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MPEP 2100 (Patentable Subject Matter)

AIA began on March 16, 2019

The MPEP merely sets the specific procedural rules by which something that is in theory patentable can
in fact be patented.

1. 35 USC 101 – Patentable Subject Matter

1. Whoever invents or discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof
1. Invents or discovers
2. New and useful (utility)
3. Process, machine, manufacture, composition of matter, or any new or useful
improvements thereof
1. Excludes: mathematical formulas, principles of science, naturally occurring
things.

2. 35 USC 102 (a-d) - Novelty

1. 102(a)(1-2) – Prior Art. Prior art will preclude the grant of a patent on a claimed invention,
unless an exception under 102(b) is available.
1. 102(a)(1) – Prior Art: The Described Invention is Provably in the Public Domain
Anywhere and in any Language Before the Effective Filing Date
1. A person is not entitled to a patent if the claimed invention is already
provably in the public domain anywhere in the world before the effective
filing date of the claimed invention.
1. Patented (granted),
2. described in a printed publication (each and every element of the
claimed invention must be disclosed either explicitly or inherently,
and the elements must be arranged or combined in the same way
as in the claim),
3. in public use,
4. on sale to the public, or
5. otherwise available to the public.
2. Effective filing date: the filing date of any U.S. or foreign patent application
to which the patent or application is entitled to benefit or priority as to such
invention.
2. 102(a)(2) – Prior Art: U.S.-relevant filings that are granted or published (at some
point) and have an earlier effective filing date are Prior Art.
1. The Claimed Invention is Described in a U.S. Patent Application (Published
or Issued) or WIPO-Published PCT Patent Application (PCT applications that
designate the U.S.) Filed by a Different Inventor and That has Priority (Based
on the Earliest Domestic or Foreign Effective Filing Date under 102(d)) to the
Effective Filing Date
1. All granted U.S. Patents, published U.S. patent applications, and
WIPO-published PCT applications designating the U.S.

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2. WIPO publications designating the U.S. are prior art under this clause, no
matter what (e.g., whether they are published in English, whether it enters
the national stage in the U.S.)

2. 102(b)(1)(A-B) – Exceptions to prior art under 102(a)(1) (provably in the public domain).
Inventor-originating disclosures within the one-year grace period aren’t prior art.
1. 102(b)(1)(A) – Inventor-Originated Disclosures (within the one-year grace period)
Aren’t Prior Art
1. A disclosure made by the inventor, or a person who obtained the disclosure
from the inventor, within one year of [i.e., within one year prior to] the filing
date does not qualify as prior art.
2. 102(b)(1)(B) – Third Party-Intervening Public Disclosures (within the one-year
grace period of the inventor-originated disclosure) Aren’t Prior Art
1. A third party's public disclosure is not prior art if it is made within the one
year prior to filing, as long as it was made after an inventor-originated public
disclosure.
A merely more generic description by the intervening disclosure (a genus) of
the original disclosure (a species) is not prior art, but a novel addition (e.g., a
new species) would be.

3. 102(b)(2)(A-C) – Exceptions to prior art under 102(a)(2) disclosures in prior-filed published

or issued US applications:
1. 102(b)(2)(A) – Inventor-originated disclosures in prior published or issued U.S.
applications under 102(a)(2) aren’t prior art.
1. A disclosure in a U.S. patent, U.S. patent application publication, or WIPO-
published application is not prior art if the subject matter was obtained,
directly or indirectly, from the inventor.
2. Proof: may via affidavit or declaration by applicant.
2. 102(b)(2)(B) – Third Party-Intervening Prior-Filed or Issued U.S. Applications
Within the One-Year Grace Period aren’t Prior Art
1. Third-party-filed published or issued US application is not prior art if it was
superseded by an inventor-originating public disclosure, before the effective
filing date of the third party reference.
2. Proof: may via affidavit or declaration by applicant.
No intervening disclosure inside the one year period can stop my filing at least
as to exactly what I published or disclosed. What I do not publish will be a race
to the patent office. Hence, many filers will decide to publish (if they must) and
file some sort of application on or in advance of the day that they publish.
3. 102(b)(2)(C) – Common Ownership or Obligation of Assignment = Not Prior Art
1. Subject matter disclosed in a U.S. patent, patent application publication,
WIPO-published (U.S.) application is not prior art to a claimed invention
when the subject matter was commonly owned or subject to an obligation
of assignment to the same person, at the effective filing date.

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2. Proof: a clear and conspicuous statement by the applicant or the applicant’s

representative of record is sufficient.

4. 102(c) – “Common Ownership” via Joint Research Agreements

1. Joint Research Agreement: a written contract, grant, or cooperative agreement
entered into by two or more persons or entities for the performance of experimental,
developmental, or research work in the field of the claimed invention.
2. “Common ownership” via a Joint Research Agreement exists and is not prior art
under 102(b)(2)(C) if:
3. 102(c)(1) – common parties to the agreement before the effective filing date: the
claimed invention was made by parties to the agreement and the agreement was in
effect before the effective filing date, and
4. 102(c)(2) - the invention resulted from activities within the scope of the
agreement, and
5. 102(c)(3) - the application discloses the names of the parties to the agreement. The
application can be amended to disclose the names.
6. The applicant (or the applicant's representative of record) must provide a
statement that:
1. the disclosure of the subject matter on which the rejection is based and the
claimed invention were made by or on behalf of parties to a joint research
agreement.
2. that the agreement was in effect on or before the effective filing date of the
claimed invention, and
3. that the claimed invention was made as a result of activities undertaken
within the scope of the joint research agreement.
4. If the names of the parties to the joint research agreement are not already
stated in the application, it is necessary to amend the application to include
the names of the parties to the joint research agreement.
5. the applicant may, but is not required to, present evidence supporting the
existence of the joint research agreement. Furthermore, the Office will not
request corroborating evidence in the absence of independent evidence
which raises doubt as to the existence of the joint research agreement.
Common ownership, alone, does not suffice to obtain the benefits of this exception?

5. 102(d) – Defining Effective Filing Date of published or issued US applications (prior art
qualifying under 102(a)(2)):
1. 102(d)(1) - The effective filing date is the actual filing date of the application,
unless…
2. 102(d)(2) - …there is a claim for priority, then the earliest priority date is the
effective filing date.

3. Affidavits or Declarations to Overcome Prior Art Rejections

1. 37 CFR 1.130 (a-b)
1. Affidavits and declarations under this must only show that:

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1. The disclosure in question was made by the inventor or a joint inventor, or

the subject matter disclosed was obtained directly or indirectly from the
inventor or a joint inventor, or
2. Had been publicly disclosed by the inventor or a joint inventor or another
who obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor
3. No proof of enablement is necessary.
2. Who May File an Affidavit or Declaration?
1. Inventor may sign, but the applicant or patent owner with authority (an
assignee, obligated assignee, person showing sufficient proprietary interest)
must file.
2. 37 CFR 1.130(a): Exempt inventor-originated disclosures (102(b)(1)(A) and 102(b)(2)(A)).
1. Affidavit or a declaration of attribution to disqualify prior art.
2. “Unequivocal statement” by inventor(s) and “a reasonable explanation”:
1. Must be an “unequivocal” statement that they invented the subject matter
disclosed, and generally includes a “reasonable explanation” of the
presence of additional authors. If there is evidence to the contrary, further
explanation will be necessary.
3. 37 CFR 1.130(b): Exempt third-party intervening disclosures (102(b)(1)(B) and 102(b)(2)
(B)).
1. Affidavit or declaration of prior public disclosure to disqualify prior art.
1. It must identify the subject matter publicly disclosed and establish the date
and content of the earlier public disclosure.
2. Printed publication: If the earlier public disclosure was a printed publication,
the affidavit or declaration must be accompanied by a copy of the printed
publication.
3. If the earlier disclosure was not a printed publication: the affidavit or
declaration must “describe the earlier disclosure with sufficient detail and
particularity” to determine that the earlier disclosure is a public disclosure
of the subject matter.
4. If the earlier disclosure was inventor-originated but not from the inventor,
must provide documentation evidencing the communication of the subject
matter by the inventor to the discloser.

Affidavit: a written statement confirmed by oath or affirmation, for use as evidence in court.

It is not necessary for the subject matter to have been disclosed in the same manner or using the
same words.

4. 35 USC 103: a patent for the claimed invention cannot be obtained if it would have been obvious, as
a whole, to a person having ordinary skill in the art, in light of the prior art, at the effective filing
date.
1. The Graham Factors
1. Prior Art:
1. Compare the invention to the prior art.
2. Level of Ordinary Skill in the Field:

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1. A patent is precluded if the claimed invention would be obvious to one

having "ordinary skill in the art". The fact that an improvement would not
be obvious to a layperson does not preclude a patent, if the subject matter
of the invention is beyond the skill of the average person.
3. Secondary Considerations; Objective Indicia of Non-Obviousness
1. Other factors can be considered to help determine whether the invention is
obvious. It is likely non-obvious if:
1. it meets with great commercial success,
2. there was a long-felt need in the art, and/or
3. there was a failure of others to resolve the problem.
2. Prior Test: Prima Facie Case of Obviousness and Teaching/Suggestion/Motivation Test
1. If (1) there was a likelihood of success for the invention based on prior art, and (2)
everything you're claiming exists in the prior art, and (3) there was some suggestion
that the various elements of the prior art could be combined, a prima facie case had
been made of obviousness.
3. KSR
1. The “Person of Ordinary Skill” also has ordinary creativity
1. If a phosita could have predicted the result of a combination of prior art, the
combination is obvious and not patentable.
1. Not patentable: If one of "ordinary skill" attempts something that
they reasonably think will work - and it does.
2. Patentable: If one of "ordinary skill" attempts something that one of
ordinary skill would have thought would end in failure - but doesn't.
2. Examiners as Fact-Finders must provide an explanation for rejections.
1. Once the findings of fact are articulated, Office personnel must provide an
explanation to support an obviousness rejection under 35 USC 103.
3. The Seven Rationales: Based on language in KSR and prior court decisions, there
appear to be seven rationales upon which an invention can be considered
nonpatentable as obvious: It is merely
1. a combination of elements of the prior art according to known methods to
yield predictable results;
1. This is a combination of at least two existing pieces of prior art, and
the combination is one that one of ordinary skill (and creativity)
could conceptualize and the resulting function is known and
predictable.
2. substitution of one known element for another to obtain predictable
results;
1. In this case, there is identical prior art except for a single difference.
And the substitution is one that would occur to, and the results are
predictable by, one of ordinary skill.
3. using known technique to improve similar devices (or methods or products)
in the same way;

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1. In this case, the prior art includes a comparable invention similarly

improved, and ordinary skill would include knowledge of the known
improvement technique
4. applying a known technique to a known device (or method or product)
ready for improvement to yield predictable results
5. "obvious to try" - choosing from a finite number of identified, predictable
solutions, with a reasonable expectation of success.
1. This obviousness rationale applies when there is a recognized
problem in the prior art, and a finite number of solutions in other
prior art, and the application of the solution from other art to solve
this recognized problem is obvious to one of ordinary skill.
6. A case of known work in one field of endeavor prompting variations of it for
use in either the same field or a different one based on design incentives or
other market forces, if the variations are predictable to one of ordinary skill
in the art
1. This obviousness rationale applies when one of ordinary skill would
know of an analogous device/ product/method in another field, and
design incentives or market forces would make it obvious to use
elements of the analogous invention and the variation yields a
predictable outcome.
7. Some teaching, suggestion, or motivation in the prior art that would have
led one of ordinary skill to modify the prior art reference or to combine
prior art reference teachings to arrive at the claimed invention.

KSR does not overrule Graham's analysis. KSR only suggests that obviousness can be
found in other ways.

Every element, step, function must be present in the prior teaching, and there must
be an indication in the prior teaching that the invention would be successful in
achieving the desired result.

5. 35 USC 112 (a-f)

1. 112(a) – in general, the specification shall contain a written description
1. Of how to make and use the invention
2. Terms to enable any phosita
3. Best mode of the invention
2. 112(b) – specification must conclude with claims particularly pointing out and distinctly
claiming the invention
3. 112(c) – the form of the claims can be independent, dependent, or multiple dependent
form.
4. 112(d) – references in dependent forms shall contain a reference to a claim previously set
forth and then specify a further limitation of the subject matter claimed and shall have all of
the limitations of the claims it references.

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5. 112(e) – references in multiple dependent form: a claim in multiple dependent claim form
shall contain a reference, in the alternative only, to more than one claim previously set forth
and then specify a further limitation of the subject matter claimed. A multiple dependent
claim shall not serve as a basis for any other multiple dependent claim. A multiple
dependent claim shall be construed to incorporate by reference all the limitations of the
particular claim in relation to which it is being considered.
6. 112(f) – elements in a claim for a combination: may be expressed as a means or step for
performing a specified function without the recital of structure, material, or acts. The claim
shall be construed to over the corresponding structure, material, or acts described in the
specification and equivalents thereof.

6. Patentable Subject Matter (MPEP 2100) - The MPEP merely sets the specific procedural rules by
which something that is in theory patentable can in fact be patented.

7. Miscellaneous:
1. Improper Naming of inventors: USPTO should reject the claims under sections 101 and 115.
2. Transition Applications: These are application that claim rights to before and after March 16,
2013 via their effective filing date. If there is a single claim with an effective filing date on or
after March 16, 2013, then AIA’s 102 and 103 apply. If there was ever a pre-AIA claim in the
application, then pre-AIA 102(g) applies. If a nonprovisional application has priority of an
application filed with a pre-AIA effective date, and also contains a claimed invention with an
effective date on or after March 16, 2013, the applicant must provide a statement to the
USPTO.