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Appendix IV: Disqualify Prior Art

This appendix pulls together the following rules; 37 C.F.R. 1.130, 37 C.F.R. 1.131, and 37 C.F.R. 1.132. They provide a mechanism for the submission of evidence to disqualify a disclosure as prior art or otherwise traverse a rejection.

Learn which can be used for pre-AIA and AIA statutes, criteria, and examples.


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Summaries

The Executive Summaries from the main chapter sections have been copied here for your convenience (subsections are not included here). They will help you remember what each main section of the Guidebook (MPEP) covers as you answer the questions from the quizzes above.

706.02(b) Overcoming a 35 U.S.C. 102 Rejection Based on a Printed Publication or Patent

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.

715 Swearing Behind a Reference — Affidavit or Declaration Under 37 CFR 1.131(a)

This section discusses swearing behind a reference with an affidavit or declaration under 37 C.F.R. 1.131(a). Swearing back, (also called an affidavit or declaration under 37 C.F.R. 1.131) may be used to overcome rejections where the prior art used to establish the rejection was not by “another”, but filed by the same inventor.

This section covers situations where 37 C.F.R. 1.131 affidavits or declarations can and cannot be used and the reference date to be overcome.

716 Affidavits or Declarations Traversing Rejections, 37 CFR 1.132

This section discusses 37 C.F.R. 1.132, affidavits or declarations traversing rejections or objections.

717.01 Affidavit or Declaration Under 37 CFR 1.130

This section covers 37 C.F.R. 1.130, affidavit or declaration of attribution or prior public disclosure under the AIA. 37 CFR 1.130 provides a mechanism for filing an affidavit or declaration to establish that a disclosure is not prior art in accordance with 35 U.S.C. 102(b).

This section covers situations where 37 C.F.R. 1.130 affidavits or declarations can and cannot be used. It also covers situations where 37 C.F.R. 1.130(a) affidavits or declarations are not required.

718 Affidavit or Declaration to Disqualify Commonly Owned Patent as Prior Art, 37 CFR 1.131(c)

This section discusses 37 C.F.R. 1.131(c) which is an affidavit or declaration to disqualify a commonly owned patent as prior art. 37 CFR 1.131(c) addresses those situations in which the rejection in an application or patent under reexamination to be overcome is a rejection under 35 U.S.C. 103.

2155 Use of Affidavits or Declarations Under 37 CFR 1.130 To Overcome Prior Art Rejections

This section discusses using affidavits or declarations under 37 C.F.R. 1.130 to overcome prior art rejections. The Office has provided a mechanism in 37 CFR 1.130 for filing an affidavit or declaration to establish that a disclosure is not prior art under AIA 35 U.S.C. 102(a) due to an exception in AIA 35 U.S.C. 102(b).


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