Does the AIA 35 U.S.C. 102(b)(2)(B) exception require a comparison with the claimed invention?
No, the AIA 35 U.S.C. 102(b)(2)(B) exception does not require a comparison with the claimed invention. The MPEP clearly states:
“AIA 35 U.S.C. 102(b)(2)(B) does not discuss ‘the claimed invention’ with respect to either the subject matter disclosed by the inventor or a joint inventor, or the subject matter of the subsequent intervening U.S. patent document. The only inquiry with respect to the claimed invention is whether or not the subject matter in the prior art disclosure being relied upon anticipates or renders obvious the claimed invention.“
This means that when determining if the exception applies:
- There’s no need to compare the claimed invention to the subject matter disclosed by the inventor or joint inventor.
- There’s no need to compare the claimed invention to the subject matter in the intervening U.S. patent document.
- The focus is solely on whether the subject matter in the intervening U.S. patent document was previously publicly disclosed by the inventor or joint inventor.
The MPEP further clarifies: “A determination of whether the exception in AIA 35 U.S.C. 102(b)(2)(B) is applicable to subject matter in an intervening U.S. patent document does not involve a comparison of the subject matter of the claimed invention to either the subject matter disclosed by the inventor or a joint inventor, or to the subject matter of the subsequent intervening U.S. patent document.“
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