How can I overcome a pre-AIA 35 U.S.C. 102(b) rejection based on a printed publication or patent?

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.

There are several ways to overcome a pre-AIA 35 U.S.C. 102(b) rejection based on a printed publication or patent:

• Persuasively argue that the claims are patentably distinguishable from the prior art
• Amend the claims to patentably distinguish over the prior art
• Submit and perfect a benefit claim under 35 U.S.C. 120
• Submit and perfect a benefit claim under 35 U.S.C. 119(e)

As stated in MPEP 2133.02(a): “A rejection based on pre-AIA 35 U.S.C. 102(b) can be overcome by: (A) Persuasively arguing that the claims are patentably distinguishable from the prior art; (B) Amending the claims to patentably distinguish over the prior art; (C) Submitting and perfecting a benefit claim under 35 U.S.C. 120 […]; or (D) Submitting and perfecting a benefit claim under 35 U.S.C. 119(e) […]”