2136.05 Overcoming a Rejection Under Pre-AIA 35 U.S.C. 102(e)
This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.
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I. A Pre-AIA 35 U.S.C. 102(e) REJECTION CAN BE OVERCOME BY ANTEDATING THE FILING DATE OR SHOWING THAT DISCLOSURE RELIED ON IS APPLICANT'S OWN WORK
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 of the reference by submitting an affidavit or declaration under 37 CFR 1.131 or by submitting an affidavit or declaration under 37 CFR 1.132 establishing that the relevant disclosure is applicant’s own work.
- The filing date can also be antedated by applicant’s earlier foreign priority application or provisional application if 35 U.S.C. 119 is met and the foreign application or provisional application “supports” (conforms to 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, requirements) all the claims of the U.S. application.
- But a prior application which was not copending with the application at issue cannot be used to antedate a reference.
- A terminal disclaimer also does not overcome a pre-AIA 35 U.S.C. 102(e) rejection.
II. A Pre-AIA 35 U.S.C. 102(e) REJECTION CAN BE OVERCOME BY SHOWING THE REFERENCE IS DESCRIBING APPLICANT’S OWN WORK
“The fact that an application has named a different inventive entity than a patent does not necessarily make that patent prior art.”
- The issue turns on what the evidence of record shows as to who invented the subject matter.
- In fact, even if applicant’s work was publicly disclosed prior to his or her application, applicant’s own work may not be used against him or her in an 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).
Therefore, when the unclaimed subject matter of a reference is applicant’s own invention, applicant may overcome a prima facie case based on the patent, U.S. patent application publication, or international application publication, by showing that the disclosure is a description of applicant’s own previous work.
- Such a showing can be made by proving that the patentee, or the inventor(s) of the U.S. patent application publication or the international application publication, was associated with applicant (e.g. worked for the same company) and learned of applicant’s invention from applicant.
In the situation where one application is first filed by inventor X and then a later application is filed by X & Y, it must be proven that the joint invention was made first, was thereafter described in the sole applicant’s patent, or was thereafter described in the sole applicant’s U.S. patent application publication or international application publication, and then the joint application was filed.
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. Neither was there any showing that what they did jointly was done before the filing of the reference patent applications.
III. 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 applicant’s own work, applicant need not prove diligence or reduction to practice to establish that he or she invented the subject matter disclosed in the reference.
- A showing that the reference disclosure arose from applicant’s work coupled with a showing of conception by the applicant 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 by the inventor under 37 CFR 1.132. The other patentees need not submit an affidavit disclaiming inventorship, but, if submitted, a disclaimer by all other patentees should be considered by the examiner.
IV. CLAIMING OF INDIVIDUAL ELEMENTS OR SUBCOMBINATIONS IN A COMBINATION CLAIM OF THE REFERENCE DOES NOT ITSELF ESTABLISH THAT THE PATENTEE INVENTED THOSE ELEMENTS
The existence of combination claims in a reference is not evidence that the patentee invented the individual elements or subcombinations included if the elements and subcombinations are not separately claimed apart from the combination.
2136.05(a) Antedating a Pre-AIA 35 U.S.C. 102(e) Reference
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2136.05(b) Showing The Reference Is Describing An Inventor's Or At Least One Joint Inventor's Own Work
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