Can 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 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 MoreCan a negative limitation be used to overcome a prior art rejection?
Can a negative limitation be used to overcome a prior art rejection? Yes, a negative limitation can be used to overcome a prior art rejection, provided it meets certain criteria. According to MPEP 2173.05(i): “The mere absence of a positive recitation is not basis for an exclusion. Any claim containing a negative limitation which does…
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 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 MoreCan a terminal disclaimer be used to overcome a prior art rejection?
No, a terminal disclaimer cannot be used to overcome a prior art rejection. Terminal disclaimers are specifically designed to address nonstatutory double patenting issues, not prior art rejections under 35 U.S.C. 102 or 103. MPEP 804.02 clearly states: “It should be emphasized that a terminal disclaimer cannot be used to overcome a prior art rejection…
Read MoreWhat types of references does an examiner list on Form PTO-892?
An examiner lists specific types of references on Form PTO-892 (Notice of References Cited). According to MPEP 1302.12: When an examiner lists references on a form PTO-892, the examiner lists references that are relied upon in a prior art rejection or mentioned as pertinent. These references typically include: Prior art used in rejections Pertinent references…
Read MoreWhat evidence is required in a 37 CFR 1.130(a) declaration for attribution?
A 37 CFR 1.130(a) declaration for attribution requires specific evidence to effectively overcome a prior art rejection. According to MPEP 717.01(a): The evidence necessary to show that the disclosure is by the inventor or a joint inventor must be submitted, including an explanation of how the inventor or joint inventor is connected to the disclosure.…
Read MoreWhat is the difference between a 37 CFR 1.131(a) affidavit and a 37 CFR 1.132 affidavit?
The main difference between a 37 CFR 1.131(a) affidavit and a 37 CFR 1.132 affidavit lies in their purpose and what they aim to prove: A 37 CFR 1.131(a) affidavit is used to prove invention prior to the effective date of a reference or activity. A 37 CFR 1.132 affidavit is used to prove that…
Read MoreWhat is the significance of common ownership in overcoming prior art rejections?
Common ownership can be significant in overcoming certain prior art rejections, particularly those based on pre-AIA 35 U.S.C. 102(e), (f), or (g) in combination with 35 U.S.C. 103. If the applicant can show that the claimed invention and the subject matter of the prior art were commonly owned at the time the invention was made,…
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