102(g)/103, or, in an application filed on or after November 29, 1999, under pre-AIA 35 U. The test is whether the facts set out in the affidavit are such as would persuade one skilled in the art that the applicant possessed so much of the invention as is shown in the reference.
102(e)/103 using the reference, a showing that the invention was commonly owned, or subject to an obligation of assignment to the same person, at the time the later invention was made would preclude such a rejection or be sufficient to overcome such a rejection. In the case of a small genus such as the halogens, which consists of four species, a reduction to practice of three, or perhaps even two, species might show possession of the generic invention, while in the case of a genus comprising hundreds of species, reduction to practice of a considerably larger number of species would be necessary. It is not necessary for the affidavit evidence to show that the applicant viewed his or her invention as encompassing more than the species he or she actually made. [Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U. [Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.
In re Facius, 408 F.2d 1396, 161 USPQ 294 (CCPA 1969).
Although affidavits or declarations submitted for the purpose of establishing that the reference discloses applicant’s invention are properly filed under 37 CFR 1.132, rather than 37 CFR 1.131(a), such affidavits submitted improperly under 37 CFR 1.131(a) will be considered as though they were filed under 37 CFR 1.132 to traverse a ground of rejection.
It should be kept in mind that it is the rejection that is withdrawn and not the reference. SITUATIONS WHERE 37 CFR 1.131 AFFIDAVITS OR DECLARATIONS CAN BE USEDAffidavits or declarations under 37 CFR 1.131 may be used to overcome rejections in applications subject to pre-AIA 35 U.
Acts occurring prior to the effective dates of NAFTA or URAA may be relied upon to show completion of the invention; however, a date of completion of the invention may not be established under 37 CFR 1.131(a) before December 8, 1993, in a NAFTA country or before January 1, 1996, in a WTO country other than a NAFTA country, in applications subject to pre-AIA 35 U. In addition, patent application publications and certain international application publications having an effective prior art date prior to the application being examined may be used in a rejection of the claims. Such a rejection may be overcome, in certain instances noted below, by filing of an affidavit or declaration under 37 CFR 1.131(a), known as “swearing behind” the reference. 102, and to overcome rejections under pre-AIA 35 U.
See MPEP §§ 706.02(a), 706.02(f)(1), and 2136 - 2136.03. Foreign Patents See MPEP §§ 2126 through 2127 regarding date of availability of foreign patents as prior art. Printed Publications A printed publication, including a published foreign patent application, is effective as of its publication date, not its date of receipt by the publisher. An affidavit or declaration is inappropriate under 37 CFR 1.131(a) when the reference is claiming interfering subject matter as defined in 37 CFR 41.203(a), see MPEP Chapter 2300. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.]. 102 or 103 by proving invention of the claimed subject matter by applicant prior to the effective date of the reference or activity relied upon in the rejection. 102(a) or references which are available as prior art under pre-AIA 35 U. Similarly, where the reference relied upon in a 35 U. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. 102(e) by proving that the subject matter relied upon in the reference or activity was applicant’s own invention. 103 rejection qualifies as prior art only under pre-AIA 35 U. Therefore, the date to be overcome under 37 CFR 1.131(a) is the effective U. The requisite means themselves and their interaction must also be comprehended.
In re Hilmer, 359 F.2d 859, 149 USPQ 480 (CCPA 1966). Conception is more than a vague idea of how to solve a problem.
patent application publication of a pending or patented application that claims the rejected invention.