What determines if an application is subject to pre-AIA 35 U.S.C. 102 and 103?
An application is subject to pre-AIA 35 U.S.C. 102 and 103 if it was filed before March 16, 2013. As stated in the MPEP, Any application filed before March 16, 2013, is governed by pre-AIA 35 U.S.C. 102 and 103 (i.e., the application is a pre-AIA first to invent application). This means that the filing…
Read MoreHow can I overcome a rejection based on 35 U.S.C. 102 prior art?
There are several ways to overcome a rejection based on 35 U.S.C. 102 prior art. The MPEP provides guidance on this: In all applications, an applicant may overcome a 35 U.S.C. 102 rejection by persuasively arguing that the claims are patentably distinguishable from the prior art, or by amending the claims to patentably distinguish over…
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 MoreWhen can multiple references be used in a 35 U.S.C. 102 rejection?
While normally only one reference should be used in a 35 U.S.C. 102 rejection, multiple references can be used in specific circumstances. According to MPEP 2131.01, multiple references are proper when the extra references are cited to: (A) Prove the primary reference contains an “enabled disclosure;” (B) Explain the meaning of a term used in…
Read MoreHow does the MPEP define a “patent” for prior art purposes under 35 U.S.C. 102?
The MPEP 2126 provides a specific definition for what constitutes a “patent” in the context of prior art rejections under 35 U.S.C. 102. It states: “The term ‘patent’ as used in 35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(a), (b), and (d) includes utility models, inventor’s certificates, and similar patent rights issued by foreign countries.”…
Read MoreHow does the MPEP 2152.04 apply to first inventor to file (FITF) provisions?
MPEP 2152.04 specifically addresses the meaning of “disclosure” in the context of the first inventor to file (FITF) provisions of the AIA. The section begins with an important note: “[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set…
Read MoreWhat are the requirements for examining claims under 35 U.S.C. 102 and 103 with means-plus-function limitations?
When examining claims with means-plus-function limitations under 35 U.S.C. 102 or 35 U.S.C. 103, examiners must consider both the claimed subject matter and the means or step that performs the specified function. The MPEP 2185 states: “When examining the claims under 35 U.S.C. 102 or 103 a determination of whether the prior art anticipates or…
Read MoreWhat is the meaning of “disclosure” in the context of AIA 35 U.S.C. 102?
The term “disclosure” is not explicitly defined in the AIA (America Invents Act), but it is used in the context of prior art exceptions. The USPTO treats “disclosure” as a generic expression encompassing the documents and activities listed in AIA 35 U.S.C. 102(a). According to MPEP 2152.04, this includes: Being patented Described in a printed…
Read MoreWhat is the significance of March 16, 2013 in patent law?
March 16, 2013 is a crucial date in patent law due to the implementation of the America Invents Act (AIA). This date determines which version of 35 U.S.C. 102 and 103 applies to a patent application. As stated in MPEP 2159.03: “Even if AIA 35 U.S.C. 102 and 103 apply to a patent application, pre-AIA…
Read MoreWhat are the key changes to 35 U.S.C. 102 under the AIA?
The America Invents Act (AIA) made significant changes to 35 U.S.C. 102, which defines what qualifies as prior art. The key changes include: AIA 35 U.S.C. 102(a)(1) and (a)(2) set forth what qualifies as prior art. AIA 35 U.S.C. 102(b) sets forth exceptions to prior art established in AIA 35 U.S.C. 102(a). The AIA eliminated…
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