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2.18 – MPEP 2100 Patentable Subject Matter

MPEP 2100 - Patentable Subject Matter

MPEP 2100 - Patentable Subject Matter

MPEP Chapter 2100 deals with the fundamental issues of patentability.

The previously discussed 35 U.S.C. § 101, 102, 103 and 112 laws are covered here.  The prometric patent bar tests MPEP 2100 heavily and care should be observed when reviewing this matter to ensure thorough knowledge of the subject matter.  This will help to ensure a successful test day once it comes time.

MPEP 2105: Patentable subject matter – Living subject matter

In reference to the courts views on patentable subject matter.  Patentable subject matter is nonnaturally occurring manufacture or composition of matter – a product of human ingenuity – having a distinct name, character and use.”  Non-patentable subject matter includes the laws of nature, physical phenomena and abstract ideas.

America Invents Act Update – Human Organism Prohibition

Section 33 of the America invents act makes certain that claimed invention encompassing a human being are not patentable subject matter under 35 USC 101.

MPEP 2106: Patentable subject matter eligibility

This chapter is strongly tied to 35 U.S.C. § 101.  To define what is patentable:

1) Product: A new, useful and non-obvious machine, manufacture or composition of matter

2) Process: A new useful and non-obvious way of doing, making, using something.  A new process for an unpatentable product can still be patentable.  A process claim must utilize steps to obtain the product, not just the result of the process without any steps.

3) Product-by process: The product is patentable not the process.  The product is independent of the process used to create the product.  If prior art depicts the same product but by a different process the product is still unpatentable even though the processes differ.

4) Living subject matter is patentable: Must use human ingenuity to invent the new matter.

Patenting of claims to practical applications of natural phenomenon are also allowed.

To define what isn’t patentable:

1) Naturally occurring materials and organisms.

2) An invention which encompasses a human being at its broadest reasonable interpretation.

3) Laws of mathematics, physics, processes which depend on these laws but are abstract.  They must claim a practical application of these laws.

4) Computer related descriptive material.  This is copyrightable not patentable.

America Invents Act Update – Tax Strategies Deemed within Prior Art

Section 14 of the America Invents Act limits what can be used to differentiate claimed inventions from prior art under 102 or 103.


A strategy for reducing, avoiding or deferring tax liability is insufficient to differentiate a claimed invention from the prior art.

This does not apply to the component of the invention that is a method, apparatus, technology, computer program product or system that is used solely for preparing a tax or information return or that is used solely for financial management.

Claimed inventions which include this tax strategy are still able to be patented however this can not be the basis for non-obviousness or its uniqueness.

Utility RequirementUtility Requirement for Inventions

Utility requirement is an absolute must.  The invention must have practical applications.  The simple presentation of information or data is not patentable.  If the invention does not meet the claimed results it is not useful.  It needs to be completely incapable of achieving the results to violate 35 U.S.C. § 101.  Even if it crudely achieves the results it is okay.

Rejection under 35 U.S.C. § 101:

A Prima Facie showing of lack of utility is required.  This must be accompanied by sufficient evidence for the assumptions relied upon.  This must include an explanation with the reasoning for finding the utility not credible, support for factual findings relied upon, evaluation of the evidence of record (includes utility taught in the closest prior art).

MPEP 2111: Claim interpretation; Broadest reasonable interpretation

1) General interpretation of claims: The claims must be given their broadest reasonable interpretation consistent with the specification.  They must be consistent with what those skilled in the art would determine.  Limitations shown in the specification should not be applied to the claims unless the claims themselves utilize the limitation. Applicant can assign their own meaning to a term as long as it is defined in the specification.  If not, the examiner uses the general meaning of the term.  They can also not be completely incorrect with the usual meaning of the term (can’t use the word circle to describe a square).  One skilled in the art should be able to easily ascertain the meaning of the term.

2) Effects of the preamble: The preamble does not always limit a claim.  This is determined on a case-by-case basis.  Any wording in the preamble which does limit the claim should be treated as such.

3)  Transitional Phrases: The transitional phrases “comprising”, “consisting essentially of”, and “consisting of” define the scope of a claim with respect to what unrecited additional components if steps, if any, are excluded from the scope of the claim.

  • Comprising: Is non-exclusive language.  Also non-exclusive is: “including” or “Characterized by”.
  • Consisting essentially of: Is limiting language.  Limits the claim to the specified materials/steps and to those which do not materially effect the claimed invention.  This can be construed as “comprising” if there is no specific indication in the specification or claims to what the basic/novel characteristics are.
  • Consisting of: Is exclusive language.  This limits the claim to those items which are specified in the claim. One cannot add additional elements or steps after a consisting limitation.  When this is used in the clause of a claim it limits only the elements set forth in the clause (does not effect the preamble).

MPEP 2112: Requirements of rejection based on inherency, the burden of proof

1) Inherency:  Inherent features can be relied upon in a 35 U.S.C. § 102 or 103 rejection whether they are implicit, express or inherent in a prior art disclosure.  They do not need to be recognized a the time of the invention, only need to be inherent.  Old inventions do not become patentable simply because of a newly discovered inherent feature.  Prior art items which would perform the function desired under normal operation would anticipate the new invention through inherency.

2) Burden of Proof: Once the examiner has presented evidence/reasoning showing inherency from a prior art reference the burden moves to the applicant to prove non-obvious difference.

MPEP 2113: Product-by-Process Claims

The product of the product by process claim must be similar to prior art to be unpatentable and not the process used to achieve the product.  The same product by a different process is not patentable unless the product made by the new process is an improvement over the old product.  They are limited by the structure implied by the steps and not the manipulations of the recited steps.

MPEP 2114: Apparatus and Article Claims – Functional Language

Apparatus Claims:  The structure of the apparatus must be different from the prior art to be patentable.  A similar apparatus reference can perform the same function but not infringe if the structure is different.  These cover the device itself and not what the device does.  Operation method between apparatus claims is not a differentiating factor.

MPEP 2115: Material or Article Worked Upon by Apparatus

There is no limitation through the material or article which is worked on by the apparatus.

MPEP 2116: Material Manipulated in Process

For process or method claim obvious determination, all of the claims must be considered in weighing the differences between the new invention and the prior art.

MPEP 2121: Prior Art, General Level of Operability Required to Make a Prima Facie Case

1) Prior art is assumed to be Operable/Enabling:  The burden is on the applicant to prove that prior art is inoperable.  This pertains to a 35 U.S.C. § 103 rejection.  The level of disclosure is the same for any reference to make it an enabling disclosure.  The prior art type doesn’t matter and one skilled in the art must be able to carry out the claimed invention.

2) Use of Prior Art in Rejections Where Operability is in Question: 35 U.S.C. § 102 rejections must have a reference that teaches every element of a claim.  The reference does not need to teach how to practice the invention.  One can use secondary evidence which teaches how to make or use the invention.  35 U.S.C. § 103 rejections can use prior art reference which is non-enabling.

3) Compounds and Compositions: What constitutes Enabling Prior Art: Enabling prior art must allow one skilled in the art to make/synthesize the invention from the disclosure.  If the attempts to create the invention in the disclosure were unsuccessful the reference is non-enabling.

4) Plant Genetics: What Constitutes Enabling Prior Art: A person skilled in the art must be able to grow and cultivate the plant based on the prior art.

5) Apparatus and Articles: What Constitutes Enabling Prior Art:  A picture is okay if it shows all of the claimed structural features including how they put together.

MPEP 2123: Rejections Over Prior Art’s Broad Disclosure Instead of Preferred Embodiments

What is prior art in a patent?  Everything that is disclosed is considered prior art even what is not claimed, alternate embodiments and non-preferred embodiments.  The disclosure of these does not constitute “teaching away” from these embodiments.

MPEP 2124: Exception to the Rule that the Critical Reference Date Must Precede the Filing Date

If a reference shows a universal fact, the date of the reference does not need to be prior to the effective date to be used as prior art.  Examples of this are: scientific principal, material properties and material characteristics.

MPEP 2125: Drawings as Prior Art

Drawings can be used as prior art if they show all the claimed structural features and how they are put together.  This would be a 35 U.S.C. § 102 anticipation rejection.  Proportions of features in a drawing are not evidence of actual proportions when the drawings are not to scale.  Measurements of a drawing can not be used against an invention if there is no scale provided.

MPEP 2126: Availability of a Document as a “Patent” for Purposes of Rejection Under 35 U.S.C. § 102(a), (b) and (d)

“Secret” patents can be used as prior art as of the date they are made available to the public.  For a 35 U.S.C. § 102(d) rejection it is the grant date that is used.  Foreign patents are usually available as prior art when they are granted their patent rights and not the application filing date.

MPEP 2127: Domestic and Foreign Patent Applications as Prior Art

Abandoned applications including provisional applications use the date an abandoned application is available to the public for its prior art date.  Examples of this are: when it is voluntarily disclosed, is in a publication or when referenced in another patent.

Applications which have issued as patents: Canceled matter of a patent is available as prior art when the patent is granted.  This is when the file history becomes available to the public.  35 U.S.C. § 102(e) rejections can’t rely on matter canceled from an application, however 35 U.S.C. § 102(b) rejections can rely on information canceled prior to publication.

Foreign applications open for public inspection (Laid Open Application) constitute published documents.  An example would be being published in the official gazette.

MPEP 2128: “Printed Publications” as Prior Art

A reference is a “printed publication” if it is accessible to the public.

1) Electronic Publications as Prior Art: Web pages and online content are available as prior art.  “printed publication within the meaning of 35 U.S.C. § 102(a) and (b) provided the publication was accessible to persons concerned with the relevant art.”  If there is no date included with the electronic publication it is not available under 35 U.S.C. § 102(a,b).  It can still be used to show the state of the art.  One does not have to how proof that someone viewed the publication as long as it was accessible to the public.

2) Level of public accessibility required:

Examples of publicly accessible documents:

  • Thesis placed in university library in indexed and shelved
  • Orally presented paper if written copies are available without restriction
  • Publicly displayed documents if only displayed for a few days.  These don’t have to be indexed, disseminated or filed in a database.  A person skilled in the art should be able to view them and they must be able to copy the information if desired.  Determining factors include: length of time displayed, target audience expertise, expectations that the material would not be copied and the ease at which the material could have been copied.

Not publicly accessible documents:

  • Internal documents of an organized marked confidential
    • The number of copies distributed internally are not important
    • There must be an existing policy of confidentiality in the organization

3) Date a publication is available as a reference: This can be shown through routine business practice.  Specific date of actual accessibility is not always necessary.  Publications become available as prior art the date they are received by a member of the public.

MPEP 2129: Admissions as Prior Art

1) Admissions by application constitute prior art: Admission on the record of a reference as prior art can be relied upon for a 35 U.S.C. § 102 or 103 rejection.  Even if the reference would not have been considered prior art otherwise.

2) Jepson Claims: reference 37 C.F.R. § 1.75(e).  Where the nature of the case admits, as in the case of an improvement, any independent claim should contain in the following order:

  1. A preamble comprising a general description of all the elements or steps of the claimed combination which are conventional or known,
  2. A phrase such as “wherein the improvement comprises,” and
  3. Those elements, steps, and/or relationships which constitute that portion of the claimed combination which the applicant considers as the new or improved portion.

The preamble of a jepson claim is an implied admission of prior art and can be used to avoid a double patenting rejection.  If the preamble is the work of the applicant it can’t be used against him.

3) Information Disclosure Statements (IDS):  A reference on an information disclosure statement is not admitted prior art.

MPEP 2131: Anticipation – Application of 35 USC § 102(a), (b), and (e)

As a general rule, to anticipate a claim only one reference may be used.  The single reference must teach every element of the claim.  If the claim covers several structures or compositions the claim may be anticipated if any of the structures or compositions are disclosed in the prior art.

Exceptions to the general rule: anticipatory rejection using multiple references can be okay if the additional references are used to:

1) Prove the primary reference contains an “enabled disclosure”.  Extra references and extrinsic evidence can be used to show that the primary reference contains an enabled disclosure such as where one reference fully anticipates a machine or composition but does not provide and enabling disclosure of the invention.

2) Explain the meaning of a term used in the primary reference.  Extra references or other evidence can be used to show meaning of a term used in the primary reference buy may not be used to expand the meaning of term(s) used in the primary reference.

3) Show that a characteristic not disclosed in the reference is inherent.  Additional evidence may be used to show an inherent characteristic of the thing taught by the primary reference, such that it makes clear that the missing descriptive matter is necessarily present in the thing described in the reference.

Genus-Species Situations:  A species can anticipate a genus.  The reference need only disclose one species if multiple listed to anticipate the claim.

For range anticipation:

Single anticipated point: For a claimed range to be anticipated by a reference only a single point within the claimed range need to be disclosed in the reference.

Overlapping ranges: Usually is considered anticipated if any of the claimed ranges overlap.  However, this may not always be the case.  If the claim has a narrow range and the reference has a broad range.  No proof of success in the reference for the claimed range can nullify anticipation.

Nearly the same range:  Does not anticipate the claimed range if it is “nearly the same”.

The following are not used in anticipation rejections:

1) Secondary Considerations: Used in obviousness rejections (i.e. unexpected results), but not used in anticipation rejections.

2) Non-analogous or Disparaging Prior Art: This is irrelevant for 35 U.S.C. § 102 rejection.  This includes arguments of non-analogous art, disparaging, not recognized as solving the problem or that the reference teaches away.

MPEP 2142: Legal Concept of Prima Facie Obviousness – Relevant to § 103 Rejections

Prima Facie Obviousness: Determines who has the burden of proof on producing evidence during the examination process.  For obviousness the examiner has the initial burden of supporting an obviousness rejection.  Analysis in support of prima facie case must be made explicit.

Some examples of this include: 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; “Obvious to try” – Choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; Substitution of one known element for another to obtain predictable results; Applying a known technique to a known device ready for improvement to yield predictability; Use of known technique to improve similar devices in the same way; Combining prior art elements according to known methods to yield predictable results.

Suggestion or Motivation to Modify the Reference:

If there is some teaching, suggestion or other motivation to combine or modify the teachings of a prior art reference obviousness can be established.  The fact that two references can be combined/modified is not enough to establish prima facie obviousness.  Statement that prior art is within the capabilities of one of ordinary skill in the art is not sufficient by itself to establish prima facie obviousness.  Examiner proposed modification to the prior art for establishing obviousness cannot render the prior art unsatisfactory for its intended purpose.  Can not change the principal operation of a reference.

Reasonable Expectation of Success is Required:

Obvious rationale must show ALL claimed elements were known in the prior art.  One skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions.  There must be a reasonable expectation of success for obviousness.  Some degree of predictability is required and predictability is determined at the time the invention is made.  Applicants can show evidence of no reasonable expectation of success.

MPEP 2144: Supporting a Rejection Under 35 USC § 103

What rational is needed?

In order to support a rejection under 35 U.S.C. § 103 there must be legal precedent, scientific principles, logic, reasoning from common knowledge in the art, in a reference or art recognized equivalents.

For legal precedent, the facts of the case must be sufficiently similar to those in the application.  For reasoning from common knowledge in the art, the rationale may be different for an examiner compared to an application in order to show obviousness.

The rationale for combining references is strongest when showing an advantage.

Graham factors for an examiner to determine obviousness are:

  1. Determine the scope and contents of prior art
  2. Ascertain the differences between the prior art and the claims in issue
  3. Determine the level of ordinary skill in the pertinent art
  4. Evaluate any evidence of secondary considerations

MPEP 2145: Consideration of Applicant’s Rebuttal Arguments

Burden of proof is shifted to the applicant once the examiner establishes prima facie obviousness.  Applicant can submit a rebuttal which may include evidence of “secondary considerations” such as commercial success, long felt but unresolved need and failure of others.

Rebutting evidence can be submitted to overcome an obviousness rejection.  Argument cannot replace evidence where evidence is needed.  Prima facie obviousness can not be rebutted by merely recognizing additional advantages or latent properties in prior art.  Arguments of not being physically combine-able can not rebut an examiner’s rejection.  The test is designed to see what the combined teachings of those references would have suggested to those of ordinary skill.  Not simply if they can be physically combined.

To rebut obviousness rejections one can not argue against individual references, the number of references combined, limitations not claimed, economic in-feasibility, age of references or that the prior art is non-analogous.

MPEP 2183: Making a Prima Facie Case of Equivalence

This is when an element in prior art is equivalent to the corresponding element disclosed in the specification.  The examiner can find prior art element which performs the function specified in the claim.  This is not excluded by any explicit definition provided in the specification for an equivalent.  Examiner should assume the prior art element is an equivalent.

MPEP 2186: Relationship to the Doctrine of Equivalents

Doctrine of equivalents arises in the context of an infringement action. When product of process does not specifically infringe a protected invention.  The item may still be found to infringe though the doctrine of equivalents.  All words of the claim are considered when judging patentability of a claim against the prior art.  Doctrine of equivalents operates to expand claim coverage beyond the literal scope of the claim language.