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

An applicant can overcome a rejection under pre-AIA 35 U.S.C. 102(e) through several methods:

• Persuasively arguing that the claims are patentably distinguishable from the prior art
• Amending the claims to patentably distinguish over the prior art
• Filing an affidavit or declaration under 37 CFR 1.132 showing that the reference invention is not by “another”
• Filing an affidavit or declaration under 37 CFR 1.131(a) showing prior invention
• Submitting and perfecting a claim to priority under 35 U.S.C. 119(a)-(d)
• Submitting a benefit claim under 35 U.S.C. 119(e) or 120

The MPEP states: “A rejection based on pre-AIA 35 U.S.C. 102(e) 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) Filing an affidavit or declaration under 37 CFR 1.132 showing that the reference invention is not by “another”…“

To learn more:

• pre-AIA 35 U.S.C. 102(e)
• patent rejection
• prior art
• affidavit
• declaration
• priority claim