MPEP § 2133.02 — Rejections Based on Publications and Patents (Annotated Rules)
§2133.02 Rejections Based on Publications and Patents
This page consolidates and annotates all enforceable requirements under MPEP § 2133.02, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Rejections Based on Publications and Patents
This section addresses Rejections Based on Publications and Patents. Primary authority: 35 U.S.C. 100, 35 U.S.C. 102(a), and 35 U.S.C. 102. Contains: 1 requirement, 1 prohibition, and 5 other statements.
Key Rules
Printed Publication (MPEP 2152.02(b))
“Any invention described in a printed publication more than one year prior to the date of a patent application is prior art under Section 102(b), even if the printed publication was authored by the patent applicant.” De Graffenried v. United States, 16 USPQ2d 1321, 1330 n.7 (Cl. Ct. 1990). “Once an inventor has decided to lift the veil of secrecy from his [or her] work, he [or she] must choose between the protection of a federal patent, or the dedication of his [or her] idea to the public at large.” Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 148, 9 USPQ2d 1847, 1851 (1989).
“Any invention described in a printed publication more than one year prior to the date of a patent application is prior art under Section 102(b), even if the printed publication was authored by the patent applicant.” De Graffenried v. United States, 16 USPQ2d 1321, 1330 n.7 (Cl. Ct. 1990). “Once an inventor has decided to lift the veil of secrecy from his [or her] work, he [or she] must choose between the protection of a federal patent, or the dedication of his [or her] idea to the public at large.” Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 148, 9 USPQ2d 1847, 1851 (1989).
“Any invention described in a printed publication more than one year prior to the date of a patent application is prior art under Section 102(b), even if the printed publication was authored by the patent applicant.” De Graffenried v. United States, 16 USPQ2d 1321, 1330 n.7 (Cl. Ct. 1990). “Once an inventor has decided to lift the veil of secrecy from his [or her] work, he [or she] must choose between the protection of a federal patent, or the dedication of his [or her] idea to the public at large.” Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 148, 9 USPQ2d 1847, 1851 (1989).
“Any invention described in a printed publication more than one year prior to the date of a patent application is prior art under Section 102(b), even if the printed publication was authored by the patent applicant.” De Graffenried v. United States, 16 USPQ2d 1321, 1330 n.7 (Cl. Ct. 1990). “Once an inventor has decided to lift the veil of secrecy from his [or her] work, he [or she] must choose between the protection of a federal patent, or the dedication of his [or her] idea to the public at large.” Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 148, 9 USPQ2d 1847, 1851 (1989).
Statutory Authority for Examination
Antedating Reference – Pre-AIA (MPEP 2136.05)
A rejection under pre-AIA 35 U.S.C. 102(b) cannot be overcome by affidavits and declarations under 37 CFR 1.131 (Rule 131 Declarations), foreign priority dates, or evidence that applicant himself invented the subject matter. Outside the 1-year grace period, applicant is barred from obtaining a patent containing any anticipated or obvious claims. In re Foster, 343 F.2d 980, 984, 145 USPQ 166, 170 (CCPA 1965).
Assignee as Applicant Signature
A rejection under pre-AIA 35 U.S.C. 102(b) cannot be overcome by affidavits and declarations under 37 CFR 1.131 (Rule 131 Declarations), foreign priority dates, or evidence that applicant himself invented the subject matter. Outside the 1-year grace period, applicant is barred from obtaining a patent containing any anticipated or obvious claims. In re Foster, 343 F.2d 980, 984, 145 USPQ 166, 170 (CCPA 1965).
Citations
| Primary topic | Citation |
|---|---|
| Statutory Authority for Examination | 35 U.S.C. § 100 |
| Statutory Authority for Examination | 35 U.S.C. § 102(a) |
| Antedating Reference – Pre-AIA (MPEP 2136.05) Assignee as Applicant Signature | 35 U.S.C. § 102(b) |
| Antedating Reference – Pre-AIA (MPEP 2136.05) Assignee as Applicant Signature | 37 CFR § 1.131 |
| Statutory Authority for Examination | MPEP § 2150 |
| Statutory Authority for Examination | MPEP § 2152 |
| Statutory Authority for Examination | MPEP § 2159 |
| Printed Publication (MPEP 2152.02(b)) | Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 148, 9 USPQ2d 1847, 1851 (1989) |
| Antedating Reference – Pre-AIA (MPEP 2136.05) Assignee as Applicant Signature | In re Foster, 343 F.2d 980, 984, 145 USPQ 166, 170 (CCPA 1965) |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 2133.02 — Rejections Based on Publications and Patents
Source: USPTO2133.02 Rejections Based on Publications and Patents [R-11.2013]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions. See MPEP § 2152 et seq. for a detailed discussion of AIA 35 U.S.C. 102(a) and (b).]
I. APPLICANT’S OWN WORK WHICH WAS AVAILABLE TO THE PUBLIC BEFORE THE GRACE PERIOD MAY BE USED IN A PRE-AIA 35 U.S.C. 102(b) REJECTION“Any invention described in a printed publication more than one year prior to the date of a patent application is prior art under Section 102(b), even if the printed publication was authored by the patent applicant.” De Graffenried v.United States, 16 USPQ2d 1321, 1330 n.7 (Cl. Ct. 1990). “Once an inventor has decided to lift the veil of secrecy from his [or her] work, he [or she] must choose between the protection of a federal patent, or the dedication of his [or her] idea to the public at large.” Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 148, 9 USPQ2d 1847, 1851 (1989).
II. A PRE-AIA 35 U.S.C. 102(b) REJECTION CREATES A STATUTORY BAR TO PATENTABILITY OF THE REJECTED CLAIMSA rejection under pre-AIA 35 U.S.C. 102(b) cannot be overcome by affidavits and declarations under 37 CFR 1.131 (Rule 131 Declarations), foreign priority dates, or evidence that applicant himself invented the subject matter. Outside the 1-year grace period, applicant is barred from obtaining a patent containing any anticipated or obvious claims. In re Foster, 343 F.2d 980, 984, 145 USPQ 166, 170 (CCPA 1965).