Questions & answers

The Manual of Patent Examining Procedure: the USPTO's manual of the law, rules and procedures patent examiners follow. Applicants and practitioners use it too, and it is the only reference allowed on the patent bar.

The Ninth Edition, Revision 01.2024, published November 2024 and current as of January 31, 2024 law.

29, numbered 100 through 2900, plus appendices for the patent laws, rules, the PCT and the Paris Convention.

No. It is USPTO guidance for examiners. The binding sources are the statute (35 U.S.C.), the rules (37 C.F.R.) and court decisions.

Examples of the rationales that support a conclusion of obviousness under 35 U.S.C. 103, following the Supreme Court's KSR decision. Read MPEP 2143.

The USPTO's guidance on patent subject matter eligibility under 35 U.S.C. 101, built on the Supreme Court's Alice and Mayo decisions.

Step 1 (statutory category), Step 2A Prong One (recites a judicial exception?), Step 2A Prong Two (integrated into a practical application?), and Step 2B (significantly more?).

Mathematical concepts, certain methods of organizing human activity, and mental processes.

The USPTO's standard for reading claims during examination: the broadest meaning that is reasonable and consistent with the specification, as one of ordinary skill would understand it.

"Comprising" is open-ended and allows unrecited elements; "consisting of" is closed and excludes any element not specified.

A claimed feature is inherent in prior art when it is necessarily present in what the prior art describes, even though the prior art does not mention it.

Lack of novelty: every element of the claim is disclosed, expressly or inherently, in a single prior art reference.

The scope and content of the prior art, the differences between the prior art and the claims, the level of ordinary skill in the art, and objective evidence of nonobviousness.

The seven exemplary rationales in MPEP 2143(I)(A)–(G), from combining known elements with predictable results to an explicit teaching, suggestion or motivation in the prior art.

KSR rationale (E): choosing from a finite number of identified, predictable solutions with a reasonable expectation of success.

Under MPEP 2143.01(VI), if a proposed modification would change the basic principle under which the reference operates, the references are not sufficient to make the claims obvious.

Yes, prima facie. Under MPEP 2144.05, overlapping or encompassed ranges establish a prima facie case of obviousness, which the applicant can rebut with criticality, unexpected results or teaching away.

Under 35 U.S.C. 112(a), the specification must describe the claimed invention well enough that a person skilled in the art would recognize the inventor had possession of it when the application was filed.

Breadth of the claims, nature of the invention, state of the prior art, level of ordinary skill, predictability of the art, direction provided, working examples, and quantity of experimentation needed.

(A) the limitation uses "means", "step" or a generic placeholder; (B) it is modified by functional language; and (C) it is not modified by sufficient structure, material or acts to perform the function.

To be considered without a fee or statement, within three months of the filing date or before the mailing of a first Office action on the merits, whichever is later. Later windows require a 37 CFR 1.97(e) statement, a fee, or both.

An information disclosure statement: a submission listing prior art and other information material to patentability, used to meet the duty of disclosure under 37 CFR 1.56.

A rejection concerns the patentability of a claim and is appealed to the PTAB. An objection concerns form and is reviewed by petition to the Director.

An amendment filed after a notice of allowance under 37 CFR 1.312. It is not entered as of right and is generally limited to corrections that do not require further search or examination.

Evidence that the claimed invention performs differently, in kind or degree, from what the closest prior art would have led one to expect. Under MPEP 716.02 it must be commensurate in scope with the claims.

No. A terminal disclaimer overcomes only nonstatutory (obviousness-type) double patenting. Statutory double patenting requires canceling or amending the claims.

Usually not for prior art purposes. Under MPEP 2111.02 and 2114, intended use limits a claim only if it results in a structural difference from the prior art.

No. Disclosing a preferred alternative does not teach away from non-preferred options unless the reference criticizes or discourages them.

Specifically traverse it in the next reply, explaining why the noticed fact is not common knowledge. The examiner must then provide documentary evidence or withdraw the finding.

Yes. The USPTO publishes the full MPEP free online and as chapter PDFs.