How can an applicant overcome a rejection under pre-AIA 35 U.S.C. 102(e)?

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.

An applicant can overcome a rejection under pre-AIA 35 U.S.C. 102(e) through several methods:

• Persuasively arguing that the claims are patentably distinguishable from the prior art
• Amending the claims to patentably distinguish over the prior art
• Filing an affidavit or declaration under 37 CFR 1.132 showing that the reference invention is not by “another”
• Filing an affidavit or declaration under 37 CFR 1.131(a) showing prior invention
• Submitting and perfecting a claim to priority under 35 U.S.C. 119(a)-(d)
• Submitting a benefit claim under 35 U.S.C. 119(e) or 120

The MPEP states: “A rejection based on pre-AIA 35 U.S.C. 102(e) can be overcome by: (A) Persuasively arguing that the claims are patentably distinguishable from the prior art; (B) Amending the claims to patentably distinguish over the prior art; (C) Filing an affidavit or declaration under 37 CFR 1.132 showing that the reference invention is not by “another”…“