You are here:  Ed9 10.2019 Guidebook  » Appendix II: 35 U.S.C. 102

2132    Pre-AIA 35 U.S.C. 102(a)

 This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.

MPEP SECTION SUMMARY This section covers pre-AIA 35 U.S.C. 102(a) in detail. It explains that 'known or used' means publicly known or used, that 'in this country' only applies to knowledge or use in the U.S., and that 'by others' means any combination of authors or inventors different than the inventive entity.

  Section Frequency Chart

 

I.   “KNOWN OR USED”

A.   “Known or Used” Means Publicly Known or Used

“The statutory language ‘known or used by others in this country’ [pre-AIA 35 U.S.C. 102(a)], means knowledge or use which is accessible to the public.”

• The knowledge or use is accessible to the public if there has been no deliberate attempt to keep it secret.

B.   Another’s Sale of a Product Made by a Secret Process Can Be a Pre-AIA 35 U.S.C. 102(a) Public Use if the Process Can Be Determined by Examining the Product

“The nonsecret use of a claimed process in the usual course of producing articles for commercial purposes is a public use.”

• But a secret use of the process coupled with the sale of the product does not result in a public use of the process unless the public could learn the claimed process by examining the product.
• Therefore, secret use of a process by another, even if the product is commercially sold, cannot result in a rejection under pre-AIA 35 U.S.C. 102(a) if an examination of the product would not reveal the process.

II.   “IN THIS COUNTRY”

Only Knowledge or Use in the U.S. Can Be Used in a Pre-AIA 35 U.S.C. 102(a) Rejection

The knowledge or use relied on in a pre-AIA 35 U.S.C. 102(a) rejection must be knowledge or use “in this country.”

• Prior knowledge or use which is not present in the United States, even if widespread in a foreign country, cannot be the basis of a rejection under pre-AIA 35 U.S.C. 102(a).

III.   “BY OTHERS”

“Others” Means Any Combination of Authors or Inventors Different From the Inventive Entity

The term “others” in pre-AIA 35 U.S.C. 102(a) refers to any entity which is different from the inventive entity.

• The entity need only differ by one person to be “by others.”
• This holds true for all types of references eligible as prior art under pre-AIA 35 U.S.C. 102(a) including publications as well as public knowledge and use.
• Any other interpretation of pre-AIA 35 U.S.C. 102(a) “would negate the one year [grace] period afforded under § 102(b).”

 This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.

MPEP SECTION SUMMARY This section covers publications as pre-AIA 35 U.S.C. 102(a) prior art. Included is a brief discussion on how a pre-AIA 35 U.S.C. 102(a) prima facie case is established if the reference publication is 'by others'. However, the applicant can rebut the prima facie case by showing that the reference's disclosure was derived from the applicant's own work. Lastly, a 37 C.F.R. 1.131 affidavit can be used to overcome a pre-AIA 35 U.S.C. 102(a) rejection.

  Section Frequency Chart

I.   SHOWING REFERENCE’S DISCLOSURE WAS DERIVED FROM INVENTOR'S OR AT LEAST ONE JOINT INVENTOR'S OWN WORK

A prima facie case is made out under pre-AIA 35 U.S.C. 102(a) if, within 1 year of the filing date, the invention, or an obvious variant thereof, is described in a “printed publication” whose authorship differs in any way from the inventive entity unless it is stated within the publication itself that the publication is describing the applicant’s work.

• Note that when the reference is a U.S. patent published within the year prior to the application filing date, a pre-AIA 35 U.S.C. 102(e) rejection should be made.

Applicant’s disclosure of his or her own work within the year before the application filing date cannot be used against him or her under pre-AIA 35 U.S.C. 102(a).

• Therefore, where the applicant is one of the co-authors of a publication cited against his or her application, the publication may be removed as a reference by the filing of affidavits made out by the other authors establishing that the relevant portions of the publication originated with, or were obtained from, applicant.
  • Such affidavits are called disclaiming affidavits.

The rejection can also be overcome by submission of a specific declaration by the applicant establishing that the article is describing applicant’s own work.

• However, if there is evidence that the co-author has refused to disclaim inventorship and believes himself or herself to be an inventor, applicant’s affidavit will not be enough to establish that applicant is the sole inventor and the rejection will stand.
• It is also possible to overcome the rejection by adding the coauthors as inventors to the application if the requirements are met.

II.   A 37 CFR 1.131 AFFIDAVIT CAN BE USED TO OVERCOME A Pre-AIA 35 U.S.C. 102(a) REJECTION

When the reference is not a statutory bar under pre-AIA 35 U.S.C. 102(b), (c), or (d), applicant can overcome the rejection by swearing back of the reference through the submission of an affidavit under 37 CFR 1.131.

If the reference is disclosing applicant’s own work as derived from him or her, applicant may submit either a 37 CFR 1.131 affidavit to antedate the reference or a 37 CFR 1.132 affidavit to show derivation of the reference subject matter from applicant and invention by applicant.

 

» 2133 Pre-AIA 35 U.S.C. 102(b)