How can an inventor overcome a rejection based on a reference with a different inventive entity?

An inventor can overcome a rejection based on a reference with a different inventive entity in several ways:

• By filing an affidavit or declaration under 37 CFR 1.131(a) showing prior invention
• By filing an affidavit or declaration under 37 CFR 1.132

The MPEP states: An unequivocal declaration under 37 CFR 1.132 by S that he/she conceived or invented the subject matter that was disclosed but not claimed in the patent or application publication and relied on in the rejection has been sufficient to overcome the rejection.

However, it’s important to note that a mere assertion of inventorship without supporting evidence is not sufficient. The MPEP cautions: An affidavit or declaration under 37 CFR 1.132 that is only a naked assertion of inventorship by an inventor who has an interest at stake and that fails to provide any context, explanation or evidence to support that assertion is insufficient to show that the relied-upon subject matter was the inventor’s own work.

To learn more:

• prior art
• inventorship
• affidavits
• declarations
• 37 CFR 1.131
• 37 CFR 1.132

To learn more:

• 37 CFR 1.131
• 37 CFR 1.132