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

According to MPEP 2133.02(a), an applicant can overcome a pre-AIA 35 U.S.C. 102(b) rejection in several ways:

• Persuasively arguing that the claims are patentably distinguishable from the prior art
• Amending the claims to patentably distinguish over the prior art
• Submitting and perfecting a benefit claim under 35 U.S.C. 120 within the time period set in 37 CFR 1.78
• Submitting and perfecting a benefit claim under 35 U.S.C. 119(e) by complying with the requirements of 37 CFR 1.78

It’s important to note that, as stated in the MPEP, “A rejection under pre-AIA 35 U.S.C. 102(b) cannot be overcome by affidavits and declarations under 37 CFR 1.131 (Rule 131 Declarations), foreign priority dates, or evidence that applicant himself invented the subject matter.”

To learn more:

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