706.02(b) Overcoming a 35 U.S.C. 102 Rejection Based on a Printed Publication or Patent [R-11.2013]

In all applications, an applicant may overcome a 35 U.S.C. 102 rejection by persuasively arguing that the claims are patentably distinguishable from the prior art, or by amending the claims to patentably distinguish over the prior art. Additional ways available to overcome a rejection based on 35 U.S.C. 102 prior art depend on whether or not any claim in the application being examined is subject to the first inventor to file provisions of the AIA.

See MPEP § 706.02(b)(1) for overcoming a rejection under 35 U.S.C. 102(a)(1) or (a)(2). See MPEP § 706.02(b)(2) for overcoming a prior art rejection under pre-AIA 35 U.S.C. 102.

706.02(b)(1) Overcoming a 35 U.S.C. 102(a)(1) or 102(a)(2) Rejection Based on a Printed Publication or Patent [R-07.2015]

[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159. See MPEP § 706.02(b)(2) for examination of applications subject to pre-AIA 35 U.S.C. 102.]

In addition to persuasively arguing that the claims are patentably distinguishable over the prior art or amending the claims to overcome the prior art rejection, a rejection under 35 U.S.C. 102(a)(1) or 102(a)(2) can be overcome by:

(A) Submitting a benefit claim under 35 U.S.C. 120 within the time period set in 37 CFR 1.78 by providing the required reference to a prior application in a corrected application data sheet under 37 CFR 1.76 and by establishing that the prior application satisfies the enablement and written description requirements of 35 U.S.C. 112(a), or filing a grantable petition to accept an unintentionally delayed benefit claim under 37 CFR 1.78. See MPEP §§ 211 et seq. and 706.02; or
(B) Submitting a benefit claim under 35 U.S.C. 119(e) within the time period set in 37 CFR 1.78 by providing the required reference to a prior provisional application in a corrected application data sheet under 37 CFR 1.76 and by establishing that the prior application satisfies the enablement and written description requirements of 35 U.S.C. 112(a) or filing a grantable petition to accept an unintentionally delayed benefit claim under 37 CFR 1.78. See MPEP §§ 211 et seq. and 706.02; or
(C) Submitting a claim to priority under 35 U.S.C. 119(a) - (d) within the time period set in 37 CFR 1.55 by identifying a prior foreign application in a corrected application data sheet under 37 CFR 1.76 and by establishing that the prior foreign application satisfies the enablement and written description requirements of 35 U.S.C. 112(a) or filing a grantable petition to accept a delayed priority claim under 37 CFR 1.55. See MPEP §§ 213 - 216. The foreign priority filing date must antedate the reference and be perfected. The filing date of the priority document is not perfected unless applicant has filed a certified priority document in the application (and an English language translation, if the document is not in English) (see 37 CFR 1.55(g) ); or
(D) Filing an affidavit or declaration under 37 CFR 1.130 to establish that an applied reference or disclosure that was not made more than one year before the effective filing date of the claimed invention is not prior art under 35 U.S.C. 102(a) due to an exception listed in 35 U.S.C. 102(b). Under 37 CFR 1.130(a), an affidavit or declaration of attribution may be submitted to disqualify a disclosure as prior art because it was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor. Under 37 CFR 1.130(b), an affidavit or declaration of prior public disclosure may be submitted to disqualify an intervening disclosure as prior art if the subject matter disclosed had been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or joint inventor (1) before the date the intervening disclosure was made on which the rejection is based, or (2) before the date the subject matter in the U.S. patent, U.S. patent application publication, or WIPO published application on which the rejection is based was effectively filed. See MPEP §§ 717 and 2155; or
(E) Establishing common ownership or establishing evidence of a Joint Research Agreement to overcome a 35 U.S.C. 102(a)(2) rejection or a 35 U.S.C. 103 rejection based on prior art under 35 U.S.C. 102(a)(2) by establishing entitlement to the 35 U.S.C. 102(b)(2)(C) exception. See MPEP §§ 717.02 and 2154.02(c).

706.02(b)(2) Overcoming a Pre-AIA 35 U.S.C. 102(a), (b), or (e) Rejection Based on a Printed Publication or Patent [R-07.2015]

[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159. See MPEP § 706.02(b)(1) for examination of applications subject to 35 U.S.C. 102.]

A rejection based on pre-AIA 35 U.S.C. 102(b) can be overcome by:

(A) Persuasively arguing that the claims are patentably distinguishable from the prior art;
(B) Amending the claims to patentably distinguish over the prior art;
(C) Submitting a benefit claim under 35 U.S.C. 120, within the time period set in 37 CFR 1.78:
- (1)
  - (a) for applications filed on or after September 16, 2012, by filing a corrected application data sheet under 37 CFR 1.76 which contains a specific reference to a prior application in accordance with 37 CFR 1.78, or
  - (b) for applications filed prior to September 16, 2012, by amending the specification of the application to contain a specific reference to a prior application or by filing a corrected application data sheet under 37 CFR 1.76 which contains a specific reference to a prior application in accordance with 37 CFR 1.78,
  and
- (2) by establishing that the prior application satisfies the enablement and written description requirements of 35 U.S.C. 112(a) (for applications filed on or after September 16, 2012), or 35 U.S.C. 112, first paragraph (for applications filed prior to September 16, 2012) or filing a grantable petition to accept an unintentionally delayed claim under 37 CFR 1.78. See MPEP §§ 211 et seq. and 706.02;
or
(D) Submitting a benefit claim under 35 U.S.C. 119(e) by complying with the requirements of 37 CFR 1.78 or filing a grantable petition to accept an unintentionally delayed claim under 37 CFR 1.78 (see item (C) above). Because a provisional application could not have been filed more than one year prior to the filing of a nonprovisional application that claims benefit to the provisional application, once the benefit claim under 35 U.S.C. 119(e) ) is perfected, the rejection must be reconsidered to determine whether the prior art still qualifies as prior art under pre-AIA 35 U.S.C. 102(b) or whether the prior art qualifies as prior art under pre-AIA 35 U.S.C. 102(a). Note, however, effective December 18, 2013, title II of the Patent Law Treaties Implementation Act (PLTIA) provides for restoration of the right to claim benefit of a provisional application filed after the expiration of the twelve-month period in 35 U.S.C. 119(e). See MPEP § 213.03, subsection III. If the prior art qualifies as prior art under pre-AIA 35 U.S.C. 102(a), see below as to how to overcome the pre-AIA 35 U.S.C. 102(a) rejection.

A rejection based on pre-AIA 35 U.S.C. 102(e) can be overcome by:

(A) Persuasively arguing that the claims are patentably distinguishable from the prior art;
(B) Amending the claims to patentably distinguish over the prior art;
(C) Filing an affidavit or declaration under 37 CFR 1.132 showing that the reference invention is not by "another." See MPEP §§ 715.01(a), 715.01(c), and 716.10;
(D) Filing an affidavit or declaration under 37 CFR 1.131(a) showing prior invention, if the reference is not a U.S. patent or a U.S. patent application publication claiming interfering subject matter as defined in 37 CFR 41.203(a) (subject matter of a claim of one party would, if prior art, have anticipated or rendered obvious the subject matter of a claim of the opposing party and vice versa). See MPEP § 715 for more information on 37 CFR 1.131(a) affidavits. When the claims of the reference U.S. patent or U.S. patent application publication and the application are directed to the same invention or are obvious variants, an affidavit or declaration under 37 CFR 1.131(a) is not an acceptable method of overcoming the rejection. Under these circumstances, the examiner must determine whether a double patenting rejection or interference is appropriate. If there is a common assignee or inventor between the application and patent, a double patenting rejection must be made. See MPEP § 804. If there is no common assignee or inventor and the rejection under 35 U.S.C. 102(e) is the only possible rejection, the examiner must determine whether an interference should be declared. See MPEP Chapter 2300 for more information regarding interferences;
(E) Submitting a claim to priority under 35 U.S.C. 119(a) - (d) within the time period set in 37 CFR 1.55:
- (1)
  - (a) for applications filed on or after September 16, 2012, by filing a corrected application data sheet under 37 CFR 1.76 which identifies a prior foreign application in accordance with 37 CFR 1.55, or
  - (b) for applications filed prior to September 16, 2012, by filing a corrected application data sheet under 37 CFR 1.76 which identifies a prior foreign application in accordance with 37 CFR 1.55 or by identifying the prior foreign application in the oath or declaration under pre-AIA 37 CFR 1.63,
  and
- (2) by establishing that the prior foreign application satisfies the enablement and written description requirements of 35 U.S.C. 112(a) (for applications filed on or after September 16, 2012), or 35 U.S.C. 112, first paragraph (for applications filed prior to September 16, 2012); or filing a grantable petition to accept an unintentionally delayed priority claim under 37 CFR 1.55. See MPEP §§ 213 - 216. The foreign priority filing date must antedate the reference and be perfected. The filing date of the priority document is not perfected unless applicant has filed a certified priority document in the application (and an English language translation, if the document is not in English) (see 37 CFR 1.55 ).
(F) Submitting a benefit claim under 35 U.S.C. 119(e) or 120, within the time periods set in 37 CFR 1.78:
- (1)
  - (a) for applications filed on or after September 16, 2012, filing an application data sheet under 37 CFR 1.76 which contains a specific reference to a prior application in accordance with 37 CFR 1.78, or
  - (b) for applications filed prior to September 16, 2012, amending the specification of the application to contain a specific reference to a prior application or by filing an application data sheet under 37 CFR 1.76 which contains a specific reference to a prior application in accordance with 37 CFR 1.78,
  and
- (2) establishing that the prior application satisfies the enablement and written description requirements of 35 U.S.C. 112(a) (for applications filed on or after September 16, 2012), or 35 U.S.C. 112, first paragraph (for applications filed prior to September 16, 2012) or filing a grantable petition to accept an unintentionally delayed claim under 37 CFR 1.78.

A rejection based on pre-AIA 35 U.S.C. 102(a) can be overcome by:

(A) Persuasively arguing that the claims are patentably distinguishable from the prior art;
(B) Amending the claims to patentably distinguish over the prior art;
(C) Filing an affidavit or declaration under 37 CFR 1.131(a) showing prior invention, if the reference is not a U.S. patent or a U.S. patent application publication claiming interfering subject matter as defined in 37 CFR 41.203(a) (subject matter of a claim of one party would, if prior art, have anticipated or rendered obvious the subject matter of a claim of the opposing party and vice versa). See MPEP § 715 for information on the requirements of 37 CFR 1.131(a) affidavits. When the claims of the reference U.S. patent or U.S. patent application publication and the application are directed to the same invention or are obvious variants, an affidavit or declaration under 37 CFR 1.131(a) is not appropriate to overcome the rejection.
(D) Filing an affidavit or declaration under 37 CFR 1.132 showing that the reference invention is not by "another." See MPEP §§ 715.01(a), 715.01(c), and 716.10;
(E) Submitting a claim to priority under 35 U.S.C. 119(a) - (d) as explained in reference to pre-AIA 35 U.S.C. 102(e) above;
(F) Submitting a benefit claim under pre-AIA 35 U.S.C. 119(e) or 120 as explained in reference to pre-AIA 35 U.S.C. 102(e).