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 non-statutory double patenting rejections, but it is not effective against prior art rejections under 35 U.S.C. 102(e). To overcome a 102(e) rejection, you would need to use other methods such as antedating the reference or establishing priority to an earlier filing date, as discussed in MPEP 2136.05(a).
To learn more:
Topics:
MPEP 2100 - Patentability,
MPEP 2136.05(A) - Antedating A Pre - Aia 35 U.S.C. 102(E) Reference,
Patent Law,
Patent Procedure