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

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).

To learn more:

• prior art
• 37 CFR 1.131(c)
• disqualification
• common ownership
• terminal disclaimer

To learn more:

• 37 CFR 1.131(c)