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…

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What are the guidelines for using the “best available art” in prior art rejections?

The MPEP provides guidelines for using the “best available art” in prior art rejections. The general principle is stated as: “Prior art rejections should ordinarily be confined strictly to the best available art.“ However, there are exceptions to this rule. The MPEP mentions that exceptions may be properly made in certain cases, although it doesn’t…

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How does 37 CFR 1.130 help overcome prior art rejections?

37 CFR 1.130 provides a mechanism for applicants to overcome prior art rejections by establishing that certain disclosures should not be considered prior art under the America Invents Act (AIA). It helps in two primary ways: Attribution (37 CFR 1.130(a)): By showing that the disclosure was made by the inventor or joint inventor, or that…

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How does double patenting differ from prior art rejections?

While double patenting and prior art rejections may seem similar, there are key differences: Double patenting compares claims, while prior art rejections compare claims to disclosures Terminal disclaimers can overcome nonstatutory double patenting but not prior art rejections Double patenting requires some commonality in ownership or inventorship Prior art exceptions may not apply to double…

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How does common ownership affect prior art rejections?

Common ownership can affect prior art rejections by potentially disqualifying certain references as prior art under 35 U.S.C. 102(b)(2)(C) or pre-AIA 35 U.S.C. 103(c). If the subject matter disclosed and the claimed invention were commonly owned at the relevant time, the disclosure may not be used as prior art for certain rejections. The MPEP states:…

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How should examiners handle rejections based on prior art?

How should examiners handle rejections based on prior art? Examiners must carefully consider prior art when making rejections. According to MPEP 706: ‘The goal of examination is to clearly articulate any rejection early in the prosecution process so that the applicant has the opportunity to provide evidence of patentability and otherwise reply completely at the…

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What is the effect of a proper common ownership statement on prior art rejections?

What is the effect of a proper common ownership statement on prior art rejections? A properly filed common ownership statement can have a significant impact on prior art rejections. The MPEP 717.02(c) states: “If the applicant disqualifies the subject matter relied upon by the examiner in accordance with 35 U.S.C. 102(b)(2)(C) and the procedures set…

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