Can a 1.130 declaration be used to overcome all types of prior art rejections?
No, a 1.130 declaration cannot be used to overcome all types of prior art rejections. According to MPEP 2155, 1.130 declarations are specifically designed to address certain types of prior art under AIA 35 U.S.C. 102(a)(1) and 102(a)(2). They cannot be used to overcome rejections based on:
- Prior art that falls outside the 1-year grace period
- Prior art under pre-AIA 35 U.S.C. 102
- Statutory bars under 35 U.S.C. 102(b) in pre-AIA applications
- Double patenting rejections
The MPEP states: “37 CFR 1.130 does not provide a mechanism for filing an affidavit or declaration to overcome rejections or other objections that are not based on prior art under AIA 35 U.S.C. 102(a).” Therefore, it’s crucial to identify the specific basis of the prior art rejection before deciding whether a 1.130 declaration is appropriate.
To learn more:
Topics:
MPEP 2100 - Patentability,
MPEP 2155 - Use Of Affidavits Or Declarations Under 37 Cfr 1.130 To Overcome Prior Art Rejections,
Patent Law,
Patent Procedure