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Citation of Prior Art and Ex Parte Reexaminations Summary for the Patent Bar Exam

MPEP 2200 deals with the citation of prior art and Ex Parte Reexaminations.

         The citation of prior art deals with the presentation of patents and/or printed publications to be placed in the patent’s file wrapper. This is done to ensure their consideration is future reissue or reexamination proceedings. Ex Parte Reexaminations is a mechanism for a correction of scope and contents of a patent through a substantial new question of patentability regarding one or more claims through other patents or printed publications.

Citation Of Prior Art:

So who can file citations of prior art in a patents file wrapper? Any person can excluding examiners. This includes the patent owner or those material pertinent to the applications prosecution. The prior art citations can be made at anytime during the enforceability of the patent which includes the expiration date plus six years. Unless the citations are submitted by the patent owner, a reexamination requester or as part of a third party requester’s reply a prior art citation will not be entered into the file wrapper of a patent which is pending reexamination.

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Summary of Supplemental Material for the Patent Bar Exam


There are four pieces of additional material whose subject matter is included in the patent bar exam. These four include the topics of: Bilski Process Claims, Subject Matter Eligibility, 35 U.S.C. § 112 Paragraph 2 compliance and KSR Obviousness Inquiry. Each of these topics deal with recent court rulings that apply to patent law.

Bilski Process Claims

         The Interim Bilski Guidance provides factors to consider in determining whether a claim is directed to an abstract idea and is therefore not patent-eligible under 35 U.S.C. § 101. Under the Interim Bilski Guidance, factors that weigh in favor of patent eligibility satisfy the criteria of the machine-or-transformation test or provide evidence that the abstract idea has been practically applied. In contrast, factors that weigh against patent eligibility neither satisfy the criteria of the machine-or-transformation test, nor provide evidence that the abstract idea has been practically applied.

SME Instructions

         The subject matter eligibility instructions contained in the supplemental material define a two-step process for determining eligibility.

  • Step 1 encompasses reviewing the claims to determine if they fall into one of the four categories defined by 35 U.S.C. § 101.
  • Step 2 encompasses cross-referencing these claims and their respective subject matter against judicial exemptions to the 35 U.S.C. § 101 subject matter. Step 2 is only undertaken if the claims pass step 1.

Additional instructions are included for analyzing product and process claims.

35 U.S.C. §112 Paragraph 2 compliance

         This supplemental material includes a 3-step test for determining compliance with 35 U.S.C. § 112(2). To properly complete this analysis, one must give the claims their broadest reasonable interpretation, determine whether the claim language is definite, and finally, complete compact prosecution procedures for resolving any 35 U.S.C. § 112 issues.

KSR Obviousness Inquiry

         The KSR Obviousness Inquiry involves an analysis on obviousness that can also be found in the Graham vs. Deere court ruling. This analysis consists of determining the scope and content of the prior art, the difference between the prior art and the claimed invention, the level of ordinary skill in the art, and any secondary considerations.

Every obviousness rejection must also contain an appropriate finding of fact, reasoned explanation, and a legal conclusion of obviousness.