Can a portion of an intervening disclosure be excepted as prior art?
Yes, only a portion of an intervening disclosure can be excepted as prior art. The MPEP states:
“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).”
This means that any part of the third party’s disclosure that wasn’t included in the previous inventor-originated disclosure can still be used as prior art. The MPEP provides an 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 disclosure is still available as prior art under 35 U.S.C. 102(a)(2).”
Examiners should be aware that a declaration under 37 CFR 1.130(b) may only disqualify a portion of a disclosure applied in a rejection.
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