How can an applicant show that a reference is describing an inventor’s own work to overcome a pre-AIA 35 U.S.C. 102(e) rejection?

An applicant can overcome a pre-AIA 35 U.S.C. 102(e) rejection by showing that the reference is describing the inventor’s own work. This is typically done by filing an affidavit or declaration under 37 CFR 1.132.

The MPEP states: “A rejection based on pre-AIA 35 U.S.C. 102(e) can be overcome by filing an affidavit or declaration under 37 CFR 1.132 showing that the reference invention is not by ‘another.’“

However, the affidavit or declaration must provide sufficient context and evidence. As noted in the MPEP: “An affidavit or declaration under 37 CFR 1.132 that is only a naked assertion of inventorship and that fails to provide any context, explanation or evidence to support that assertion is insufficient to show that the relied-upon subject matter was the inventor’s own work.“

The showing can be made by proving that the inventor(s) of the reference was associated with the applicant and learned of the invention directly or indirectly from the inventor or at least one joint inventor.

To learn more:

• pre-AIA 35 U.S.C. 102(e)
• affidavit
• declaration
• 37 CFR 1.132
• inventor’s own work