What happens if an applicant submits a statement to invoke the AIA 35 U.S.C. 102(b)(2)(C) exception?

When an applicant submits a statement to invoke the AIA 35 U.S.C. 102(b)(2)(C) exception, the examiner must carefully consider the statement and its implications. The MPEP provides specific guidance:

‘If the applicant disqualifies the subject matter relied upon by the examiner in accordance with AIA 35 U.S.C. 102(b)(2)(C) and the procedures in MPEP § 717.02(b), the examiner should treat the application as if the disqualified prior art was not in the application.’

This means that if the statement is properly made and meets all requirements:

• The examiner must disregard the disqualified prior art for the purposes of AIA 35 U.S.C. 102(a)(2) rejections
• The examination will proceed as if that prior art did not exist in the context of novelty and non-obviousness determinations
• The examiner may need to reconsider any previously made rejections based on the now-disqualified prior art

It’s important to note that the exception only applies to AIA 35 U.S.C. 102(a)(2) prior art and does not affect other bases for rejection.

To learn more:

• AIA
• prior art exception
• 102(b)(2)(C)
• patent examination
• applicant statement