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

There are two main ways to overcome a pre-AIA 35 U.S.C. 102(e) rejection:

1. Antedating the filing date of the reference: This can be done by submitting an affidavit or declaration under 37 CFR 1.131. As stated in the MPEP, “An affidavit or declaration under 37 CFR 1.131(a) can overcome a prior art rejection under pre‑AIA 35 U.S.C. 102(e) by proving invention of the claimed subject matter by the inventor or at least one joint inventor prior to the effective date of the reference relied upon in the rejection.“
2. Establishing priority or benefit of an earlier filing date: This can be done by claiming priority under 35 U.S.C. 119(a)-(d) or submitting a benefit claim under 35 U.S.C. 119(e) or 120, within the time periods set in 37 CFR 1.55 or 1.78, respectively.

It’s important to note that these methods have specific requirements and time limits, so it’s advisable to consult the MPEP section 2136.05(a) for detailed information.

To learn more:

• pre-AIA 35 U.S.C. 102(e)
• antedating
• priority claim
• benefit claim
• affidavit
• declaration