How can an applicant overcome a rejection if their 37 CFR 1.131(a) affidavit is not fully commensurate with the rejected claim?
If an applicant’s 37 CFR 1.131(a) affidavit is not fully commensurate with the rejected claim, they can still overcome the rejection by demonstrating that the differences would have been obvious. The MPEP 715.02 states:
Even if applicant’s 37 CFR 1.131(a) affidavit is not fully commensurate with the rejected claim, the applicant can still overcome the rejection by showing that the differences between the claimed invention and the showing under 37 CFR 1.131(a) would have been obvious to one of ordinary skill in the art, in view of applicant’s 37 CFR 1.131(a) evidence, prior to the effective date of the reference(s) or the activity.
This means that if the affidavit doesn’t cover all aspects of the claimed invention, the applicant can argue that the missing elements would have been obvious to a person skilled in the art based on what is shown in the affidavit. This approach recognizes that possession of the shown invention implies possession of obvious variations and adaptations.
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