How does pre-AIA 35 U.S.C. 102(f) apply when other statutory grounds for rejection are not available?
Pre-AIA 35 U.S.C. 102(f) can be a useful statutory ground for rejection even when other grounds, such as pre-AIA 35 U.S.C. 102(a) or (e), are not available. The MPEP explains:
Pre-AIA 35 U.S.C. 102(f) does not require an inquiry into the relative dates of a reference and the application, and therefore may be applicable where pre-AIA subsections (a) and (e) are not available for references having an effective date subsequent to the effective filing date of the application being examined.
This means that 102(f) can potentially be used to reject claims based on derivation even when the alleged source of the derivation is dated after the application’s filing date. However, the MPEP cautions:
For a reference having a date later than the effective filing date of the application some evidence may exist that the subject matter of the reference was derived from the inventor or at least one joint inventor in view of the relative dates.
In such cases, examiners must carefully consider the evidence and any declarations provided by the applicant to rebut a derivation allegation.
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