How does MPEP 715.05 address rejections under pre-AIA 35 U.S.C. 135(b)?
MPEP 715.05 provides guidance on rejections under pre-AIA 35 U.S.C. 135(b) for applications subject to pre-AIA 35 U.S.C. 102. The section states:
“If the reference is a U.S. patent which claims the same invention as the application and its issue date is more than 1 year prior to the presentation of claims to that invention in the application, a rejection of the claims of the application under pre-AIA 35 U.S.C. 135(b)(1) should be made.”
Similarly, for U.S. patent application publications or WIPO publications:
“If the reference is a U.S. patent application publication under 35 U.S.C. 122(b), or a WIPO publication on an international application filed on or after November 29, 2000, which claims the same invention as the application being examined and its publication date is more than 1 year prior to the presentation of claims to that invention in the application being examined, a rejection of the claims of the application (being examined) under pre-AIA 35 U.S.C. 135(b)(2) should be made only if the application being examined was filed after the publication date of the reference.”
The MPEP provides form paragraphs 23.14 and 23.14.01 for making these rejections.
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