When is a 37 CFR 1.131 affidavit not an acceptable method to overcome a pre-AIA 35 U.S.C. 102(e) rejection?
A 37 CFR 1.131 affidavit is not an acceptable method to overcome a pre-AIA 35 U.S.C. 102(e) rejection in certain circumstances. According to the MPEP: “When the claims of the reference U.S. patent or U.S. patent application publication and the application are directed to the same invention or are obvious variants, an affidavit or declaration…
Read MoreCan a terminal disclaimer overcome a pre-AIA 35 U.S.C. 102(e) rejection?
No, a terminal disclaimer cannot overcome a pre-AIA 35 U.S.C. 102(e) rejection. This is explicitly stated in the MPEP: “Note that a terminal disclaimer does not overcome a pre‑AIA 35 U.S.C. 102(e) rejection. See, e.g., In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991).” A terminal disclaimer is typically used to overcome…
Read MoreHow can I overcome a pre-AIA 35 U.S.C. 102(e) rejection?
There are two main ways to overcome a pre-AIA 35 U.S.C. 102(e) rejection: Antedating the filing date of the reference: This can be done by submitting an affidavit or declaration under 37 CFR 1.131. As stated in the MPEP, “An affidavit or declaration under 37 CFR 1.131(a) can overcome a prior art rejection under pre‑AIA…
Read MoreHow can I establish priority to an earlier filing date to overcome a pre-AIA 35 U.S.C. 102(e) rejection?
To establish priority to an earlier filing date and overcome a pre-AIA 35 U.S.C. 102(e) rejection, you can take the following steps: For foreign priority under 35 U.S.C. 119(a)-(d): File a claim to priority within the time period set in 37 CFR 1.55. For applications filed on or after September 16, 2012, file a corrected…
Read MoreWhat is the difference between a 37 CFR 1.131 affidavit and a 37 CFR 1.132 affidavit?
The main difference between a 37 CFR 1.131 affidavit and a 37 CFR 1.132 affidavit lies in their purpose and when they are appropriate to use: 37 CFR 1.131 affidavit: Used to antedate a reference by proving prior invention. It is appropriate when the reference describes an invention by someone other than the applicant. 37…
Read MoreWhat is the critical reference date for pre-AIA 35 U.S.C. 102(e) prior art?
The critical reference date for pre-AIA 35 U.S.C. 102(e) prior art is an important concept in determining whether a reference qualifies as prior art under this section. While the MPEP excerpt provided doesn’t give a specific definition, it refers to MPEP § 2136.03 for more information: “see MPEP § 2136.03 regarding critical reference date of…
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