What should be included in a 37 CFR 1.132 declaration when the reference is a U.S. patent or patent application publication?

When the reference used in a rejection is a U.S. patent or patent application publication, a 37 CFR 1.132 declaration should include specific information to effectively overcome the rejection. MPEP 715.01(a) states:

Where the reference is a U.S. patent or patent application publication which includes a claim reciting the subject matter relied upon in a rejection and that subject matter anticipates or would render obvious the subject matter of a claim in the application under examination, a declaration under 37 CFR 1.132 must also explain the presence of the additional inventor in the reference (e.g., the disclosure in claim 1 of the reference is relied upon to reject the claims; the affidavit or declaration explains that S is the sole inventor of claim 1, and the additional inventor and S are joint inventors of claim 2 of the reference).

In summary, the declaration should:

• Identify the specific subject matter in the reference that is being relied upon for the rejection
• Explain the inventorship of that specific subject matter
• Clarify the relationship between the inventors named in the reference and the inventor(s) of the application under examination
• Provide context and evidence to support the assertions made in the declaration

To learn more:

• 37 CFR 1.132
• declarations
• inventorship
• U.S. patents
• patent application publications

To learn more:

• 37 CFR 1.132
• U.S. patents