MPEP § 2136.05 — Overcoming a Rejection Under Pre-AIA 35 U.S.C. 102(e)

Ninth Edition, Revision 01.2024 · last revised 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 § 211et seq. for detailed information).