The exceptions of 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B) are only applicable when the subject matter of the intervening disclosure is the same as the subject matter of the earlier inventor-originated prior public disclosure (e.g., a disclosure by an inventor or joint inventor, or another who obtained directly or indirectly from the inventor or a joint inventor). In other words, even if an intervening disclosure by a third party is obvious over an inventor-originated prior public disclosure, it would NOT be a disclosure of the same subject matter and the exceptions under 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B) do not apply. Any showing that the intervening disclosure is the same subject matter as earlier disclosed by the inventor, joint inventor, or another who obtained it directly or indirectly from the inventor(s) must be sufficient, in character and weight, to establish that the two disclosures are to the same subject matter.

The exception of 35 U.S.C. 102(b)(1)(B) or 35 U.S.C. 102(b)(2)(B) applies to subject matter of the intervening disclosure that is simply a more general description of the subject matter previously publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. Specifically, if subject matter of an intervening disclosure is simply a more general description of the subject matter previously publicly disclosed by the inventor or a joint inventor, or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor, the exception in 35 U.S.C. 102(b)(1)(B) or 35 U.S.C. 102(b)(2)(B) applies to such subject matter of the intervening disclosure. For example, if the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening disclosure discloses a genus (i.e., provides a more generic disclosure of the species), the disclosure of the genus in the intervening disclosure is not available as prior art under 35 U.S.C. 102(a)(1) or (a)(2), as the case may be. Conversely, the exception may not apply to subject matter of the intervening disclosure that is more specific than the subject matter previously publicly disclosed by the inventor or a joint inventor or that is directed to a different species. For example, if the inventor or a joint inventor had publicly disclosed a genus, and a subsequent intervening disclosure discloses a species, the disclosure of the species in the subsequent intervening disclosure would be available as prior art under 35 U.S.C. 102(a)(2) (unless the prior disclosure of the genus would have caused PHOSITA to at once envision every species within that genus, such as a disclosure of “halogen” amounting to a disclosure of every element that is a halogen). Likewise, if the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening disclosure discloses an alternative species not also disclosed by the inventor or a joint inventor, the disclosure of the alternative species in the intervening disclosure would be available as prior art under 35 U.S.C. 102(a)(1) or (a)(2), as the case may be.

The exception of 35 U.S.C. 102(b)(1)(B) or 35 U.S.C. 102(b)(2)(B) applies to subject matter of the intervening disclosure that is simply a more general description of the subject matter previously publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. Specifically, if subject matter of an intervening disclosure is simply a more general description of the subject matter previously publicly disclosed by the inventor or a joint inventor, or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor, the exception in 35 U.S.C. 102(b)(1)(B) or 35 U.S.C. 102(b)(2)(B) applies to such subject matter of the intervening disclosure. For example, if the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening disclosure discloses a genus (i.e., provides a more generic disclosure of the species), the disclosure of the genus in the intervening disclosure is not available as prior art under 35 U.S.C. 102(a)(1) or (a)(2), as the case may be. Conversely, the exception may not apply to subject matter of the intervening disclosure that is more specific than the subject matter previously publicly disclosed by the inventor or a joint inventor or that is directed to a different species. For example, if the inventor or a joint inventor had publicly disclosed a genus, and a subsequent intervening disclosure discloses a species, the disclosure of the species in the subsequent intervening disclosure would be available as prior art under 35 U.S.C. 102(a)(2) (unless the prior disclosure of the genus would have caused PHOSITA to at once envision every species within that genus, such as a disclosure of “halogen” amounting to a disclosure of every element that is a halogen). Likewise, if the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening disclosure discloses an alternative species not also disclosed by the inventor or a joint inventor, the disclosure of the alternative species in the intervening disclosure would be available as prior art under 35 U.S.C. 102(a)(1) or (a)(2), as the case may be.

The exception of 35 U.S.C. 102(b)(1)(B) or 35 U.S.C. 102(b)(2)(B) applies to subject matter of the intervening disclosure that is simply a more general description of the subject matter previously publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. Specifically, if subject matter of an intervening disclosure is simply a more general description of the subject matter previously publicly disclosed by the inventor or a joint inventor, or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor, the exception in 35 U.S.C. 102(b)(1)(B) or 35 U.S.C. 102(b)(2)(B) applies to such subject matter of the intervening disclosure. For example, if the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening disclosure discloses a genus (i.e., provides a more generic disclosure of the species), the disclosure of the genus in the intervening disclosure is not available as prior art under 35 U.S.C. 102(a)(1) or (a)(2), as the case may be. Conversely, the exception may not apply to subject matter of the intervening disclosure that is more specific than the subject matter previously publicly disclosed by the inventor or a joint inventor or that is directed to a different species. For example, if the inventor or a joint inventor had publicly disclosed a genus, and a subsequent intervening disclosure discloses a species, the disclosure of the species in the subsequent intervening disclosure would be available as prior art under 35 U.S.C. 102(a)(2) (unless the prior disclosure of the genus would have caused PHOSITA to at once envision every species within that genus, such as a disclosure of “halogen” amounting to a disclosure of every element that is a halogen). Likewise, if the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening disclosure discloses an alternative species not also disclosed by the inventor or a joint inventor, the disclosure of the alternative species in the intervening disclosure would be available as prior art under 35 U.S.C. 102(a)(1) or (a)(2), as the case may be.

The exception of 35 U.S.C. 102(b)(1)(B) or 35 U.S.C. 102(b)(2)(B) applies to subject matter of the intervening disclosure that is simply a more general description of the subject matter previously publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. Specifically, if subject matter of an intervening disclosure is simply a more general description of the subject matter previously publicly disclosed by the inventor or a joint inventor, or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor, the exception in 35 U.S.C. 102(b)(1)(B) or 35 U.S.C. 102(b)(2)(B) applies to such subject matter of the intervening disclosure. For example, if the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening disclosure discloses a genus (i.e., provides a more generic disclosure of the species), the disclosure of the genus in the intervening disclosure is not available as prior art under 35 U.S.C. 102(a)(1) or (a)(2), as the case may be. Conversely, the exception may not apply to subject matter of the intervening disclosure that is more specific than the subject matter previously publicly disclosed by the inventor or a joint inventor or that is directed to a different species. For example, if the inventor or a joint inventor had publicly disclosed a genus, and a subsequent intervening disclosure discloses a species, the disclosure of the species in the subsequent intervening disclosure would be available as prior art under 35 U.S.C. 102(a)(2) (unless the prior disclosure of the genus would have caused PHOSITA to at once envision every species within that genus, such as a disclosure of “halogen” amounting to a disclosure of every element that is a halogen). Likewise, if the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening disclosure discloses an alternative species not also disclosed by the inventor or a joint inventor, the disclosure of the alternative species in the intervening disclosure would be available as prior art under 35 U.S.C. 102(a)(1) or (a)(2), as the case may be.

Only the portion of the third party’s intervening disclosure that was previously in an inventor-originated disclosure (i.e., the same subject matter) is excepted as prior art under 35 U.S.C. 102(a). In other words, any portion of the third party’s intervening disclosure that was not part of the previous inventor-originated disclosure is still available for use in a prior art rejection. Therefore, examiners should be aware that a declaration under 37 CFR 1.130(b) may only disqualify a portion of a disclosure that was applied in a rejection in an Office action, and that other portions of the disclosure may still be available as prior art. For example, if the inventor or a joint inventor had publicly disclosed elements A, B, and C, and a subsequent intervening U.S. patent, U.S. patent application publication, or WIPO published application discloses elements A, B, C, and D, then element D of the intervening U.S. patent, U.S. patent application publication, or WIPO published application is still available as prior art under 35 U.S.C. 102(a)(2).

Only the portion of the third party’s intervening disclosure that was previously in an inventor-originated disclosure (i.e., the same subject matter) is excepted as prior art under 35 U.S.C. 102(a). In other words, any portion of the third party’s intervening disclosure that was not part of the previous inventor-originated disclosure is still available for use in a prior art rejection. Therefore, examiners should be aware that a declaration under 37 CFR 1.130(b) may only disqualify a portion of a disclosure that was applied in a rejection in an Office action, and that other portions of the disclosure may still be available as prior art. For example, if the inventor or a joint inventor had publicly disclosed elements A, B, and C, and a subsequent intervening U.S. patent, U.S. patent application publication, or WIPO published application discloses elements A, B, C, and D, then element D of the intervening U.S. patent, U.S. patent application publication, or WIPO published application is still available as prior art under 35 U.S.C. 102(a)(2).

Only the portion of the third party’s intervening disclosure that was previously in an inventor-originated disclosure (i.e., the same subject matter) is excepted as prior art under 35 U.S.C. 102(a). In other words, any portion of the third party’s intervening disclosure that was not part of the previous inventor-originated disclosure is still available for use in a prior art rejection. Therefore, examiners should be aware that a declaration under 37 CFR 1.130(b) may only disqualify a portion of a disclosure that was applied in a rejection in an Office action, and that other portions of the disclosure may still be available as prior art. For example, if the inventor or a joint inventor had publicly disclosed elements A, B, and C, and a subsequent intervening U.S. patent, U.S. patent application publication, or WIPO published application discloses elements A, B, C, and D, then element D of the intervening U.S. patent, U.S. patent application publication, or WIPO published application is still available as prior art under 35 U.S.C. 102(a)(2).

The manner of disclosure of subject matter referenced in an affidavit or declaration under 37 CFR 1.130(b) is not critical. Just as the prior art provision of 35 U.S.C. 102(a)(2) encompasses any disclosure that renders a claimed invention available to the public, any manner of disclosure may be evidenced in an affidavit or declaration under 37 CFR 1.130(b). That is, when using an affidavit or declaration under 37 CFR 1.130(b) to disqualify an intervening disclosure as prior art based on a prior public disclosure by an inventor or a joint inventor, it is not necessary for the subject matter to have been disclosed in the same manner or using the same words. In other words, there is no requirement that the disclosure by the inventor or a joint inventor be a verbatim or ipsissimis verbis disclosure of an intervening disclosure in order for the exception based on a previous public disclosure of subject matter by the inventor or a joint inventor to apply.

The manner of disclosure of subject matter referenced in an affidavit or declaration under 37 CFR 1.130(b) is not critical. Just as the prior art provision of 35 U.S.C. 102(a)(2) encompasses any disclosure that renders a claimed invention available to the public, any manner of disclosure may be evidenced in an affidavit or declaration under 37 CFR 1.130(b). That is, when using an affidavit or declaration under 37 CFR 1.130(b) to disqualify an intervening disclosure as prior art based on a prior public disclosure by an inventor or a joint inventor, it is not necessary for the subject matter to have been disclosed in the same manner or using the same words. In other words, there is no requirement that the disclosure by the inventor or a joint inventor be a verbatim or ipsissimis verbis disclosure of an intervening disclosure in order for the exception based on a previous public disclosure of subject matter by the inventor or a joint inventor to apply.

The manner of disclosure of subject matter referenced in an affidavit or declaration under 37 CFR 1.130(b) is not critical. Just as the prior art provision of 35 U.S.C. 102(a)(2) encompasses any disclosure that renders a claimed invention available to the public, any manner of disclosure may be evidenced in an affidavit or declaration under 37 CFR 1.130(b). That is, when using an affidavit or declaration under 37 CFR 1.130(b) to disqualify an intervening disclosure as prior art based on a prior public disclosure by an inventor or a joint inventor, it is not necessary for the subject matter to have been disclosed in the same manner or using the same words. In other words, there is no requirement that the disclosure by the inventor or a joint inventor be a verbatim or ipsissimis verbis disclosure of an intervening disclosure in order for the exception based on a previous public disclosure of subject matter by the inventor or a joint inventor to apply.

The exceptions of 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B) are only applicable when the subject matter of the intervening disclosure is the same as the subject matter of the earlier inventor-originated prior public disclosure (e.g., a disclosure by an inventor or joint inventor, or another who obtained directly or indirectly from the inventor or a joint inventor). In other words, even if an intervening disclosure by a third party is obvious over an inventor-originated prior public disclosure, it would NOT be a disclosure of the same subject matter and the exceptions under 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B) do not apply. Any showing that the intervening disclosure is the same subject matter as earlier disclosed by the inventor, joint inventor, or another who obtained it directly or indirectly from the inventor(s) must be sufficient, in character and weight, to establish that the two disclosures are to the same subject matter.

The exceptions of 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B) are only applicable when the subject matter of the intervening disclosure is the same as the subject matter of the earlier inventor-originated prior public disclosure (e.g., a disclosure by an inventor or joint inventor, or another who obtained directly or indirectly from the inventor or a joint inventor). In other words, even if an intervening disclosure by a third party is obvious over an inventor-originated prior public disclosure, it would NOT be a disclosure of the same subject matter and the exceptions under 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B) do not apply. Any showing that the intervening disclosure is the same subject matter as earlier disclosed by the inventor, joint inventor, or another who obtained it directly or indirectly from the inventor(s) must be sufficient, in character and weight, to establish that the two disclosures are to the same subject matter.

The exception of 35 U.S.C. 102(b)(1)(B) or 35 U.S.C. 102(b)(2)(B) applies to subject matter of the intervening disclosure that is simply a more general description of the subject matter previously publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. Specifically, if subject matter of an intervening disclosure is simply a more general description of the subject matter previously publicly disclosed by the inventor or a joint inventor, or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor, the exception in 35 U.S.C. 102(b)(1)(B) or 35 U.S.C. 102(b)(2)(B) applies to such subject matter of the intervening disclosure. For example, if the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening disclosure discloses a genus (i.e., provides a more generic disclosure of the species), the disclosure of the genus in the intervening disclosure is not available as prior art under 35 U.S.C. 102(a)(1) or (a)(2), as the case may be. Conversely, the exception may not apply to subject matter of the intervening disclosure that is more specific than the subject matter previously publicly disclosed by the inventor or a joint inventor or that is directed to a different species. For example, if the inventor or a joint inventor had publicly disclosed a genus, and a subsequent intervening disclosure discloses a species, the disclosure of the species in the subsequent intervening disclosure would be available as prior art under 35 U.S.C. 102(a)(2) (unless the prior disclosure of the genus would have caused PHOSITA to at once envision every species within that genus, such as a disclosure of “halogen” amounting to a disclosure of every element that is a halogen). Likewise, if the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening disclosure discloses an alternative species not also disclosed by the inventor or a joint inventor, the disclosure of the alternative species in the intervening disclosure would be available as prior art under 35 U.S.C. 102(a)(1) or (a)(2), as the case may be.

The exception of 35 U.S.C. 102(b)(1)(B) or 35 U.S.C. 102(b)(2)(B) applies to subject matter of the intervening disclosure that is simply a more general description of the subject matter previously publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. Specifically, if subject matter of an intervening disclosure is simply a more general description of the subject matter previously publicly disclosed by the inventor or a joint inventor, or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor, the exception in 35 U.S.C. 102(b)(1)(B) or 35 U.S.C. 102(b)(2)(B) applies to such subject matter of the intervening disclosure. For example, if the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening disclosure discloses a genus (i.e., provides a more generic disclosure of the species), the disclosure of the genus in the intervening disclosure is not available as prior art under 35 U.S.C. 102(a)(1) or (a)(2), as the case may be. Conversely, the exception may not apply to subject matter of the intervening disclosure that is more specific than the subject matter previously publicly disclosed by the inventor or a joint inventor or that is directed to a different species. For example, if the inventor or a joint inventor had publicly disclosed a genus, and a subsequent intervening disclosure discloses a species, the disclosure of the species in the subsequent intervening disclosure would be available as prior art under 35 U.S.C. 102(a)(2) (unless the prior disclosure of the genus would have caused PHOSITA to at once envision every species within that genus, such as a disclosure of “halogen” amounting to a disclosure of every element that is a halogen). Likewise, if the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening disclosure discloses an alternative species not also disclosed by the inventor or a joint inventor, the disclosure of the alternative species in the intervening disclosure would be available as prior art under 35 U.S.C. 102(a)(1) or (a)(2), as the case may be.

[Editor Note: This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note) and MPEP § 2159. For applications subject to pre-AIA 35 U.S.C. 102 and pre-AIA 35 U.S.C. 103, see MPEP § 716.10 for affidavits or declarations of attribution under 37 CFR 1.132.]

[Editor Note: This MPEP section is only applicable to applications subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 100 (note) and MPEP § 2159. For applications subject to pre-AIA 35 U.S.C. 102 and pre-AIA 35 U.S.C. 103, see MPEP § 716.10 for affidavits or declarations of attribution under 37 CFR 1.132.]