How does an examiner evaluate the scope of the subject matter disclosed in a declaration under 37 CFR 1.130(b)?

How does an examiner evaluate the scope of the subject matter disclosed in a declaration under 37 CFR 1.130(b)?

When evaluating a declaration under 37 CFR 1.130(b), the examiner must carefully consider the scope of the subject matter disclosed. According to MPEP 717.01(b)(1):

“The examiner will determine whether the subject matter disclosed in the disclosure of the reference is commensurate in scope with the subject matter publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.”

This evaluation involves:

• Comparing the scope of the subject matter in the reference to the scope of the public disclosure
• Ensuring that the public disclosure covers all the features of the subject matter used in the rejection
• Determining if the disclosure in the reference goes beyond what was publicly disclosed

If the subject matter in the reference exceeds the scope of the public disclosure, the declaration may be insufficient to overcome the rejection.

To learn more:

• 37 CFR 1.130(b)
• declaration evaluation
• subject matter scope
• examiner analysis
• public disclosure

To learn more:

• 37 CFR 1.130(b)