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 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…
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