2132.01 Publications as Pre-AIA 35 U.S.C. 102(a) Prior Art [R-08.2017]
[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. See MPEP § 2152 et seq. for a detailed discussion of AIA 35 U.S.C. 102(a) and (b).
"Derivation" or "derived" as used in the discussion below is in the context of pre-AIA law. "Derivation proceedings" as created in the AIA are discussed in MPEP § 2310 et seq.]
I. Pre-AIA 35 U.S.C. 102(a) PRIMA FACIE CASE IS ESTABLISHED IF REFERENCE PUBLICATION IS "BY OTHERS"
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 inventor's or at least one joint inventor's work. In re Katz, 687 F.2d 450, 215 USPQ 14 (CCPA 1982). See MPEP § 2128 for case law on what constitutes a "printed publication." Note that when the reference is a U.S. patent, U.S. patent application publication, or certain international application publication published within the year prior to the application filing date, a pre-AIA 35 U.S.C. 102(e) rejection should be made. See MPEP § 2136 - § 2136.05 for case law dealing with pre-AIA 35 U.S.C. 102(e).
II. APPLICANT CAN REBUT PRIMA FACIE CASE BY SHOWING REFERENCE’S DISCLOSURE WAS DERIVED FROM INVENTOR'S OR AT LEAST ONE JOINT INVENTOR'S OWN WORK
An inventor's or at least one joint inventor's disclosure of his or her own work within the year before the application filing date cannot be used against the application as prior art under pre-AIA 35 U.S.C. 102(a). In re Katz, 687 F.2d 450, 215 USPQ 14 (CCPA 1982) (discussed below). Therefore, where the inventor or at least one joint inventor is one of the co-authors of a publication cited against the 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, the inventor or at least one joint inventor. Such affidavits are called disclaiming affidavits. Ex parte Hirschler, 110 USPQ 384 (Bd. App. 1952). The rejection can also be overcome by submission of a specific declaration by the inventor or at least one joint inventor establishing that the article is describing the inventor's own work. In re Katz, 687 F.2d 450, 215 USPQ 14 (CCPA 1982). However, if there is evidence that the co-author has refused to disclaim inventorship and believes himself or herself to be an inventor, the inventor's affidavit or declaration will not be enough to establish that the inventor or the at least one joint inventor is the sole inventor of the subject matter in the article and the rejection will stand. Ex parte Kroger, 219 USPQ 370 (Bd. App. 1982) (discussed below). It is also possible to overcome the rejection by adding the coauthors as joint inventors to the application if the requirements of 35 U.S.C. 116, third paragraph, are met. In re Searles, 422 F.2d 431, 164 USPQ 623 (CCPA 1970).
In In re Katz, 687 F.2d 450, 215 USPQ 14 (CCPA 1982), Katz stated in a declaration that the coauthors of the publication, Chiorazzi and Eshhar, "were students working under the direction and supervision of the inventor, Dr. David H. Katz." The court held that this declaration, in combination with the fact that the publication was a research paper, was enough to establish Katz as the sole inventor and that the work described in the publication was his own. In research papers, students involved only with assay and testing are normally listed as coauthors but are not considered co-inventors.
In Ex parte Kroger, 219 USPQ 370 (Bd. App. 1982), Kroger, Knaster and others were listed as authors on an article on photovoltaic power generation. The article was used to reject the claims of an application listing Kroger and Rod as inventors. Kroger and Rod submitted affidavits declaring themselves to be the inventors. The affidavits also stated that Knaster merely carried out assignments and worked under the supervision and direction of Kroger. The Board stated that if this were the only evidence in the case, it would be established, under In re Katz, that Kroger and Rod were the only inventors. However, in this case, there was evidence that Knaster had refused to sign an affidavit disclaiming inventorship and Knaster had introduced evidence into the case in the form of a letter to the PTO in which he alleged that he was a co-inventor. The Board held that the evidence had not been fully developed enough to overcome the rejection. Note that the rejection had been made under pre-AIA 35 U.S.C. 102(f) but the Board treated the issue the same as if it had arisen under pre-AIA 35 U.S.C. 102(a). See also case law dealing with overcoming pre-AIA 35 U.S.C. 102(e) rejections as presented in MPEP § 2136.05. Many of the issues are the same.
III. 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. In re Foster, 343 F.2d 980, 145 USPQ 166 (CCPA 1965). If the reference is disclosing an inventor's or at least one joint inventor's own work as derived from the inventor or joint inventor, 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 the inventor or joint inventor and invention by the inventor or joint inventor may be submitted. In re Facius, 408 F.2d 1396, 161 USPQ 294 (CCPA 1969). See MPEP § 715 for more information on when an affidavit under 37 CFR 1.131 can be used to overcome a reference and what evidence is required.