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

This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in Januay 2018

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2136.05    Overcoming a Rejection Under Pre-AIA 35 U.S.C. 102(e) [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.]

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 AN INVENTOR'S OR AT LEAST ONE JOINT INVENTOR'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 (see MPEP § 2136.03 regarding critical reference date of pre-AIA 35 U.S.C. 102(e) prior art) 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 an inventor's or at least one joint inventor's own work. In re Mathews, 408 F.2d 1393, 161 USPQ 276 (CCPA 1969). The filing date can also be antedated by an 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. In re Gosteli, 872 F.2d 1008, 10 USPQ2d 1614 (Fed. Cir. 1989). But a prior application which was not copending with the application at issue cannot be used to antedate a reference. In re Costello, 717 F.2d 1346, 219 USPQ 389 (Fed. Cir. 1983). A terminal disclaimer also does not overcome a pre-AIA 35 U.S.C. 102(e) rejection. See, e.g., In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991).

See MPEP § 706.02(b) for a list of methods which can be used to overcome rejections based on pre-AIA 35 U.S.C. 102(e) rejections. For information on the required contents of a 37 CFR 1.131 affidavit or declaration and the situations in which such affidavits and declarations are permitted. See MPEP § 715. An affidavit or declaration under 37 CFR 1.131 is not appropriate if the reference describes an inventor's or at least one joint inventor's own work. In this case, applicant must submit an affidavit or declaration under 37 CFR 1.132. See the next subsection for more information concerning the requirements of 37 CFR 1.132 affidavits and declarations.

II.    A PRE-AIA 35 U.S.C. 102(e) REJECTION CAN BE OVERCOME BY SHOWING THE REFERENCE IS DESCRIBING AN INVENTOR'S OR AT LEAST ONE JOINT INVENTOR'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." Applied Materials Inc. v. Gemini Research Corp., 835 F.2d 279, 15 USPQ2d 1816 (Fed. Cir. 1988). The issue turns on what the evidence of record shows as to who invented the subject matter. In re Whittle, 454 F.2d 1193, 1195, 172 USPQ 535, 537 (CCPA 1972). In fact, even if an inventor's or at least one joint inventor's work was publicly disclosed prior to the patent application, the inventor's or at least one joint inventor's own work may not be used against the 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). In re DeBaun, 687 F.2d 459, 214 USPQ 933 (CCPA 1982) (citing In re Katz, 687 F.2d 450, 215 USPQ 14 (CCPA 1982)). Therefore, when the unclaimed subject matter of a reference is an inventor's or at least one joint inventor's own invention, a prima facie case based on the patent, U.S. patent application publication, or international application publication, may be overcome by showing that the disclosure is a description of the inventor's or at least one joint inventor's own previous work. Such a showing can be made by proving that the inventor(s) of the U.S. patent, U.S. patent application publication, or the international application publication, was associated with applicant (e.g., same assignee) and learned of the inventor's or at least one joint inventor's invention from the inventor or at least one joint inventor directly or indirectly. In re Mathews, 408 F.2d 1393, 161 USPQ 276 (CCPA 1969). In the situation where one application is first filed naming sole inventor X and then a later application is filed naming joint inventors X & Y, it must be proven that the joint invention was made first, was thereafter described in the sole inventor's patent, or was thereafter described in the sole inventor's U.S. patent application publication or international application publication, and then the joint application was filed. In re Land, 368 F.2d 866, 151 USPQ 621 (CCPA 1966).

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.

See also In re Carreira, 532 F.2d 1356, 189 USPQ 461 (CCPA 1976) (The examiner rejected claims to a joint application to Carreira, Kyrakakis, Solodar, and Labana under pre-AIA 35 U.S.C. 102(e) and 103 in view of a U.S. patent issued to Tulagin and Carreira or a patent issued to Clark. The applicants submitted declarations under 37 CFR 1.132 by Tulagin and Clark in which each declarant stated he was "not the inventor of the use of compounds having a hydroxyl group in a position ortho to an azo linkage." The court held that these statements were vague and inconclusive because the declarants did not disclose the use of this generic compound but rather species of this generic compound in their patents and it was the species which met the claims. The declaration that each did not invent the use of the generic compound does not establish that Tulagin and Clark did not invent the use of the species.)

MPEP § 715.01(a), § 715.01(c), and § 716.10 set forth more information pertaining to the contents and uses of affidavits and declarations under 37 CFR 1.132 for antedating references. See MPEP § 706.02(l)(1) for information pertaining to rejections under pre-AIA 35 U.S.C. 102(e) /103 and the applicability of pre-AIA 35 U.S.C. 103(c).

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 an inventor's or at least one joint inventor's own work, evidence of diligence or reduction to practice does not need to be provided in order to establish that the inventor or at least one joint inventor invented the subject matter disclosed in the reference. A showing that the reference disclosure arose from an inventor's or at least one joint inventor's work coupled with a showing of conception by the inventor or at least one joint inventor 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 under 37 CFR 1.132 by the inventor or at least one joint inventor who invented the subject matter. The other joint inventors, if applicable, need not submit an affidavit disclaiming inventorship, but, if submitted, a disclaimer by all other joint inventors should be considered by the examiner. In re DeBaun, 687 F.2d 459, 214 USPQ 933 (CCPA 1982) (Declaration submitted by DeBaun stated that he was the inventor of subject matter disclosed in the U.S. patent reference of DeBaun and Noll. Exhibits were attached to the declaration showing conception and included drawings DeBaun had prepared and given to counsel for purposes of preparing the application which issued as the reference patent. The court held that, even though the evidence was not sufficient to antedate the prior art patent under 37 CFR 1.131, diligence and/or reduction to practice was not required to show DeBaun invented the subject matter. Declarant’s statement that he conceived the invention first was enough to overcome the pre-AIA 35 U.S.C. 102(e) rejection.).

IV.    CLAIMING OF INDIVIDUAL ELEMENTS OR SUBCOMBINATIONS IN A COMBINATION CLAIM OF THE REFERENCE DOES NOT ITSELF ESTABLISH THAT THE INVENTOR OR AT LEAST ONE JOINT INVENTOR INVENTED THOSE ELEMENTS

The existence of combination claims in a reference is not evidence that the inventor or at least one joint inventor invented the individual elements or subcombinations included if the elements and subcombinations are not separately claimed apart from the combination. In re DeBaun, 687 F.2d 459, 214 USPQ 933 (CCPA 1982) (citing In re Facius, 408 F.2d 1396, 1406, 161 USPQ 294, 301 (CCPA 1969)).

See also In re Mathews, 408 F.2d 1393, 161 USPQ 276 (CCPA 1969) (On September 15, 1961, Dewey filed an application disclosing and claiming a time delay protective device for an electric circuit. In disclosing the invention, Dewey completely described, but did not claim, a "gating means 19" invented by Mathews which was usable in the protective device. Dewey and Mathews were coworkers at General Electric Company, the assignee. Mathews filed his application on March 7, 1963, before the Dewey patent issued but almost 18 months after its filing. The Mathews application disclosed that "one illustration of a circuit embodying the present invention is shown in copending patent application S.N. 138,476-Dewey." The examiner used Dewey to reject all the Mathews claims under pre-AIA 35 U.S.C. 102(e). In response, Mathews submitted an affidavit by Dewey under 37 CFR 1.132. In the affidavit, Dewey stated that he did not invent the gating means 19 but had learned of the gating means through Mathews and that GE attorneys had advised that the gating means be disclosed in Dewey’s application to comply with 35 U.S.C. 112, first paragraph. The examiner argued that the only way to overcome a pre-AIA 35 U.S.C. 102(e) rejection was by submitting an affidavit or declaration under 37 CFR 1.131 to antedate the filing date of the reference. The court reversed the rejection, holding that the totality of the evidence on record showed that Dewey derived his knowledge from Mathews who is "the original, first and sole inventor.").