Chapter 1 - Exam Day Quick Reference

🎯 Topics Covered in Chapter 1

This chapter introduced the three core patentability requirements:

§ 101 - Utility / Patent-Eligible Subject Matter
§ 102 - Novelty / Prior Art
§ 103 - Non-Obviousness
§ 112(a) - Written Description / Enablement
§ 112(b) - Definiteness of Claims

📖 MPEP Quick Reference - Chapter 1 Topics

Topic	Statute	MPEP Section	What You'll Find There
Utility / Eligibility	35 U.S.C. § 101	MPEP 2107 - 2107.03	Guidelines for utility requirement (specific, substantial, credible)
Abstract Ideas Test	35 U.S.C. § 101	MPEP 2106	Alice/Mayo 2-step test for subject matter eligibility
Novelty / Prior Art	35 U.S.C. § 102	MPEP 2131 - 2138	What qualifies as prior art, grace period exceptions
Prior Art Dates	35 U.S.C. § 102(a)(1), (a)(2)	MPEP 2152 - 2154	Effective dates of prior art references
Non-Obviousness	35 U.S.C. § 103	MPEP 2141 - 2144	Graham factors, KSR analysis, teaching-suggestion-motivation
PHOSITA Standard	35 U.S.C. § 103	MPEP 2141.03	Defining Person Having Ordinary Skill In The Art
Written Description	35 U.S.C. § 112(a)	MPEP 2161 - 2163	Possession test, support for claims
Enablement	35 U.S.C. § 112(a)	MPEP 2164 - 2164.08	In re Wands factors, undue experimentation test
Best Mode	35 U.S.C. § 112(a)	MPEP 2165	Inventor's preferred embodiment requirement (no longer enforceable but still required)
Definiteness	35 U.S.C. § 112(b)	MPEP 2171 - 2174	Nautilus standard ("reasonable certainty"), claim clarity

🔍 How to Search the MPEP During the Exam

Strategy 1: Search by Statute Number

Ctrl+F (or Cmd+F) and search:

"35 U.S.C. 101" → finds all references to utility/eligibility
"35 U.S.C. 102" → finds all references to novelty
"35 U.S.C. 103" → finds all references to obviousness
"35 U.S.C. 112(a)" or "35 U.S.C. 112(b)" → specification requirements

Strategy 2: Search by Key Concept

If the question asks about a concept, search for:

"utility requirement" → finds MPEP 2107
"prior art" + "grace period" → finds exceptions under § 102(b)
"teaching suggestion motivation" or "TSM" → finds KSR/obviousness analysis
"undue experimentation" → finds enablement standard
"reasonable certainty" → finds Nautilus definiteness test

Strategy 3: Use MPEP Index

The MPEP has a comprehensive index. If you're stuck:

Go to MPEP Index
Look up concept alphabetically
Find relevant section numbers
Jump to those sections for detailed rules

⚡ Speed Reference - Chapter 1 Concepts

Question about: "Is this invention useful?"
→ Look up: MPEP 2107 (Utility Requirement)
→ Remember: Utility must be specific, substantial, and credible
→ Statute: 35 U.S.C. § 101

Question about: "Is this an abstract idea / law of nature?"
→ Look up: MPEP 2106 (Alice/Mayo Test)
→ Remember: 2-step test (judicial exception? + significantly more?)
→ Key cases: Alice Corp., Mayo v. Prometheus

Question about: "Does this prior art reference count?"
→ Look up: MPEP 2131-2138 (Prior Art Under § 102)
→ Check: Date of reference vs. filing date
→ Look for: Grace period exceptions (§ 102(b))

Question about: "Is this obvious?"
→ Look up: MPEP 2141-2144 (Non-Obviousness)
→ Remember: Graham factors (scope of prior art, differences, skill level, secondary considerations)
→ Check: KSR rationale (predictable variation = obvious)

Question about: "Does the spec support this claim?"
→ Look up: MPEP 2161-2163 (Written Description)
→ Test: Did applicant show possession of claimed invention?
→ Look for: Generic vs. specific disclosures

Question about: "Can PHOSITA make/use this invention?"
→ Look up: MPEP 2164-2164.08 (Enablement)
→ Remember: In re Wands 8 factors for undue experimentation
→ Test: Can skilled artisan practice without excessive trial and error?

Question about: "Are these claims clear?"
→ Look up: MPEP 2171-2174 (Definiteness)
→ Standard: Nautilus "reasonable certainty"
→ Check: Do claims particularly point out and distinctly claim the invention?

📝 Practice Using MPEP - Try This Now

Practice Question:

"An examiner rejects a claim as obvious over two prior art references. The applicant argues that there is no teaching, suggestion, or motivation to combine the references. Is this argument still valid after KSR?"

How to answer using MPEP:

Search MPEP for: "KSR" or "teaching suggestion motivation"
Jump to: MPEP 2141-2143 (Non-Obviousness Analysis)
Look for: KSR rationales for combining prior art
Find: TSM test is no longer rigid requirement; KSR allows "common sense" combinations
Answer: No, rigid TSM test is not required post-KSR, but lack of motivation is still relevant factor

Try this right now: Open the MPEP (available free at uspto.gov) and practice this search. Time yourself. Get comfortable navigating quickly.

🎓 Story Memory Hooks - Use During Exam

When you see a question on the exam, recall the story moment:

Legal Concept	Story Memory Hook	What It Teaches
Three Patentability Requirements	Athelia finding three ancient texts (Greek, Norse, Celtic) all describing same system	§ 101 utility, § 102 novelty, § 103 non-obviousness = three pillars of patent law
Enablement Standard	Celtic text: "The specification must enable" - Athelia's hands shaking	§ 112(a) requires specification teach PHOSITA to make/use without undue experimentation
Prior Art Search	Norse text: "Where genetic arts meet prior art"	§ 102 requires searching all existing knowledge to test novelty
Reduction to Practice	Norse text: "Reduction to practice opens the way"	§ 102(g) distinguishes actual (built/tested) vs. constructive (filed application)
Definiteness Requirement	Celtic text: "The claims must be definite"	§ 112(b) requires claims particularly point out and distinctly claim invention
Informed Consent / Filing	Severen: "You deserve to file with eyes open... that's what separates good prosecution from inequitable conduct"	Duty of candor during prosecution; withholding material info = patent unenforceable