What is the purpose of 37 CFR 1.130 affidavits or declarations?
The purpose of affidavits or declarations under 37 CFR 1.130 is to overcome prior art rejections by establishing that: The disclosure was made by the inventor or joint inventor (1.130(a) declaration) The subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor (1.130(a) declaration) The subject matter disclosed had been…
Read MoreCan a prior art disclosure be used in an obviousness rejection if it doesn’t meet the anticipation requirements?
Yes, a prior art disclosure can be used in an obviousness rejection even if it doesn’t meet the anticipation requirements. The MPEP clarifies: “The description requirement of AIA 35 U.S.C. 102(a)(1) and (a)(2) does not preclude an examiner from applying a disclosure in an obviousness rejection under AIA 35 U.S.C. 103 simply because the disclosure…
Read MoreCan a 1.130 declaration be used to overcome all types of prior art rejections?
No, a 1.130 declaration cannot be used to overcome all types of prior art rejections. According to MPEP 2155, 1.130 declarations are specifically designed to address certain types of prior art under AIA 35 U.S.C. 102(a)(1) and 102(a)(2). They cannot be used to overcome rejections based on: Prior art that falls outside the 1-year grace…
Read MoreIs the “how to use” requirement necessary for a prior art document to qualify as anticipatory under AIA 35 U.S.C. 102?
No, the “how to use” requirement is not necessary for a prior art document to qualify as anticipatory under AIA 35 U.S.C. 102. The MPEP explicitly states: “There is, however, no requirement that a prior art document meet the ‘how to use’ requirement of 35 U.S.C. 112(a) in order to qualify as prior art.” This…
Read MoreWhat is the difference between a 1.130(a) and 1.130(b) declaration?
The main difference between a 1.130(a) and 1.130(b) declaration lies in the type of exception they are used to establish: 1.130(a) declaration: Used to establish that the disclosure was made by the inventor or joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor. 1.130(b) declaration:…
Read MoreWhat is the difference between 37 CFR 1.130(a) and 1.130(b) declarations?
The main difference between 37 CFR 1.130(a) and 1.130(b) declarations lies in the nature of the disclosure being addressed: 1.130(a) declaration: Used when the disclosure was made by the inventor or joint inventor, or the subject matter was obtained directly or indirectly from the inventor or joint inventor. 1.130(b) declaration: Used when the subject matter…
Read MoreWhat are the two basic requirements for a prior art document to anticipate a claimed invention under AIA 35 U.S.C. 102?
According to the MPEP, there are two basic requirements for a prior art document to anticipate a claimed invention under AIA 35 U.S.C. 102: Disclosure of elements: “Each and every element of the claimed invention” must be disclosed either explicitly or inherently, and the elements must be “arranged or combined in the same way as…
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