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Section Summary
MPEP § 706: “Rejection of Claims” outlines the principles and procedures for rejecting patent claims during examination. It begins by explaining that once the examiner has understood the invention and conducted a prior art search, they must determine whether the claims meet the statutory requirements of usefulness, novelty, nonobviousness, and enablement. If any claim fails to meet these standards, it is rejected, and the reasons must be clearly articulated using the best available references, with specific citations and explanations. The section distinguishes rejections, which relate to the substance of a claim and are appealable to the Patent Trial and Appeal Board, from objections, which pertain to formal issues and are petitionable. Examiners are encouraged to make constructive suggestions when claims appear patentable but are formally deficient and to acknowledge unclaimed but potentially patentable subject matter. The section also details reconsideration procedures following applicant replies, and it addresses statutory invention registrations, as well as both prior art and non-prior art rejections, including issues such as double patenting, lack of utility, or inadequate written description. Ultimately, the standard applied in assessing patentability is a “preponderance of the evidence,” requiring that it be more likely than not that a claim is unpatentable before rejection.

Illustration Explanation
The image represents the process of rejecting patent claims based on statutory requirements, emphasizing the distinction between substantive rejections and formal objections during examination.

Edition Referenced
Manual of Patent Examining Procedure (MPEP)
Ninth Edition, Revision 01.2024

Disclaimer
This summary of the MPEP was generated using AI tools, including ChatGPT and NotebookLM, and may contain errors or omissions. It is provided for general educational and informational purposes only and is not legal advice or a substitute for formal instruction. For authoritative guidance, consult the official MPEP, a qualified instructor, or a registered patent practitioner.

MPEP (Manual of Patent Examining Procedure)
https://www.uspto.gov/web/offices/pac...

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