Can these methods also be used to overcome a 35 U.S.C. 103 rejection?
Yes, the methods used to overcome a 35 U.S.C. 102(a)(1) or 102(a)(2) rejection can also be used to overcome a 35 U.S.C. 103 rejection that is based on 35 U.S.C. 102(a)(1) or 102(a)(2) prior art. MPEP 2152.06 explicitly states: “Note that all of the ways of overcoming a 35 U.S.C. 102(a)(1) or 102(a)(2) rejection mentioned…
Read MoreHow can an applicant overcome a 35 U.S.C. 102(a)(2) rejection based on prior art with a common assignee?
How can an applicant overcome a 35 U.S.C. 102(a)(2) rejection based on prior art with a common assignee? An applicant can overcome a 35 U.S.C. 102(a)(2) rejection based on prior art with a common assignee by invoking the common ownership exception under 35 U.S.C. 102(b)(2)(C). According to MPEP 2152.06: “An applicant may show that the…
Read MoreWhat are the main ways to overcome a 35 U.S.C. 102(a)(1) or 102(a)(2) rejection?
There are several ways to overcome a 35 U.S.C. 102(a)(1) or 102(a)(2) rejection, as outlined in MPEP 2152.06: Submitting a benefit claim under 35 U.S.C. 120 or 119(e) Submitting a claim to priority under 35 U.S.C. 119(a)-(d) Filing an affidavit or declaration under 37 CFR 1.130 Establishing common ownership or evidence of a Joint Research…
Read MoreHow can an applicant use the grace period inventor’s disclosure exception to overcome a 102(a)(1) rejection?
How can an applicant use the grace period inventor’s disclosure exception to overcome a 102(a)(1) rejection? An applicant can use the grace period inventor’s disclosure exception under 35 U.S.C. 102(b)(1)(A) to overcome a 102(a)(1) rejection. According to MPEP 2152.06: “An applicant may overcome a rejection by filing an affidavit or declaration under 37 CFR 1.130(a)…
Read MoreHow can I use a foreign priority claim to overcome a 35 U.S.C. 102 rejection?
To use a foreign priority claim to overcome a 35 U.S.C. 102 rejection, you need to: Submit a claim to priority under 35 U.S.C. 119(a)-(d) within the time period set in 37 CFR 1.55 Identify the prior foreign application in a corrected application data sheet under 37 CFR 1.76 Establish that the prior foreign application…
Read MoreWhat is the difference between overcoming a 102(a)(1) and a 102(a)(2) rejection?
What is the difference between overcoming a 102(a)(1) and a 102(a)(2) rejection? The methods for overcoming 102(a)(1) and 102(a)(2) rejections differ due to the nature of the prior art involved. According to MPEP 2152.06: For 102(a)(1) rejections: Argue that the reference is not prior art Invoke an exception under 102(b)(1) Antedate the reference (for pre-AIA…
Read MoreHow can common ownership or a Joint Research Agreement help overcome a 35 U.S.C. 102(a)(2) rejection?
Common ownership or evidence of a Joint Research Agreement can be used to overcome a 35 U.S.C. 102(a)(2) rejection by establishing entitlement to the 35 U.S.C. 102(b)(2)(C) exception. This exception removes certain disclosures from being considered prior art. MPEP 2152.06 states: “Establishing common ownership or establishing evidence of a Joint Research Agreement to overcome a…
Read MoreHow can I use a benefit claim to overcome a 35 U.S.C. 102 rejection?
To overcome a 35 U.S.C. 102 rejection using a benefit claim, you can: Submit a benefit claim under 35 U.S.C. 120 within the time period set in 37 CFR 1.78 Submit a benefit claim under 35 U.S.C. 119(e) for a provisional application According to MPEP 2152.06: “Submitting a benefit claim under 35 U.S.C. 120 within…
Read MoreWhat is an affidavit or declaration under 37 CFR 1.130 and how can it overcome a 35 U.S.C. 102 rejection?
An affidavit or declaration under 37 CFR 1.130 is a sworn statement that can be used to overcome a 35 U.S.C. 102 rejection by establishing that a disclosure is not prior art. There are two types: Affidavit or declaration of attribution (37 CFR 1.130(a)) Affidavit or declaration of prior public disclosure (37 CFR 1.130(b)) MPEP…
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