What is the purpose of 37 CFR 1.131(c)?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

37 CFR 1.131(c) provides a mechanism to disqualify certain prior art in patent applications or patents under reexamination. Specifically, it addresses situations where:

• A claim is rejected under 35 U.S.C. 103 (as in effect on March 15, 2013)
• The rejection is based on a U.S. patent or U.S. patent application publication that is not prior art under 35 U.S.C. 102(b) (as in effect on March 15, 2013)
• The inventions are not identical but are not patentably distinct
• The inventions are owned by the same party

In such cases, the applicant or patent owner can disqualify the cited patent or publication as prior art by submitting:

1. A terminal disclaimer in accordance with 37 CFR 1.321(c)
2. An oath or declaration stating common ownership and prior inventorship

As stated in the MPEP: 37 CFR 1.131(c) addresses those situations in which the rejection in an application or patent under reexamination to be overcome is a rejection under 35 U.S.C. 103 (based on prior art under pre-AIA 35 U.S.C. 102) in view of a U.S. patent or U.S. patent application publication which is not prior art under pre-AIA 35 U.S.C. 102(b).