Suspension of Action
`Overlapping Applications by Same
`Applicant or Owned by Same
`Assignee
`Period for Reply
`Statutory Period
`Statutory Period, How Computed
`Shortened Statutory Period and Time
`Limit Actions Computed
`[Reserved]
`Shortened Statutory Period:
`Situations in Which Used
`Specified Time Limits: Situations
`in Which Used
`Difference Between Shortened
`Statutory Periods for Reply and
`Specified Time Limits
`Extension of Time
`[Reserved]
`Two Periods Running
`Copying Patent Claims
`Period Ending on Saturday, Sunday,
`or a Federal Holiday
`Situations When Reply Period Is
`Reset or Restarted
`Abandonment of Patent Application
`
`711.01
`711.02
`
`711.02(a)
`711.02(b)
`
`711.02(c)
`711.03
`
`711.03(a)
`
`711.03(b)
`
`711.03(c)
`
`711.03(d)
`
`711.04
`
`711.04(a)
`711.04(b)
`
`711.04(c)
`
`711.05
`
`711.06
`
`711.06(a)
`
`712
`713
`713.01
`713.02
`
`713.03
`
`713.04
`
`713.05
`
`713.06
`
`713.07
`713.08
`713.09
`
`713.10
`
`714
`
`Express or Formal Abandonment
`Failure To Take Required Action
`During Statutory Period
`Insufficiency of Reply
`Special Situations Involving
`Abandonment
`Termination of Proceedings
`Reconsideration of Holding of
`Abandonment; Revival
`Holding Based on Insufficiency
`of Reply
`Holding Based on Failure To
`Reply Within Period
`Petitions Relating to
`Abandonment
`Examiner’s Statement on Petition
`To Set Aside Examiner’s Holding
`Public Access to Abandoned
`Applications
`Date of Abandonment
`Ordering of Patented and
`Abandoned Files
`Notifying Applicants of
`Abandonment
`Letter of Abandonment Received
`After Application Is Allowed
`Abstracts, Abbreviatures, and
`Defensive Publications
`Citation and Use of Abstracts,
`Abbreviatures, and Defensive
`Publications as References
`[Reserved]
`Interviews
`General Policy, How Conducted
`Interviews Prior to First Official
`Action
`Interview for “Sounding Out”
`Examiner Not Permitted
`Substance of Interview Must Be Made
`of Record
`Interviews Prohibited or Granted,
`Special Situations
`No Inter Partes Questions Discussed
`Ex Parte
`Exposure of Other Cases
`Demonstration, Exhibits, Models
`Interviews Between Final Rejection
`and Notice of Appeal
`Interview Preceding Filing
`Amendment Under 37 CFR 1.312
`Amendments, Applicant’s Action
`
`700-3
`
`Rev. 08.2017, January 2018
`
`Fraunhofer Ex 2047-p 3
`Sirius v Fraunhofer
`IPR2018-00690
`
`

`

`MANUAL OF PATENT EXAMINING PROCEDURE
`
`714.01
`714.01(a)
`
`714.01(b)
`714.01(c)
`
`714.01(d)
`
`714.01(e)
`
`714.02
`714.03
`
`714.03(a)
`714.04
`
`714.05
`
`714.06
`714.07
`714.08
`-714.09
`714.10
`
`714.11
`
`714.12
`
`714.13
`
`714.14
`
`714.15
`
`714.16
`
`714.16(a)
`
`714.16(b)
`
`714.16(c)
`
`714.16(d)
`
`714.16(e)
`
`Signatures to Amendments
`Unsigned or Improperly Signed
`Amendment
`[Reserved]
`Signed by Attorney or Agent Not
`of Record
`Amendment Signed by Applicant
`but Not by Attorney or Agent of
`Record
`Amendments Before First Office
`Action
`Must Be Fully Responsive
`Amendments Not Fully Responsive,
`Action To Be Taken
`Supplemental Amendment
`Claims Presented in Amendment With
`No Attempt To Point Out Patentable
`Novelty
`Examiner Should Immediately
`Review
`[Reserved]
`Amendments Not in Permanent Ink
`[Reserved]
`
`Claims Added in Excess of Claims
`Previously Paid For
`Amendment Filed During Interference
`Proceedings
`Amendments and Other Replies After
`Final Rejection or Action
`Amendments and Other Replies After
`Final Rejection or Action, Procedure
`Followed
`Amendments After Allowance of All
`Claims
`Amendment Received in Technology
`Center After Mailing of Notice of
`Allowance
`Amendment After Notice of
`Allowance, 37 CFR 1.312
`Amendments Under 37 CFR
`1.312, Copied Patent Claims
`Amendments Under 37 CFR
`1.312 Filed With a Motion Under
`37 CFR 41.208
`Amendments Under 37 CFR
`1.312, Additional Claims
`Amendments Under 37 CFR
`1.312, Handling
`Amendments Under 37 CFR
`1.312, Entry in Part
`
`Rev. 08.2017, January 2018
`
`700-4
`
`Amendment Filed After the Period
`for Reply Has Expired
`Entry of Amendments
`List of Amendments, Entry Denied
`List of Amendments Entered in Part
`Amendments Inadvertently Entered,
`No Legal Effect
`[Reserved]
`
`714.17
`
`714.18
`714.19
`714.20
`714.21
`
`714.22
`-714.24
`714.25
`715
`
`715.01
`
`715.01(a)
`
`715.01(b)
`
`715.01(c)
`
`715.01(d)
`
`Discourtesy of Applicant or Attorney
`Swearing Behind a Reference —
`Affidavit or Declaration Under 37 CFR
`1.131(a)
`37 CFR 1.131(a) Affidavits Versus
`37 CFR 1.132 Affidavits
`Reference Is a Patent or
`Published Application Naming
`Different Inventive Entity With
`at Least One Common Inventor
`Reference and Application Have
`Common Assignee
`Reference Is Publication of
`Applicant’s Own Invention
`Activities Applied Against the
`Claims
`How Much of the Claimed Invention
`Must Be Shown, Including the
`General Rule as to Generic Claims
`Genus-Species, Practice Relative to
`Cases Where Predictability Is in
`Question
`Who May Make Affidavit or
`Declaration Under 37 CFR 1.131(a);
`Formal Requirements of Affidavits
`and Declarations
`U.S. Patent or Application Publication
`Claiming Same Invention
`[Reserved]
`Facts and Documentary Evidence
`Diligence
`Interference Testimony
`Sometimes Used
`Acts Relied Upon Must Have
`Been Carried Out in This Country
`or a NAFTA or WTO Member
`Country
`Disposition of Exhibits
`Decided by Primary Examiner
`Timely Presentation
`
`715.02
`
`715.03
`
`715.04
`
`715.05
`
`715.06
`715.07
`715.07(a)
`715.07(b)
`
`715.07(c)
`
`715.07(d)
`715.08
`715.09
`
`Fraunhofer Ex 2047-p 4
`Sirius v Fraunhofer
`IPR2018-00690
`
`

`

`EXAMINATION OF APPLICATIONS
`
`715.10
`
`716
`
`716.01
`716.01(a)
`
`716.01(b)
`
`716.01(c)
`
`716.01(d)
`716.02
`716.02(a)
`
`716.02(b)
`716.02(c)
`
`716.02(d)
`
`716.02(e)
`
`716.02(f)
`716.02(g)
`716.03
`716.03(a)
`
`716.03(b)
`
`716.04
`716.05
`716.06
`716.07
`716.08
`
`716.09
`716.10
`
`717
`
`717.01
`
`717.01(a)
`
`717.01(a)(1)
`
`
`Review of Affidavit or Declaration
`for Evidence of Prior Public Use or
`Sale or Failure to Disclose Best Mode
`Affidavits or Declarations Traversing
`Rejections, 37 CFR 1.132
`Generally Applicable Criteria
`Objective Evidence of
`Nonobviousness
`Nexus Requirement and Evidence
`of Nonobviousness
`Probative Value of Objective
`Evidence
`Weighing Objective Evidence
`Allegations of Unexpected Results
`Evidence Must Show Unexpected
`Results
`Burden on Applicant
`Weighing Evidence of Expected
`and Unexpected Results
`Unexpected Results
`Commensurate in Scope With
`Claimed Invention
`Comparison With Closest Prior
`Art
`Advantages Disclosed or Inherent
`Declaration or Affidavit Form
`Commercial Success
`Commercial Success
`Commensurate in Scope With
`Claimed Invention
`Commercial Success Derived
`From Claimed Invention
`Long-Felt Need and Failure of Others
`Skepticism of Experts
`Copying
`Inoperability of References
`Utility and Operability of Applicant’s
`Disclosure
`Sufficiency of Disclosure
`Attribution Affidavit or Declaration
`to Overcome Rejection Under
`Pre-AIA 35 U.S.C. 102 or 103
`Prior Art Exceptions under AIA 35
`U.S.C. 102(b)(1) and (2)
`Affidavit or Declaration Under 37
`CFR 1.130
`Declarations or Affidavits under
`37 CFR 1.130(a) – Attribution
`Evaluation of Declarations or
`Affidavits under 37 CFR
`1.130(a)
`
`717.01(b)
`
`
`717.01(b)(1)
`
`
`717.01(b)(2)
`
`
`717.01(c)
`
`
`717.01(d)
`
`717.01(e)
`
`717.01(f)
`
`717.02
`
`717.02(a)
`
`717.02(b)
`
`
`717.02(c)
`
`
`717.02(d)
`
`
`718
`
`719
`719.01
`719.02
`719.03
`719.04
`719.05
`720
`721-723
`
`Declarations or Affidavits under
`37 CFR 1.130(b) – Prior Public
`Disclosure
`Evaluation of Declarations or
`Affidavits under 37 CFR
`1.130(b)
`Determining if the Subject
`Matter of the Intervening
`Disclosure is the Same as the
`Subject Matter of the
`Inventor–Originated Prior
`Public Disclosure
`Who May Make Affidavit or
`Declaration; Formal
`Requirements of Affidavits and
`Declarations
`U.S. Patent or Application
`Publication Claiming Same
`Invention
`Passed Upon (or Decided by) by
`Primary Examiner
`Seasonable (or Timely)
`Presentation
`Prior Art Exception for Commonly
`Owned or Joint Research Agreement
`Subject Matter under AIA 35 U.S.C.
`102(b)(2)(C)
`Invoking the Prior Art Exception
`under 35 U.S.C. 102(b)(2)(C)
`Evaluating Whether the Prior Art
`Exception under AIA 35 U.S.C.
`102(b)(2)(C) is Properly Invoked
`Examination Procedure With
`Respect to the Prior Art
`Exception under AIA 35 U.S.C.
`102(b)(2)(C)
`Form Paragraphs With Respect
`to the Prior Art Exception under
`AIA 35 U.S.C. 102(b)(2)(C)
`Affidavit or Declaration to Disqualify
`Commonly Owned Patent as Prior Art,
`37 CFR 1.131(c)
`File Wrapper
`Papers in Image File Wrapper
`Residence of Inventor Changed
`Classification During Examination
`Index of Claims
`Field of Search
`Public Use Proceedings
`[Reserved]
`
`700-5
`
`Rev. 08.2017, January 2018
`
`Fraunhofer Ex 2047-p 5
`Sirius v Fraunhofer
`IPR2018-00690
`
`

`

`§ 701
`
`MANUAL OF PATENT EXAMINING PROCEDURE
`
`724
`
`724.01
`
`724.02
`
`724.03
`
`724.04
`
`724.04(a)
`
`724.04(b)
`
`724.04(c)
`
`724.05
`
`724.06
`
`Trade Secret, Proprietary, and
`Protective Order Materials
`Completeness of the Patent File
`Wrapper
`Method of Submitting Trade Secret,
`Proprietary, and/or Protective Order
`Materials
`Types of Trade Secret, Proprietary,
`and/or Protective Order Materials
`Submitted Under MPEP § 724.02
`Office Treatment and Handling of
`Materials Submitted Under MPEP §
`724.02
`Materials Submitted in an
`Application Covered by 35
`U.S.C. 122
`Materials Submitted in Reissue
`Applications Open to the Public
`Under 37 CFR 1.11(b)
`Materials Submitted in
`Reexamination File Open to the
`Public Under 37 CFR 1.11(d)
`Petition To Expunge Information or
`Copy of Papers in Application File
`Handling of Petitions To Expunge
`Information or Copy of Papers in
`Application File
`
`35 U.S.C. 100 Definitions.
`
` [Editor Note: 35 U.S.C. 100(e)-(j) as set forth below are only
`applicable to patent applications and patents subject to the first
`inventor to file provisions of the AIA ( 35 U.S.C. 100 (note)). See
`pre-AIA 35 U.S.C. 100(e) for paragraph (e) as applicable to
`patent applications and patents not subject to the first inventor
`to file provisions of the AIA.]
`
`When used in this title unless the context otherwise indicates -
`
`(a) The term “invention” means invention or discovery.
`
`(b) The term “process” means process, art, or method, and
`includes a new use of a known process, machine, manufacture,
`composition of matter, or material.
`
`(c) The terms “United States” and “this country” mean the
`United States of America, its territories and possessions.
`
`(d) The word “patentee” includes not only the patentee to
`whom the patent was issued but also the successors in title to
`the patentee.
`
`(e) The term “third-party requester” means a person
`requesting ex parte reexamination under section 302 who is not
`the patent owner.
`
`(f) The term "inventor" means the individual or, if a joint
`invention, the individuals collectively who invented or
`discovered the subject matter of the invention.
`
`(g) The terms "joint inventor" and "coinventor" mean any
`1 of the individuals who invented or discovered the subject
`matter of a joint invention.
`
`(h) The term "joint research agreement" means a written
`contract, grant, or cooperative agreement entered into by 2 or
`more persons or entities for the performance of experimental,
`developmental, or research work in the field of the claimed
`invention.
`
`701 Statutory Authority for Examination
`[R-07.2015]
`
`35 U.S.C. 131 Examination of application.
`
`(i)
`
`The Director shall cause an examination to be made of the
`application and the alleged new invention; and if on such
`examination it appears that the applicant is entitled to a patent
`under the law, the Director shall issue a patent therefor.
`
`The main conditions precedent to the grant of a
`patent to an applicant are set forth in 35 U.S.C. 101,
`102, 103, and 112.
`
`35 U.S.C. 101 Inventions patentable.
`
`Whoever invents or discovers any new and useful process,
`machine, manufacture, or composition of matter, or any new
`and useful improvement thereof, may obtain a patent therefor,
`subject to the conditions and requirements of this title.
`
`Form paragraph 7.04.01 copies 35 U.S.C. 101. See
`MPEP § 706.03(a).
`
`(1) The term "effective filing date" for a claimed
`invention in a patent or application for patent means—
`
`(A) if subparagraph (B) does not apply, the actual
`filing date of the patent or the application for the patent
`containing a claim to the invention; or
`
`(B) the filing date of the earliest application for
`which the patent or application is entitled, as to such invention,
`to a right of priority under section 119, 365(a), or 365(b) or to
`120, 121,
`the benefit of an earlier filing date under section
`365(c), or 386(c).
`
`(2) The effective filing date for a claimed invention in
`an application for reissue or reissued patent shall be determined
`by deeming the claim to the invention to have been contained
`in the patent for which reissue was sought.
`
`(j) The term "claimed invention" means the subject matter
`defined by a claim in a patent or an application for a patent.
`Pre-AIA 35 U.S.C. 100 Definitions.
`
` [Editor Note: Pre-AIA 35 U.S.C. 100(e) as set forth below is
`not applicable to any patent application subject to the first
`inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)).
`
`Rev. 08.2017, January 2018
`
`700-6
`
`Fraunhofer Ex 2047-p 6
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`
`

`

`EXAMINATION OF APPLICATIONS
`
`§ 706.02(f)(1)
`
`(A) The foreign application must be filed more
`than 12 months before the effective filing date of
`the United States application. See MPEP § 706.02
`regarding determination of the effective filing date
`of the application.
`(B) The foreign and United States applications
`must be filed by the same applicant, his or her legal
`representatives or assigns.
`(C) The foreign application must have actually
`issued as a patent or inventor’s certificate (e.g.,
`granted by sealing of the papers in Great Britain)
`before the filing in the United States. It need not be
`published but the patent rights granted must be
`enforceable.
`(D) The same invention must be involved.
`
`If such a foreign patent or inventor’s certificate is
`discovered by the examiner, the rejection is made
`under pre-AIA 35 U.S.C. 102(d) on the ground of
`statutory bar.
`
`See MPEP § 2135.01 for case law which further
`clarifies each of the four requirements of pre-AIA
`35 U.S.C. 102(d).
`
`SEARCHING FOR PRE-AIA 35 U.S.C. 102(d) PRIOR
`ART
`
`The examiner should only undertake a search for an
`issued foreign patent for use as pre-AIA 35 U.S.C.
`102(d) prior art if there is a reasonable possibility
`that a foreign patent covering the same subject matter
`as the U.S. application has been granted to the same
`inventive entity before the U.S. effective filing date,
`i.e., the time period between foreign and U.S. filings
`is greater than the usual time it takes for a patent to
`issue
`in
`the foreign country. Normally,
`the
`probability of the inventor’s foreign patent issuing
`before the U.S. filing date is so slight as to make
`such a search unproductive. However, it should be
`kept in mind that the average pendency varies greatly
`between foreign countries. In Belgium, for instance,
`a patent may be granted in just a month after its
`filing, while in Japan the patent may not issue for
`several years.
`
`The search for a granted patent can be accomplished
`on an electronic database either by the examiner or
`by the staff of the Scientific and Technical
`Information Center. See MPEP § 901.06(a),
`
`subsection IV.B., for more information on online
`searching. The document must be a patent or
`inventor’s certificate and not merely a published or
`laid open application.
`
`706.02(f) Rejection Under Pre-AIA 35 U.S.C.
`102(e) [R-08.2012]
`
` [Editor Note: This MPEP section is not applicable
`to applications subject to examination under the first
`inventor to file provisions of the AIA as explained
`in 35 U.S.C. 100 (note) and MPEP § 2159. See
`MPEP § 2154 et seq. for the examination of
`applications subject to the first inventor to file
`provisions of the AIA involving, inter alia, rejections
`based on U.S. patent documents.]
`
`Pre-AIA 35 U.S.C. 102(e), in part, allows for certain
`prior art (i.e., U.S. patents, U.S. patent application
`publications and WIPO publications of international
`applications) to be applied against the claims as of
`its effective U.S. filing date. This provision of
`pre-AIA 35 U.S.C. 102 is mostly utilized when the
`publication or issue date is too recent for the
`reference to be applied under pre-AIA 35 U.S.C.
`102(a) or pre-AIA 35 U.S.C. 102(b). In order to
`apply a reference under pre-AIA 35 U.S.C. 102(e),
`the inventive entity of the application must be
`different than that of the reference. Note that, where
`there are joint inventors, only one inventor needs to
`be different for the inventive entities to be different
`and a rejection under pre-AIA 35 U.S.C. 102(e) is
`applicable even if there are some inventors in
`common between the application and the reference.
`
`706.02(f)(1) Examination Guidelines for
`Applying References Under Pre-AIA 35
`U.S.C. 102(e) [R-08.2017]
`
` [Editor Note: This MPEP section is not applicable
`to applications subject to examination under the first
`inventor to file provisions of the AIA as explained
`in 35 U.S.C. 100 (note) and MPEP § 2159. See
`MPEP § 2154 et seq. for the examination of
`applications subject to the first inventor to file
`provisions of the AIA involving, inter alia, rejections
`based on U.S. patent documents.]
`
`700-39
`
`Rev. 08.2017, January 2018
`
`Fraunhofer Ex 2047-p 7
`Sirius v Fraunhofer
`IPR2018-00690
`
`

`

`§ 706.02(f)(1)
`
`MANUAL OF PATENT EXAMINING PROCEDURE
`
`I. DETERMINE THE APPROPRIATE PRE-AIA 35
`U.S.C. 102(e) DATE FOR EACH POTENTIAL
`REFERENCE BY FOLLOWING THE GUIDELINES,
`EXAMPLES, AND FLOW CHARTS SET FORTH
`BELOW:
`
`(A) The potential reference must be a U.S.
`patent, a U.S. application publication (35 U.S.C.
`122(b)) or a WIPO publication of an international
`application under PCT Article 21(2) in order to apply
`the reference under pre-AIA 35 U.S.C. 102(e).
`(B) Determine if the potential reference resulted
`from, or claimed the benefit of, an international
`application. If the reference does, go to step (C)
`below. The 35 U.S.C. 102(e) date of a reference that
`did not result from, nor claimed the benefit of, an
`international application is its earliest effective U.S.
`filing date, taking into consideration any proper
`benefit claims to prior U.S. applications under
`35 U.S.C. 119(e) or 120 if the prior application(s)
`properly supports the subject matter used to make
`the rejection in compliance with pre-AIA 35 U.S.C.
`112, first paragraph. See MPEP § 2136.02. In
`addition, for benefit claims under 35 U.S.C. 119(e),
`at least one claim of the reference patent must be
`supported by the disclosure of the relied upon
`provisional application in compliance with pre-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 a relied upon provisional application’s
`filing date. See MPEP § 2136.03, subsection III.
`(C) If the potential reference resulted from, or
`claimed the benefit of, an international application,
`the following must be determined:
`(1) If the international application meets the
`following three conditions:
`(a) an international filing date on or after
`November 29, 2000;
`(b) designated the United States; and
`(c) published under PCT Article 21(2) in
`
`English,
` then the international filing date is a U.S.
`filing date for prior art purposes under
` pre-AIA
`35 U.S.C. 102(e). If such an international application
`properly claims benefit to an earlier-filed U.S. or
`international application, or to an earlier-filed U.S.
`provisional application, apply the reference under
`pre-AIA 35 U.S.C. 102(e) as of the earlier filing
`date, assuming all the conditions of pre-AIA
`
`35 U.S.C. 102(e), 119(e), 120, 365(c), or 386(c) are
`met. The subject matter used in the rejection must
`be disclosed in the earlier-filed application in
`compliance with pre-AIA 35 U.S.C. 112, first
`paragraph, in order for that subject matter to be
`entitled to the earlier filing date under pre-AIA 35
`U.S.C. 102(e). See MPEP § 2136.02. In addition,
`for benefit claims under 35 U.S.C. 119(e), at least
`one claim of the reference patent must be supported
`by the disclosure of the relied upon provisional
`application in compliance with pre-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 a relied upon provisional application’s filing
`date. See MPEP § 2136.03, subsection III. Note,
`where the earlier application is an international
`application, the earlier international application must
`satisfy the same three conditions (i.e., filed on or
`after November 29, 2000, designated the U.S., and
`had been published in English under PCT Article
`21(2)) for the earlier international filing date to be
`a U.S. filing date for prior art purposes under
`pre-AIA 35 U.S.C. 102(e).
`(2) If the international application was filed
`on or after November 29, 2000, but did not designate
`the United States or was not published in English
`under PCT Article 21(2), do not treat the
`international filing date as a U.S. filing date for prior
`art purposes. In this situation, do not apply the
`reference as of its international filing date, its date
`of completion of the 35 U.S.C. 371(c)(1), (2) and
`(4) requirements, or any earlier filing date to which
`such an international application claims benefit or
`priority. The reference may be applied under
`pre-AIA 35 U.S.C. 102(a) or pre-AIA 35 U.S.C.
`102(b) as of its publication date, or pre-AIA
`35 U.S.C. 102(e) as of any later U.S. filing date of
`an application that properly claimed the benefit of
`the international application (if applicable).
`(3) If the international application has an
`international filing date prior to November 29, 2000,
`apply the reference under the provisions of pre-AIA
`35 U.S.C. 102 and 374, prior to the AIPA
`amendments:
`(a) For U.S. patents, apply the reference
`under pre-AIA 35 U.S.C. 102(e) as of the earlier of
`the date of completion of the requirements of
`35 U.S.C. 371(c)(1), (2) and (4) or the filing date of
`
`Rev. 08.2017, January 2018
`
`700-40
`
`Fraunhofer Ex 2047-p 8
`Sirius v Fraunhofer
`IPR2018-00690
`
`

`

`EXAMINATION OF APPLICATIONS
`
`§ 706.02(f)(1)
`
`the later-filed U.S. application that claimed the
`benefit of the international application;
`(b) For U.S. application publications and
`WIPO publications directly resulting from
`international applications under PCT Article 21(2),
`never apply these references under pre-AIA
`35 U.S.C. 102(e). These references may be applied
`as of their publication dates under pre-AIA 35 U.S.C.
`102(a) or pre-AIA 35 U.S.C. 102(b);
`(c) For U.S. application publications of
`applications that claim the benefit under 35 U.S.C.
`120 or 365(c) of an international application filed
`prior to November 29, 2000, apply the reference
`under pre-AIA 35 U.S.C. 102(e) as of the actual
`filing date of the later-filed U.S. application that
`claimed the benefit of the international application.
`(4) Examiners should be aware that although
`a publication of, or a U.S. Patent issued from, an
`international application may not have a pre-AIA
`35 U.S.C. 102(e) date at all, or may have a pre-AIA
`35 U.S.C. 102(e) date that is after the effective filing
`date of the application being examined (so it is not
`“prior art”), the corresponding WIPO publication of
`an international application may have an earlier
`pre-AIA 35 U.S.C. 102(a) or pre-AIA 35 U.S.C.
`102(b)) date.
`(D) Foreign applications’ filing dates that are
`claimed (via 35 U.S.C. 119(a)-(d), (f), or 365(a) or
`(b)) in applications, which have been published as
`U.S. or WIPO application publications or patented
`in the U.S., may not be used as pre-AIA 35 U.S.C.
`
`102(e) dates for prior art purposes. This includes
`international filing dates claimed as foreign priority
`dates under 35 U.S.C. 365(a) or (b).
`
`II. EXAMPLES
`
`In order to illustrate the prior art dates of U.S. and
`WIPO publications of patent applications and U.S.
`patents under pre-AIA 35 U.S.C. 102(e), nine
`examples are presented below. The examples only
`cover the most common factual situations that might
`be encountered when determining the pre-AIA
`35 U.S.C. 102(e) date of a reference. Examples 1
`and 2 involve only U.S. application publications and
`U.S. patents. Example 3 involves a priority claim to
`a foreign patent application. Examples 4-9 involve
`international applications. The time lines in the
`examples below show the history of the prior art
`references that could be applied against the claims
`of the application under examination, or the patent
`under reexamination.
`
`The examples only show the information necessary
`to determine a prior art date under pre-AIA
`35 U.S.C. 102(e). Also, the dates in the examples
`below are arbitrarily used and are presented for
`illustrative purposes only. Therefore, correlation of
`patent grant dates with Tuesdays or application
`publication dates with Thursdays may not be
`portrayed in the examples. All references to 35
`U.S.C. 102 in the examples and flowcharts below
`are to the version of 35 U.S.C. 102 in effect on
`March 15, 2013 (the pre-AIA version).
`
`Example 1: Reference Publication and Patent of 35 U.S.C. 111(a) Application with no Priority/Benefit Claims.
`For reference publications and patents of patent applications filed under 35 U.S.C. 111(a) with no claim for the
`benefit of, or priority to, a prior application, the prior art dates under pre-AIA 35 U.S.C. 102(e) accorded to these
`references are the earliest effective U.S. filing dates. Thus, a publication and patent of a 35 U.S.C. 111(a) application,
`which does not claim any benefit under either 35 U.S.C. 119(e), 120, 365(c) or 386(c), would be accorded the
`application’s actual filing date as its prior art date under pre-AIA 35 U.S.C. 102(e).
`
`700-41
`
`Rev. 08.2017, January 2018
`
`Fraunhofer Ex 2047-p 9
`Sirius v Fraunhofer
`IPR2018-00690
`
`

`

`§ 706.02(f)(1)
`
`MANUAL OF PATENT EXAMINING PROCEDURE
`
`The pre-AIA 35 U.S.C. 102(e)(1) date for the Publication is 08 Dec.
`2000. The pre-AIA 35 U.S.C. 102(e)(2) date for the Patent is: 08 Dec.
`2000.
`
`Examp