2133.02    Rejections Based on Publications and Patents [R-11.2013]

[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions. See MPEP § 2152 et seq. for a detailed discussion of AIA 35 U.S.C. 102(a) and (b).]

I.    APPLICANT’S OWN WORK WHICH WAS AVAILABLE TO THE PUBLIC BEFORE THE GRACE PERIOD MAY BE USED IN A PRE-AIA 35 U.S.C. 102(b) REJECTION

"Any invention described in a printed publication more than one year prior to the date of a patent application is prior art under Section 102(b), even if the printed publication was authored by the patent applicant." De Graffenried v. United States, 16 USPQ2d 1321, 1330 n.7 (Cl. Ct. 1990). "Once an inventor has decided to lift the veil of secrecy from his [or her] work, he [or she] must choose between the protection of a federal patent, or the dedication of his [or her] idea to the public at large." Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 148, 9 USPQ2d 1847, 1851 (1989).

II.    A PRE-AIA 35 U.S.C. 102(b) REJECTION CREATES A STATUTORY BAR TO PATENTABILITY OF THE REJECTED CLAIMS

A rejection under pre-AIA 35 U.S.C. 102(b)  cannot be overcome by affidavits and declarations under 37 CFR 1.131  (Rule 131 Declarations), foreign priority dates, or evidence that applicant himself invented the subject matter. Outside the 1-year grace period, applicant is barred from obtaining a patent containing any anticipated or obvious claims. In re Foster, 343 F.2d 980, 984, 145 USPQ 166, 170 (CCPA 1965).

2133.02(a)    Overcoming a Pre-AIA 35 U.S.C. 102(b) Rejection Based on a Printed Publication or Patent [R-10.2019]

In all applications, an applicant may overcome a pre-AIA 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 pre-AIA 35 U.S.C. 102  prior art depend on the applicable paragraph of pre-AIA 35 U.S.C. 102. See MPEP § 2132.01 for overcoming a rejection under pre-AIA 35 U.S.C. 102(a)  and MPEP § 2136.05 et seq. for overcoming a rejection under pre-AIA 35 U.S.C. 102(e).

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 and perfecting a benefit claim under 35 U.S.C. 120, within the time period set in 37 CFR 1.78  (or by filing a grantable petition to accept an unintentionally delayed claim under 37 CFR 1.78  as explained in MPEP § 211.04):
    • (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). See MPEP § 211 et seq.;

    or

  • (D) Submitting and perfecting 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 § 211.01(a), subsection II. If the prior art qualifies as prior art under pre-AIA 35 U.S.C. 102(a), see MPEP § 2132.01 as to how to overcome the pre-AIA 35 U.S.C. 102(a)  rejection.