How can an applicant overcome a pre-AIA 35 U.S.C. 102(b) rejection based on a printed publication?

To overcome a pre-AIA 35 U.S.C. 102(b) rejection based on a printed publication, an applicant can take the following steps:

• Prove earlier invention date: Show that the invention was conceived and reduced to practice before the critical date (one year prior to the U.S. filing date).
• Challenge publication date: Provide evidence that the reference was not publicly accessible before the critical date.
• Argue non-enablement: Demonstrate that the reference does not enable one skilled in the art to make the invention without undue experimentation.
• Show different invention: Argue that the reference does not disclose every element of the claimed invention.

The MPEP states: A rejection based on pre-AIA 35 U.S.C. 102(b) can be overcome by:

• (A) Persuasively arguing that the claims are patentably distinguishable from the prior art;
• (B) Amending the claims to patentably distinguish over the prior art;
• (C) Submitting and perfecting a claim to priority under 35 U.S.C. 119(a)-(d) within the time period set in 37 CFR 1.55;
• (D) Submitting and perfecting a benefit claim under 35 U.S.C. 119(e) or 120 within the time periods set in 37 CFR 1.78; or
• (E) Submitting a declaration under 37 CFR 1.131(a).

Source: MPEP 2133.02(a)

To learn more:

• pre-AIA 35 U.S.C. 102(b)
• printed publication
• patent rejection
• overcoming rejection