Can a terminal disclaimer overcome a pre-AIA 35 U.S.C. 102(e) rejection?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-30 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. 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) . Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Pre-AIA 35 U.S.C. 102(e) Publication Date for Patent MPEP 2136 Terminal Disclaimer Cannot Overcome Pre-AIA 102(e) Rejection MPEP 2136.05(a) Pre-AIA 35 U.S.C. 102(e) Publication Date Requirement MPEP 2136 Pre-AIA 35 U.S.C. 102(e) Application Guidelines MPEP 2136 Required Pre-AIA 35 U.S.C. 102(e) Publication Date MPEP 2136 Examples of Pre-AIA 35 U.S.C. 102(e) Prior Art Dates MPEP 2136 Pre-AIA 35 U.S.C. 102(e)(2) Patent Date Is December 8, 2000 MPEP 2136 Pre-AIA 35 U.S.C. 102(e)(2) Patent Date Is June 21, 1999 MPEP 2136 Pre-AIA 35 U.S.C. 102(e)(2) Patent Date Is March 1, 2001 MPEP 2136 No Pre-AIA 35 U.S.C. 102(e)(2) Date for Patent MPEP 2136 Other Related FAQs 5 FAQs Collapse What is the critical reference date for pre-AIA 35 U.S.C. 102(e) prior art? How can I overcome a pre-AIA 35 U.S.C. 102(e) rejection? What is the difference between a 37 CFR 1.131 affidavit and a 37 CFR 1.132 affidavit? How can I establish priority to an earlier filing date to overcome a pre-AIA 35 U.S.C. 102(e) reje...