How can an applicant overcome a species rejection under 37 CFR 1.131(a)?
An applicant can overcome a species rejection under 37 CFR 1.131(a) in two ways: Directly: By showing prior completion of the claimed species. Indirectly: By showing prior completion of a different species coupled with evidence that the claimed species would have been an obvious modification of the completed species. As stated in MPEP 715.03: “Where…
Read MoreHow does a 37 CFR 1.131(a) affidavit overcome a pre-AIA 35 U.S.C. 103 rejection?
A 37 CFR 1.131(a) affidavit can overcome a pre-AIA 35 U.S.C. 103 rejection by showing completion of the invention prior to the effective date of the reference(s) cited in the rejection. The MPEP 715.02 states: Applicant may overcome a pre-AIA 35 U.S.C. 103 rejection based on a combination of references by showing completion of the…
Read MoreWhat is the deadline for submitting affidavits or declarations under 37 CFR 1.131(a)?
Affidavits or declarations under 37 CFR 1.131(a) must be timely presented to be admitted. According to MPEP 715.09, they are considered timely if submitted: Prior to a final rejection Before appeal in an application not having a final rejection After final rejection, but before or on the same date of filing an appeal, with a…
Read MoreCan an affidavit or declaration under 37 CFR 1.131(a) be used to swear behind a U.S. patent or U.S. patent application publication?
An affidavit or declaration under 37 CFR 1.131(a) cannot be used to swear behind a U.S. patent or U.S. patent application publication that claims the rejected invention. The MPEP clearly states: ’37 CFR 1.131(a) is not available if the reference is a U.S. patent or U.S. patent application publication of a pending or patented application…
Read MoreHow does 37 CFR 1.131(a) relate to exhibit requirements in patent applications?
The regulation 37 CFR 1.131(a) is closely related to exhibit requirements in patent applications, particularly in the context of affidavits or declarations. According to MPEP 715.07(d), “Exhibits, such as those filed as part of an affidavit or declaration under 37 CFR 1.131(a), must comply with the requirements of 37 CFR 1.91 to be entered into…
Read MoreWhat is the significance of 37 CFR 1.131(a) affidavits or declarations in establishing invention dates?
37 CFR 1.131(a) affidavits or declarations are important tools for establishing invention dates under pre-AIA law. The MPEP 715.07(c) states: “The 37 CFR 1.131(a) affidavit or declaration must contain an allegation that the acts relied upon to establish the date prior to the reference or activity were carried out in this country or in a…
Read MoreWhat must be shown in a 37 CFR 1.131(a) affidavit or declaration?
A 37 CFR 1.131(a) affidavit or declaration must establish possession of either the whole invention claimed or something falling within the claim. According to MPEP 715.02: The 37 CFR 1.131(a) affidavit or declaration must establish possession of either the whole invention claimed or something falling within the claim (such as a species of a claimed…
Read MoreCan an inventor use a 37 CFR 1.131(a) affidavit to overcome a rejection based on a commonly owned patent or application?
No, an inventor cannot use a 37 CFR 1.131(a) affidavit to overcome a rejection based on a commonly owned patent or application. This is because such references are not considered prior art that can be antedated. According to MPEP 715.01(a): “Where the reference is a U.S. patent or patent application publication of a common assignee…
Read MoreCan a 37 CFR 1.131(a) affidavit be used to overcome a statutory bar?
No, a 37 CFR 1.131(a) affidavit or declaration cannot be used to overcome a statutory bar. This limitation is explicitly stated in MPEP 715: An affidavit or declaration under 37 CFR 1.131(a) is not appropriate where the reference is a statutory bar under pre-AIA 35 U.S.C. 102(b) because no affidavit or declaration can be used…
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