How can I overcome a rejection based on 35 U.S.C. 102 prior art?

There are several ways to overcome a rejection based on 35 U.S.C. 102 prior art. The MPEP provides guidance on this:

In all applications, an applicant may overcome a 35 U.S.C. 102 rejection by persuasively arguing that the claims are patentably distinguishable from the prior art, or by amending the claims to patentably distinguish over the prior art.

Additional methods depend on whether your application is subject to AIA or pre-AIA provisions:

• For AIA applications: See MPEP § 2152.06 for overcoming rejections under 35 U.S.C. 102(a)(1) or (a)(2).
• For pre-AIA applications: Refer to MPEP § 2132.01, MPEP § 2133.02(a), and MPEP § 2136.05 for overcoming rejections under pre-AIA 35 U.S.C. 102(a), (b), and (e), respectively.

Common strategies include:

• Demonstrating that the prior art does not disclose all elements of the claimed invention
• Showing that the claimed invention has an earlier effective filing date than the prior art
• Proving that the disclosure was derived from the inventor’s own work (for certain AIA rejections)
• Submitting a declaration or affidavit to establish prior invention (for pre-AIA applications)

To learn more:

• 35 U.S.C. 102
• prior art rejection
• patent application
• AIA
• pre-AIA