How does a 37 CFR 1.131(a) affidavit overcome a pre-AIA 35 U.S.C. 103 rejection?

A 37 CFR 1.131(a) affidavit can overcome a pre-AIA 35 U.S.C. 103 rejection by showing completion of the invention prior to the effective date of the reference(s) cited in the rejection. The MPEP 715.02 states:

Applicant may overcome a pre-AIA 35 U.S.C. 103 rejection based on a combination of references by showing completion of the invention by applicant prior to the effective date of any of the references; applicant need not antedate the reference with the earliest filing date.

However, it’s important to note that the affidavit must show possession of the basic inventive concept, not just what one reference in a combination shows. The affidavit should demonstrate that the differences between the claimed invention and the showing would have been obvious to one of ordinary skill in the art prior to the effective date of the references.

To learn more:

• 37 CFR 1.131(a)
• pre-AIA 35 U.S.C. 103
• obviousness rejection
• prior invention

To learn more:

• 37 CFR 1.131(a)
• pre-AIA 35 U.S.C. 103