Can 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 under 35 U.S.C. 102 or 103.“
To overcome a prior art rejection, an applicant must typically argue against the rejection, amend the claims, or submit evidence to show that the claimed invention is not anticipated or obvious in view of the prior art.
To learn more: