Can a partial disclosure be disqualified under 37 CFR 1.130(b)?
Yes, it is possible to disqualify only a portion of an intervening disclosure under 37 CFR 1.130(b). The MPEP provides clear guidance on this matter:
Only the portion of the third party’s intervening disclosure that was previously in an inventor-originated disclosure (i.e., the same subject matter) is excepted as prior art under 35 U.S.C. 102(a). In other words, any portion of the third party’s intervening disclosure that was not part of the previous inventor-originated disclosure is still available for use in a prior art rejection.
This means that examiners should be aware that a declaration under 37 CFR 1.130(b) may only disqualify a portion of a disclosure that was applied in a rejection. The MPEP provides an example to illustrate this point:
For example, if the inventor or a joint inventor had publicly disclosed elements A, B, and C, and a subsequent intervening U.S. patent, U.S. patent application publication, or WIPO published application discloses elements A, B, C, and D, then element D of the intervening U.S. patent, U.S. patent application publication, or WIPO published application is still available as prior art under 35 U.S.C. 102(a)(2).
Therefore, when submitting a declaration under 37 CFR 1.130(b), it’s important to clearly identify which portions of the intervening disclosure were previously disclosed by the inventor or joint inventor, as only those specific portions can be disqualified as prior art.
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