Can canceled matter from a patent application be used in a 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e) rejection?

Canceled matter from a patent application cannot be used in a 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e) rejection. The MPEP clearly states:

“Canceled matter in the application file of a U.S. patent or application publication cannot be relied upon in a rejection under 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e).” Ex Parte Stalego, 154 USPQ 52, 53 (Bd. App. 1966).

However, it’s important to note the following:

  • Canceled matter may become available as prior art from the date the application file history becomes publicly available.
  • Such matter may be available as prior art under 35 U.S.C. 102(a)(1) or pre-AIA 35 U.S.C. 102(b).

For more information on available prior art for use in pre-AIA 35 U.S.C. 102(e) rejections, refer to MPEP § 2136.02. For 35 U.S.C. 102(a)(2) rejections, see MPEP § 2154 et seq.

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Topics: MPEP 2100 - Patentability, mpep 2127 - domestic and foreign patent applications as prior art, Patent Law, Patent Procedure
Tags: 102(A)(2) Rejection, 102(E) Rejection, canceled matter