Can an inventor use a 37 CFR 1.131(a) affidavit to overcome a rejection based on a commonly owned patent or application?

Question

Accepted Answer

Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-10 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, an inventor cannot use a 37 CFR 1.131(a) affidavit to overcome a rejection based on a commonly owned patent or application. This is because such references are not considered prior art that can be antedated. According to MPEP 715.01(a) : “Where the reference is a U.S. patent or patent application publication of a common assignee with at least one common inventor, claiming a patentably indistinct invention, a rejection of the application claims under pre-AIA 35 U.S.C. 102(e), (f) or (g), or pre-AIA 35 U.S.C. 103(a) using the patent or patent application publication as a reference is proper. In re Duck, 560 F.2d 1057, 1060, 195 USPQ 2, 4 (CCPA 1977). Such a rejection can be overcome by filing a terminal disclaimer in accordance with 37 CFR 1.321(c).” In this case, the appropriate action would be to file a terminal disclaimer rather than attempting to antedate the reference. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Admissions of Prior Art Cannot Be Overcome by Affidavit MPEP 715 Prohibited Date to Overcome Prior Art Is Effective Date MPEP 715 Reference Is a Patent or Published Application Naming Different Inventive Entity With at Least One Common Inventor MPEP 715.01(a) Patent Application Publications as Prior Art MPEP 715 Permitted Reference Is a Patent or Published Application Naming Different Inventive Entity With at Least One Common Inventor MPEP 715.01(a) Permitted Requirement for AIA Prior Art Under 35 U.S.C. 102 MPEP 715.01(a) Requirement to Disqualify Commonly Owned Patent as Prior Art MPEP 715 Permitted When Affidavits Are Not Allowed to Antedate References MPEP 715 Prohibited Terminal Disclaimer and Affidavit for Non-Identical but Not Distinct ...