2136.05    Overcoming a Rejection Under Pre-AIA 35 U.S.C. 102(e) [R-10.2019]

[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. Information pertaining to overcoming pre-AIA 35 U.S.C. 102(e)  rejections has been moved to MPEP § 2136.05(a) for affidavits or declarations under 37 CFR 1.131  and benefit or priority claims, and to MPEP § 2136.05(b) for affidavits or declarations under 37 CFR 1.132.]

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 § 2133.02(a) for overcoming a rejection under pre-AIA 35 U.S.C. 102(b).

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), 716.10, and 2136.05(b);
  • (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 and 2136.05(b)for more information on 37 CFR 1.131(a)  affidavits;
  • (E) Submitting and perfecting a claim to priority under 35 U.S.C. 119(a)  - (d)  within the time period set in 37 CFR 1.55  and establishing that prior foreign application disclosure satisfies the enablement and written description requirements of 35 U.S.C. 112  for the subject matter claimed in the application under examination (see MPEP § 2136.05(a) for a summary of priority requirements, and MPEP §§ 213-216 for detailed information); and/or
  • (F) Submitting a benefit claim under 35 U.S.C. 119(e)  or 120, within the time periods set in 37 CFR 1.78  and establishing that the prior application satisfies the enablement and written description requirements of 35 U.S.C. 112  for the subject matter claimed in the application under examination (seeMPEP § 2136.05(a) for a summary of benefit requirements, and MPEP § 211 et seq. for detailed information).

2136.05(a)    Antedating a Pre-AIA 35 U.S.C. 102(e) Reference [R-10.2019]

When a prior U.S. patent, U.S. patent application publication, or international application publication is not a statutory bar, a pre-AIA 35 U.S.C. 102(e)  rejection can be overcome by antedating the filing date (see MPEP § 2136.03 regarding critical reference date of pre‑AIA 35 U.S.C. 102(e)  prior art) of the reference by submitting an affidavit or declaration under 37 CFR 1.131. The filing date of a pre‑AIA 35 U.S.C. 102(e)  reference can also be antedated by establishing priority to, or the benefit of, the filing date of an earlier application under 35 U.S.C. 119  or 35 U.S.C. 120.

I.    AFFIDAVIT OR DECLARATION UNDER 37 CFR 1.131

An affidavit or declaration under 37 CFR 1.131(a)  can overcome a prior art rejection under pre‑AIA 35 U.S.C. 102(e)  by proving invention of the claimed subject matter by the inventor or at least one joint inventor prior to the effective date of the reference relied upon in the rejection.

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. Note that a terminal disclaimer does not overcome a pre‑AIA 35 U.S.C. 102(e)  rejection. See, e.g., In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991). If there is no common assignee or inventor and the rejection under pre-AIA 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.

For information on the required contents of a 37 CFR 1.131  affidavit or declaration and the situations in which such affidavits and declarations are permitted, see MPEP § 715 et seq.

An affidavit or declaration under 37 CFR 1.131  is not appropriate if the reference describes an inventor's or at least one joint inventor's own work. In this case, applicant must submit an affidavit or declaration under 37 CFR 1.132. See MPEP § 2136.05(b) for more information concerning the requirements of 37 CFR 1.132  affidavits and declarations.

II.    ESTABLISHING PRIORITY TO, OR THE BENEFIT OF, AN EARLIER FILING DATE

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

  • (A) 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 ); and/or
  • (B) 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.

The filing date of a prior application cannot be used to antedate a reference if the application at issue is not entitled to claim the benefit of the prior application under 35 U.S.C. 119(e), 120, 121, or 365(c). In re Costello, 717 F.2d 1346, 219 USPQ 389 (Fed. Cir. 1983).

2136.05(b)    Showing The Reference Is Describing An Inventor's Or At Least One Joint Inventor's Own Work [R-10.2019]

A rejection based on pre-AIA 35 U.S.C. 102(e)  can be overcome by filing an affidavit or declaration under 37 CFR 1.132  showing that the reference invention is not by "another." "The fact that an application has named a different inventive entity than a patent does not necessarily make that patent prior art." Applied Materials Inc. v. Gemini Research Corp., 835 F.2d 279, 15 USPQ2d 1816 (Fed. Cir. 1988). The issue turns on what the evidence of record shows as to who invented the subject matter. In re Whittle, 454 F.2d 1193, 1195, 172 USPQ 535, 537 (CCPA 1972). In fact, even if an inventor's or at least one joint inventor's work was publicly disclosed prior to the patent application, the inventor's or at least one joint inventor's own work may not be used against the application subject to pre-AIA 35 U.S.C. 102  unless there is a time bar under pre-AIA 35 U.S.C. 102(b). In re DeBaun, 687 F.2d 459, 214 USPQ 933 (CCPA 1982) (citing In re Katz, 687 F.2d 450, 215 USPQ 14 (CCPA 1982)). However, an affidavit or declaration under 37 CFR 1.132  that is only a naked assertion of inventorship and that fails to provide any context, explanation or evidence to support that assertion is insufficient to show that the relied-upon subject matter was the inventor’s own work. See EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc., 859 F.3d 1341, 123 USPQ2d 1146 (Fed. Cir. 2017) (finding that a declaration submitted by inventor Campbell insufficient to establish that he and Guth (now deceased) were inventors of the subject matter disclosed in a patent naming Campbell, Guth, Danziger, and Padron because "[n]othing in the declaration itself, or in addition to the declaration, provides any context, explanation, or evidence to lend credence to the inventor's bare assertion" and more than twenty years had passed since the alleged events occurred. Id. at 1345; 123 USPQ2d at 1149.). Therefore, when the unclaimed subject matter of a reference is an inventor's or at least one joint inventor's own invention, a prima facie case based on the patent, U.S. patent application publication, or international application publication, may be overcome by showing that the disclosure is a description of the inventor's or at least one joint inventor's own previous work. Such a showing can be made by proving that the inventor(s) of the U.S. patent, U.S. patent application publication, or the international application publication, was associated with applicant (e.g., same assignee) and learned of the inventor's or at least one joint inventor's invention from the inventor or at least one joint inventor directly or indirectly. In re Mathews, 408 F.2d 1393, 161 USPQ 276 (CCPA 1969).

In the situation where one application is first filed naming sole inventor X and then a later application is filed naming joint inventors X & Y, it must be proven that the joint invention was made first, was thereafter described in the sole inventor's patent, or was thereafter described in the sole inventor's U.S. patent application publication or international application publication, and then the joint application was filed. In re Land, 368 F.2d 866, 151 USPQ 621 (CCPA 1966).

In In re Land, separate U.S. patents to Rogers and to Land were used to reject a joint application to Rogers and Land under pre-AIA 35 U.S.C. 102(e) /103. The inventors worked for the same company (Polaroid) and in the same laboratory. All the patents flowed from the same research. In addition, the patent applications were prepared by the same attorneys, were interrelated and contained cross-references to each other. The court affirmed the rejection because (1) the inventive entities of the patents (one to Rogers and one to Land) were different from the inventive entity of the joint application (Rogers and Land) and (2) Land and Rogers brought their knowledge of their individual work with them when they made the joint invention. There was no indication that the portions of the references relied on disclosed anything they did jointly. Nor was there a showing that what they did jointly was done before the filing of the reference patent applications.

See also In re Carreira, 532 F.2d 1356, 189 USPQ 461 (CCPA 1976) (The examiner rejected claims to a joint application to Carreira, Kyrakakis, Solodar, and Labana under pre-AIA 35 U.S.C. 102(e)  and 103 in view of a U.S. patent issued to Tulagin and Carreira or a patent issued to Clark. The applicants submitted declarations under 37 CFR 1.132  by Tulagin and Clark in which each declarant stated he was "not the inventor of the use of compounds having a hydroxyl group in a position ortho to an azo linkage." The court held that these statements were vague and inconclusive because the declarants did not disclose the use of this generic compound but rather species of this generic compound in their patents and it was the species which met the claims. The declaration that each did not invent the use of the generic compound does not establish that Tulagin and Clark did not invent the use of the species.)

MPEP § 715.01(a), § 715.01(c), and § 716.10 set forth more information pertaining to the contents and uses of affidavits and declarations under 37 CFR 1.132  for antedating references. See MPEP § 2146for information pertaining to rejections under pre-AIA 35 U.S.C. 102(e) /103  and the applicability of pre-AIA 35 U.S.C. 103(c).

I.    APPLICANT NEED NOT SHOW DILIGENCE OR REDUCTION TO PRACTICE WHEN THE SUBJECT MATTER DISCLOSED IN THE REFERENCE IS APPLICANT’S OWN WORK

When the reference reflects an inventor's or at least one joint inventor's own work, evidence of diligence or reduction to practice does not need to be provided in order to establish that the inventor or at least one joint inventor invented the subject matter disclosed in the reference. A showing that the reference disclosure arose from an inventor's or at least one joint inventor's work coupled with a showing of conception by the inventor or at least one joint inventor before the filing date of the reference will overcome the pre-AIA 35 U.S.C. 102(e)  rejection. The showing can be made by submission of an affidavit under 37 CFR 1.132  by the inventor or at least one joint inventor who invented the subject matter. The other joint inventors, if applicable, need not submit an affidavit disclaiming inventorship, but, if submitted, a disclaimer by all other joint inventors should be considered by the examiner. In re DeBaun, 687 F.2d 459, 214 USPQ 933 (CCPA 1982) (Declaration submitted by DeBaun stated that he was the inventor of subject matter disclosed in the U.S. patent reference of DeBaun and Noll. Exhibits were attached to the declaration showing conception and included drawings DeBaun had prepared and given to counsel for purposes of preparing the application which issued as the reference patent. The court held that, even though the evidence was not sufficient to antedate the prior art patent under 37 CFR 1.131, diligence and/or reduction to practice was not required to show DeBaun invented the subject matter. Declarant’s exhibits and statement that he conceived the invention first was enough to overcome the pre-AIA 35 U.S.C. 102(e)  rejection.).

II.    CLAIMING OF INDIVIDUAL ELEMENTS OR SUBCOMBINATIONS IN A COMBINATION CLAIM OF THE REFERENCE DOES NOT ITSELF ESTABLISH THAT THE INVENTOR OR AT LEAST ONE JOINT INVENTOR INVENTED THOSE ELEMENTS

The existence of combination claims in a reference is not evidence that the inventor or at least one joint inventor invented the individual elements or subcombinations included if the elements and subcombinations are not separately claimed apart from the combination. In re DeBaun, 687 F.2d 459, 214 USPQ 933 (CCPA 1982) (citing In re Facius, 408 F.2d 1396, 1406, 161 USPQ 294, 301 (CCPA 1969)).

See also In re Mathews, 408 F.2d 1393, 161 USPQ 276 (CCPA 1969) (On September 15, 1961, Dewey filed an application disclosing and claiming a time delay protective device for an electric circuit. In disclosing the invention, Dewey completely described, but did not claim, a "gating means 19" invented by Mathews which was usable in the protective device. Dewey and Mathews were coworkers at General Electric Company, the assignee. Mathews filed his application on March 7, 1963, before the Dewey patent issued but almost 18 months after its filing. The Mathews application disclosed that "one illustration of a circuit embodying the present invention is shown in copending patent application S.N. 138,476-Dewey." The examiner used Dewey to reject all the Mathews claims under pre-AIA 35 U.S.C. 102(e). In response, Mathews submitted an affidavit by Dewey under 37 CFR 1.132. In the affidavit, Dewey stated that he did not invent the gating means 19 but had learned of the gating means through Mathews and that GE attorneys had advised that the gating means be disclosed in Dewey’s application to comply with 35 U.S.C. 112, first paragraph. The examiner argued that the only way to overcome a pre-AIA 35 U.S.C. 102(e)  rejection was by submitting an affidavit or declaration under 37 CFR 1.131  to antedate the filing date of the reference. The court reversed the rejection, holding that the totality of the evidence on record showed that Dewey derived his knowledge from Mathews who is "the original, first and sole inventor.").