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

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-10 10 Rules 5 Related FAQs 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. 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. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Disclosure Must Be Publicly Disclosed by Inventor MPEP 717.01(b) Permitted Public Disclosure by Inventor Not Prior Art MPEP 717.01(b) Prohibited Disclosure by Inventor Within One Year Not Prior Art MPEP 717 Prohibited Disclosure by Inventor Not Prior Art MPEP 717 Prohibited Affidavits or Declarations Required for Pre-AIA Applications MPEP 717.01(b) Requirement for AIA Practice MPEP 717 Affidavits Required for Pre-AIA Applications MPEP 717 Affidavit for Disclosure Not Prior Art MPEP 717 Disclosure Not Prior Art if Same Owner MPEP 717 Prohibited Co-Worker Patents Not Prior Art Under AIA MPEP 717 Other Related FAQs 5 FAQs Collapse Can a 37 CFR 1.130(b) declaration be used for U.S. patents...