What is the significance of ‘same invention’ in MPEP 715.01(a)?

The concept of ‘same invention’ in MPEP 715.01(a) is crucial for understanding when a prior art reference can be disqualified. The MPEP states:

‘If the rejection is based on a U.S. patent or U.S. patent application publication of a different inventive entity which claims the same invention or an obvious variant, and there is at least one common inventor, the U.S. patent or U.S. patent application publication may be removed as prior art under pre-AIA 35 U.S.C. 102(e)…’

This means that for an affidavit or declaration to be effective in removing a reference as prior art, the reference must claim either the exact same invention or an obvious variant of it. The ‘same invention’ requirement ensures that the prior art being disqualified is directly relevant to the claimed invention in the application being examined. If the inventions are substantially different, the affidavit or declaration may not be sufficient to overcome the rejection.

To learn more:

• same invention
• obvious variant
• prior art
• MPEP 715.01(a)
• affidavit

To learn more:

• MPEP 715.01(a)