How to Overcome Rejections Under 35 U.S.C. §102 · How to Overcome Rejections Under 35 U.S.C....

How to Overcome Rejections Under 35 U.S.C.

§102

July 12, 2016

Terri Shieh-Newton, Member

IP Summer Academy 2016


Boston, Massachusetts

July 11 – 22, 2016

How to Overcome Rejections Under 35 U.S.C. §102

© 2016 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.

The Leahy–Smith America Invents Act (AIA)

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•A United States federal statute that was passed by Congress and was signed into law by

President Barack Obama on September 16, 2011.

• The law represents the most significant change to the U.S. patent system since 1952 and

switches the U.S. patent system from a "first to invent" to a "first inventor to file" system,

eliminates interference proceedings, and develops post-grant opposition.

• Its central provisions went into effect on March 16, 2013.

• Therefore, depending on when they were filed, some applications will remain under the prior

regime while others will fall under the new AIA provisions.



July 11 – 22, 2016



How to determine if your application is subject to the AIA First Inventor to

File (FITF) provisions:

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• The First Inventor to File (FITF) provisions of the AIA,

• DO NOT apply to applications filed before March 16, 2013 (these applications are

always pre-AIA (First to Invent or FTI) applications); and

• Apply to certain applications filed on or after March 16, 2013.

Note: The U.S. filing date for 35 U.S.C. 371 national stage entries is the international filing date,

not the 371(c) date.



July 11 – 22, 2016



How to determine if your application is subject to the AIA First Inventor to

File (FITF) provisions (cont.):

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An application, filed on or after March 16, 2013, is an AIA (FITF) application if:

• the application contains or ever contained a claim to an invention that has an

effective filing date that is on or after March 16, 2013 (even if all such claims have now

been cancelled – once in the application, such claims "infect" the application

permanently);

– OR

• the application is ever a CON, CIP, or DIV of an earlier application that contained at

any time a claim having an effective filing date that is on or after March 16, 2013

(even if the domestic benefit claim is later deleted).



July 11 – 22, 2016



35 USC § 102 - Lack of Novelty

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REJECTIONS FOR LACK OF NOVELTY OR ANTICIPATION ARE BASED ON 35 U.S.C. § 102.

• The claimed invention must have been publicly known and publicly available before the

invention thereof by the Applicant.

• To be anticipating, each and every element of a claim, as those elements are arranged in the

claim, must be explicitly or inherently described in a single prior art reference.

WE WILL DISCUSS REJECTIONS UNDER "PRE-AIA" 35 USC §§ 102(a), 102(b), AND 102(e).

WE WILL DISCUSS REJECTIONS UNDER "POST-AIA" 35 USC §§ 102(a)(1) and 102(a)(2).

•We will not be discussing sections from "PRE-AIA " 35 USC §§:

– 102(c) – Abandonment of the invention;

– 102(d) – Patented in a foreign country more than 12 months before filing in the US;

– 102(f) – False Inventorship

– 102(g) – Interference proceedings.



July 11 – 22, 2016



"Pre-AIA" 35 U.S.C. 102(a),(b), and (e) vs. "Post-AIA" 35 U.S.C. 102(a)(1) and (2):

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• A person shall be entitled to a patent unless —

(a) the invention was known or used by others in this country, or patented or described in a printed

publication in this or a foreign country, before the invention thereof by the applicant for patent, or

(b) the invention was patented or described in a printed publication in this or a foreign country or in

public use or on sale in this country, more than one year prior to the date of the application for patent in the United

States, or…

(e) the invention was described in — (1) an application for patent, published under section 122(b), by

another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an

application for patent by another filed in the United States before the invention by the applicant for patent, except

that an international application filed under the treaty defined in section 351(a) shall have the effects for the

purposes of this subsection of an application filed in the United States only if the international application designated

the United States and was published under Article 21(2) of such treaty in the English language; or ….

• (a)Novelty; Prior Art.—A person shall be entitled to a patent unless—

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or

otherwise available to the public before the effective filing date of the claimed invention; or

(2) the claimed invention was described in a patent issued under section 151, or in an application for

patent published or deemed published under section 122(b), in which the patent or application, as the case may

be, names another inventor and was effectively filed before the effective filing date of the claimed invention.



July 11 – 22, 2016



"Pre-AIA" 35 U.S.C. §102(a)

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•A person shall be entitled to a patent unless—

a) the invention was known or used by others in this country, or

b) patented or described in a printed publication in this or a foreign country,

c) before the invention thereof by the applicant for patent,

or …



July 11 – 22, 2016



"Pre-AIA" 35 U.S.C. §102(a)

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With regard to a) the invention being known or used by others in this country;

• Section 102(a) applies only to the work of others, NOT the applicant’s own work. In re Katz, 687

F.2d 450, 215 USPQ 14 (CCPA 1982).

– If all inventors are the same, then no rejection under §102(a) is available.

– A common assignee is insufficient to overcome a rejection under 102(a) if there is different inventorship.

• Section 102(a) requires public knowledge or use, and pertains only to activities occurring in the

United States.

– Activities in NAFTA and WTO member countries are not included.



July 11 – 22, 2016



"Pre-AIA" 35 U.S.C. §102(a)

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With regard to b) the invention being patented or described in a printed publication in this or a

foreign country,

• The patents and publications can include printed publications, scientific articles, etc. published

anywhere in the world – to include publications available on the Internet

•However, the publications must be sufficiently publicly available/accessible.



July 11 – 22, 2016



"Pre-AIA" 35 U.S.C. §102(a)

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With regard to c) the activities must have occurred before the invention thereof by the

applicant for patent,

•Prior invention can only be established in the US, or in NAFTA or WTO countries.



July 11 – 22, 2016



Overcoming "Pre-AIA" 35 U.S.C. §102(a) Rejections

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HOW DO YOU OVERCOME A 102(a) Rejection?

• Establish prior invention;

• Show that prior invention was not “by another;”

•Persuasively argue that claims are patentably distinguishable;

• Show that cited reference is not enabled; or

•Amend the claims to distinguish over the prior art.



July 11 – 22, 2016




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HOW DO YOU ESTABLISH PRIOR INVENTION? – 1. ) Establish Priority 119/120

• Section 119(a) – An Applicant’s previously filed foreign application is treated as if filed in the US

on the filing date of the foreign application – the foreign filing date can be used to overcome

a reference.

• Section 119(e)/120 - The filing date of an earlier filed U.S. provisional or nonprovisional

application is the effective filing date.

•However, for a CIP, only those claims that are fully supported by the earlier parent application

enjoy the filing date of that earlier parent application.

•Under Section 102(e), the effective filing date of an application is the filing date of the U.S.

application, which includes the filing date of a PCT application designating the U.S. and which

is published in the English language.

• Finally, Applicant’s PCT application, which includes a priority claim to a foreign application, will

be treated as if filed in the US as of the date of the foreign application.



July 11 – 22, 2016




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HOW DO YOU ESTABLISH PRIOR INVENTION – 1.) Establish Priority

•HOW DO YOU PERFECT PRIORITY?

– FILE CERTIFIED COPY OF FOREIGN PRIORITY DOCUMENTS; OR

– ENSURE COPY FORWARDED TO USPTO AS DESIGNATED/ELECTED OFFICE BY INTERNATIONAL BUREAU (PCT)

– SUBMIT TRANSLATIONS!



July 11 – 22, 2016




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ESTABLISHING PRIOR INVENTION – 2.) “Swearing behind”

•37 CFR § 1.131 provides for filing a declaration “to establish invention of the subject matter of

the rejected claim prior to the effective date of the reference or activity on which the

rejection is based.”



July 11 – 22, 2016




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ESTABLISHING PRIOR INVENTION - 2.) “Swearing behind”

• Who may file declarations under 37 C.F.R. § 1.131?

– Inventor

– Owner of a patent under re-examination

– Party qualified under 37 C.F.R. §§ 1.42 (dead inventor), 1.43 (insane or legally incapacitated inventor), or

1.47 (uncooperative inventor).

– The assignee or other party in interest when it is not possible to produce the affidavit or declaration of the

inventor. Ex parte Foster, 1903 C.D. 213, 105 O.G. 261 (Comm'r Pat. 1903).



July 11 – 22, 2016




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•What is needed to/How do you Swear Behind?

– Show actual reduction to practice prior to the effective date of the reference; or

– Show conception of the invention prior to the effective date of the reference AND due diligence up to the

reduction to practice (constructive or otherwise).

– Drawings, records or other evidence must accompany and form part of the affidavit or, if missing, must

explain why such evidence is missing – Lab books, journals, sketches, invention disclosure forms, records of

experiments, etc.



July 11 – 22, 2016




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•Where can prior inventive activities be established to Swear Behind?

– “Prior invention may not be established under this section in any country other than the United States, a

NAFTA country, or a WTO member country.”

– Cannot establish prior invention if rejection is based on a U.S. patent or published application that claim the

same patentable invention.

• Must invoke an INTERFERENCE.



July 11 – 22, 2016




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HOW DO YOU SHOW AN INVENTION IS “NOT BY ANOTHER”

•Add/remove inventors - if possible;

• Submit Declaration under 37 CFR § 1.132



July 11 – 22, 2016




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HOW DO YOU SHOW AN INVENTION IS “NOT BY ANOTHER”

•37 CFR § 1.132 provides for filing a declaration traversing the rejections or objections for a

reason “not otherwise provided for”.

– Allows Applicants to remove cited art by filing a declaration stating that relevant portions of the cited art

describes the inventor own work.

– In sum, it is a declaration of the inventor that the cited reference is merely describing the inventor’s own

work.

– Can include assertions that the inventors of a cited reference learned of, or derived, the invention from the

Applicant.

– The declaration does not need to establish reduction to practice – conception is sufficient.

– Finally, an affidavit from all of the inventors is not required.

– 1.132 declarations are typically used to show that the invention was “not by another” in the context of

scientific publications, technical journals, Joint Research Agreements, etc. where a number of authors may

be identified on a reference publication.



July 11 – 22, 2016



"Post-AIA" 35 U.S.C. §102(a)(1):

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NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless— (1)

• (a) the claimed invention was patented, described in a printed publication, or

• (b) in public use,

• (c) on sale, or

• (d) otherwise available to the public

• (e) before the effective filing date of the claimed invention; or



July 11 – 22, 2016



"Post-AIA" 35 U.S.C. §102(a)(1):

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With regard to a) the invention being patented, described in a printed publication…

• Like "pre-AIA" 102(a)the patents and publications can include printed publications, scientific

articles, etc. published anywhere in the world – to include publications available on the

Internet

•However, the publications must be sufficiently publicly available/accessible.



July 11 – 22, 2016



"Post-AIA" 35 U.S.C. §102(a)(1):

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With regard to b), c), and d), public use, on sale, and otherwise available to the

public is NOT restricted to events taking place in the United States – difference from

"Pre-AIA" 102(a).

– "Post-AIA" Section 102(a)(1) can also apply to the applicant’s own work.

– Like "Pre-AIA" Section 102(a), "Post-AIA" 102(a)(1) requires public knowledge or use.

– However, unlike "Pre-AIA" Section 102(a), "Post-AIA" 102(a)(1) does NOT pertain only to

activities occurring in the United States.

– Like "Pre-AIA" Section 102(a), "Post-AIA" 102(a)(1) requires the activities must have occurred

before the invention thereof by the applicant for patent.

– "Otherwise available to the public" is a new catch-all provision that has no counterpart in

pre-AIA law. Can include, an oral presentation at a scientific meeting, demonstration at a

trade show, a lecture, a statement made on the radio, a YouTube video, web site, or other

online material.



July 11 – 22, 2016



"Post-AIA" 35 U.S.C. §102(a)(1) v. "Pre-AIA" 35 U.S.C. §102(a) Public Use and

On Sale (slide provided by USPTO training materials):

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July 11 – 22, 2016



"Post-AIA" 35 U.S.C. §102(a)(1):

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Like "Pre-AIA" 102(a), with regard to e), the activities must have occurred before the invention

thereof by the applicant for patent.



July 11 – 22, 2016



Overcoming "Post-AIA" 35 U.S.C. §102(a)(1) Rejections

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HOW DO YOU OVERCOME A 102(a)(1) Rejection?

• Establish prior invention; (37 C.F.R. § 1.131 declarations no longer allowed under "Post-AIA" 102;

HOWEVER, can still perfect priority claim)

• Show that prior invention was not “by another;” (37 C.F.R. § 1.132 declarations no longer

allowed under "Post-AIA" 102)




• (New) Show that the prior art reference falls under one of the exceptions of 35 U.S.C. §102(b)(1)

(– more on that below!).



July 11 – 22, 2016



Exceptions to Prior Art under "Post-AIA" 35 U.S.C.102(b)(1):

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• (b) EXCEPTIONS.—

(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A

disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to

the claimed invention under subsection (a)(1) if—

(A) the disclosure was made by the inventor or joint inventor or by another who obtained the

subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the

inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from

the inventor or a joint inventor.



July 11 – 22, 2016



Exceptions to Prior Art under "Post-AIA" 35 U.S.C. 102(a)(1):

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• Even though a disclosure of subject matter falls within the scope of 102(a)(1), it may not be

used in a prior art rejection if one of the exceptions stated in 102(b)(1) applies.

• The two exceptions are stated in 102(b)(1)(A) and102(b)(1)(B), and involve potential prior art

disclosures made within the grace period, which is the one-year period preceding the

effective filing date of the claimed invention.

•REMEMBER: the 102(b)(1) exceptions apply to 102(a)(1) prior art!



July 11 – 22, 2016



35 U.S.C. §102(b)(1)(A) Exception to "Post-AIA" 102(a)(1):

Inventor-Originated Disclosure During Grace Period

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• (A) the disclosure was made by the inventor or joint inventor or by another who obtained the

subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

•For this exception to apply to a disclosure, the disclosure must be:

– within the grace period and

– an "inventor-originated disclosure" that is made by

• the inventive entity ("the inventor"),

• one or more joint inventors, or

• "another" who obtained the disclosed subject matter from the inventor or a joint inventor either directly or

indirectly.



July 11 – 22, 2016



35 U.S.C. §102(b)(1)(B) Exception to "Post-AIA" 102(a)(1):

Inventor-Originated Disclosure During Grace Period

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• (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the

inventor or a joint inventor or another who obtained the subject matter disclosed directly or

indirectly from the inventor or a joint inventor

• For this exception to apply to a 3rd party's disclosure of subject matter X:

– the 3rd party's disclosure must have been made during the grace period,

– an "inventor-originated disclosure" must have been made prior to the third party's disclosure (sometimes call

a "shielding disclosure"), and

– both must have disclosed subject matter X.



July 11 – 22, 2016



Declarations under 37 CFR 1.130

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•An applicant may overcome or avoid a rejection under 102(a)(1) by filing a declaration under

37 CFR 1.130.

•Declarations under 37 CFR 1.130 are used to invoke the exceptions of 102(b)(1).



July 11 – 22, 2016



Overcoming "Pre-AIA" 35 U.S.C. §102(a) AND "Post-AIA" §102(a)(1)

Rejections

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Prosecution History Estoppel

•Prosecution history estoppel relates to statements made, positions taken, and amendments

made to the claims during prosecution in an effort to obtain allowance, which may later bar

the availability of equivalents during subsequent, post-grant proceedings.

The Festo decisions:

•Although an amendment to a claim during prosecution may not be a complete bar to

equivalents, there is a rebuttable presumption that the patentee surrendered the availability

of equivalents to the amended subject matter.

•Along this line, “a narrowing amendment made to comply with any provision of the Patent

Act, including § 112, may invoke an estoppel.” Festo VIII, 533 U.S. 722, 736 (2002); Festo IX, 344

F. 3d 1359 (Fed. Cir. 2003).

•Voluntary amendments can also bar claims to equivalents.



July 11 – 22, 2016



Overcoming "Pre-AIA" 35 U.S.C. §102(a) Rejections and "Post-AIA"

§102(a)(1) Rejections

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Prosecution Tips

•Prepare multiple claim sets ranging from very broad to more narrow to avoid rejections and amendments – estoppel and Festo.

• Seek to minimize the record during prosecution!

– If you can remove a reference by perfecting a priority claim, do it!

– For "Pre-AIA" 102(a), If you can show “not by another” by properly adding/removing an inventor, do it!

• Show differences between claimed invention and cited art – prior art structures are not arranged as in the claims, alleged inherent disclosures are not necessarily present, etc.

• For "Pre-AIA" 102(a), use § 1.132 declarations to overcome public use and/or on sale bars, if applicable. For example, experimental exception, non-enabling disclosure, non reduction to

practice, not ready for patenting, etc.)

– Demonstrate knowledge was not “by others”

– Demonstrate knowledge that activities were not “in this country”

• For "Pre-AIA" 102(a), use § 1.131 declarations to “swear behind” when you can show prior

reduction to practice or prior conception and due diligence to reduction to practice.

• For "Post-AIA" 102(a)(1), use § 1.130 declarations to invoke the exceptions of 102(b)(1).



July 11 – 22, 2016



"Pre-AIA" 35 U.S.C. §102(b)

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– the invention was patented or described in a printed publication in this or a foreign country

or in public use or on sale in this country, more than one year prior to the date of the

application for patent in the United States, or …

Note: there is no section directly comparable to "Pre-AIA" 102(b) in the new AIA regime.

However, the one year grace period is incorporated into the "Post-AIA" 102(b)(1) exceptions.



July 11 – 22, 2016



"Pre-AIA" 35 U.S.C. §102(b)

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•CONSTITUTES A STATUTORY BAR TO PATENTABILITY

•CANNOT SWEAR BEHIND REFERENCE

• INVENTORS OWN PUBLICATIONS CAN BE USED AGAINST HIM/HER (IF MORE THAN ONE YEAR)



July 11 – 22, 2016



"Pre-AIA" 35 U.S.C. §102(b)

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• the invention was . . . in public use . . . more than one year prior to the date of the application

for patent in the United States, or …



July 11 – 22, 2016



"Pre-AIA" 35 U.S.C. §102(b)

36

“PUBLIC USE” IS NOT PUBLIC KNOWLEDGE

•PRIVATE USE WITH AN EXPECTATION OF PRIVACY

•USE PURSUANT TO A NON-DISCLOSURE OR CONFIDENTIALITY AGREEMENT

• EXPERIMENTAL EXCEPTION



July 11 – 22, 2016



"Pre-AIA" 35 U.S.C. §102(b)

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• the invention was . . . on sale in this country, more than one year prior to the date of the

application for patent in the United States …



July 11 – 22, 2016



"Pre-AIA" 35 U.S.C. §102(b)

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• EXPERIMENTAL EXCEPTION (SOME COMMERCIAL EXPLOITATION PERMISSIBLE, BUT NOT MARKET

TESTING TO GAUGE DEMAND)

• IF REDUCED TO PRACTICE – NOT EXPERIMENTAL USE. See, e.g., RCA Corp. v. Data Gen. Corp.,

887 F.2d 1056 (Fed. Cir. 1989)

• TO CONDUCT EXPERIMENTATION MUST HAVE BEEN PRIMARY PURPOSE OF INVENTOR AT THE TIME

OF THE SALE. (See, e.g., Allen Eng’g. Corp. v. Bartell Indus., Inc., 299 F.3d 1336 (Fed. Cir. 2002)



July 11 – 22, 2016



"Pre-AIA" 35 U.S.C. §102(b)

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• TWO-PRONG TEST FOR “ON SALE” BAR:

– PRODUCT MUST BE THE SUBJECT OF A COMMERCIAL OFFER FOR SALE AND

– THE INVENTION MUST BE READY FOR PATENTING BY REDUCTION TO PRACTICE OR INVENTOR HAD DRAWINGS

OR OTHER DESCRIPTIONS THAT WERE “SUFFICIENTLY SPECIFIC” TO ENABLE THOSE SKILLED IN THE ART TO

PRACTICE THE INVENTION.

– Pfaff v. Wells Elec., Inc., 525 U.S. 55 (1998).



July 11 – 22, 2016



"Pre-AIA" 35 U.S.C. §102(b)

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• the invention …

•Assert by § 1.132 affidavit and support with evidence that:

•Non-enabling disclosure.

•Not reduced to practice.



July 11 – 22, 2016



"Pre-AIA" 35 U.S.C. §102(b)

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. . . in public use or on sale in this country . . .

DOES NOT APPLY IF MANUFACTURE AND DELIVERY OCCUR OUTSIDE OF THE U.S.



July 11 – 22, 2016



Overcoming "Pre-AIA" 35 U.S.C. §102(b) Rejections

42

•Persuasively arguing that claims are patentably distinguishable

•Amend the claims to distinguish over the prior art

•Perfect priority under 35 U.S.C. § 120 or

•Perfect priority under 35 U.S.C. § 119(e)

• In traversing an Examiner’s grounds for rejection keep in mind Prosecution History Estoppel that

may estop a patentee from making certain arguments that are inconsistent with arguments

made during prosecution

• Section 120 provides the benefit of an earlier filing of an application filed in the U.S.

• The effective filing date is the same as the earliest filing date in the line of CON or DIV

applications. However. . .

• For a CIP, only those claims that are fully supported by the earlier parent application enjoy the

filing date of that earlier parent application



July 11 – 22, 2016



"Pre-AIA" 35 U.S.C. §102(b) Prosecution Tips

43

•Amend with caution!

•Prepare multiple claim sets ranging from very broad to more narrow to avoid rejections and

amendments

• In arguing that the claims are patentably distinguishable, remember prosecution history

estoppel

• Include a generic statement that claims are made without the intention of surrendering the

availability of equivalents to the amended subject matter

•Compare effective filing date with publication date

•Use § 1.132 declarations to overcome public use and/or on sale bars, if applicable. For

example, experimental exception, non-enabling disclosure, non reduction to practice, not

ready for patenting, etc.)



July 11 – 22, 2016



"Pre-AIA" 35 USC §102(e)

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– the invention was described in - (1) an application for patent, published under section 122(b), by another

filed in the United States before the invention by the applicant for patent or (2) a patent granted on an

application for patent by another filed in the United States before the invention by the applicant for patent,

except that an international application filed under the treaty defined in section 351(a) shall have the

effects for the purposes of this subsection of an application filed in the United States only if the international

application designated the United States and was published under Article 21(2) of such treaty in the English

language; or …

–Note: "Pre-AIA" 35 USC §102(e) is directly comparable to "Post-AIA" 35

USC §102(a)(2) (more on that later).



July 11 – 22, 2016




45


– the invention was described in - (1) an application for patent, published under section 122(b), by another

filed in the United States before the invention by the applicant for patent or …



July 11 – 22, 2016




46


– the invention was described in - . . . (2) a patent granted on an application for patent by another filed in

the United States before the invention by the applicant for patent, …



July 11 – 22, 2016




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– . . . except that an international application filed under the treaty defined in section 351(a) shall have the

effects for the purposes of this subsection of an application filed in the United States only if the international

application designated the United States and was published under Article 21(2) of such treaty in the English

language; or …



July 11 – 22, 2016



Overcoming "Pre-AIA" 35 U.S.C. §102(e) Rejections

48

HOW TO OVERCOME § 102(e)?

• Establish prior invention;

– Perfect priority under 35 U.S.C. § 119(a)-(d) or under 35 U.S.C. §§ 119(e) or 120

– Submit Affidavit under 37 CFR 1.131 to “swear behind” cited reference

• Show that prior invention is not by another

– Add/Remove inventors, if possible

– File a Declaration under 37 CFR § 1.132 showing that pertinent teachings of the cited reference are the

Applicant’s own work

•Persuasively argue that claims are patentably distinguishable


•Amend the claims to distinguish over the prior art



July 11 – 22, 2016




49

ESTABLISHING PRIOR INVENTION – Perfecting Priority

• Section 119(a) – An Applicant’s previously filed foreign application is treated as if filed in the US

on the filing date of the foreign application – the foreign filing date can be used to overcome

a reference

– However, unless it claims benefit to a prior US application (US Con/Div/Provisional/Int. App.), a cited art

reference does not obtain the benefit of a foreign priority claim!

• Section 119(e) - The filing date of an earlier filed U.S. provisional application is the effective

filing date

• Section 102(e)- The effective filing date of an Applicant’s application is the filing date of the

U.S. application, which includes the filing date of a PCT application designating the U.S. and

which is published in the English language

– Applicant’s PCT application which includes a foreign priority claim will be treated as if filed in the US as of

the date of the foreign application



July 11 – 22, 2016




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• Section 120 provides the benefit of an earlier filing of an application filed in the U.S.

• The effective filing date is the same as the earliest filing date in the line of CON or DIV

applications

• For a CIP, only those claims that are fully supported by the earlier parent application enjoy the

filing date of that earlier parent application



July 11 – 22, 2016




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•A CITED US REFERENCE INCLUDING A CLAIM TO A PRIOR FILED US/INT APPLICATION

DESIGNATING THE US OBTAINS THE BENEFIT OF THE PRIOR FILED US/INT APPLICATION!!!



July 11 – 22, 2016




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•A CITED US/INTERNATIONAL REFERENCE INCLUDING A CLAIM TO A PRIOR FOREIGN

APPLICATION DOES NOT OBTAIN THE BENEFIT OF PRIOR FILED FOREIGN APPLICATION!!!



July 11 – 22, 2016




53

ESTABLISHING PRIOR INVENTION – MPEP 706.02(f)



July 11 – 22, 2016




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•WHAT TO DO?

– FILE CERTIFIED COPY OF FOREIGN PRIORITY DOCUMENTS; OR

– ENSURE COPY FORWARDED TO USPTO AS DESIGNATED/ELECTED OFFICE BY INTERNATIONAL BUREAU (PCT)

– SUBMIT TRANSLATIONS TO PERFECT PRIORITY!



July 11 – 22, 2016




55

ESTABLISHING PRIOR INVENTION – “Swearing behind”

•37 CFR § 1.131 provides for filing a declaration “to establish invention of the subject matter of

the rejected claim prior to the effective date of the reference or activity on which the

rejection is based.”



July 11 – 22, 2016




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• Who may file declarations under 35 U.S.C. § 1.131?

– Inventor

– Owner of a patent under re-examination

– Party qualified under 37 C.F.R. §§ 1.42 (dead inventor), 1.43 (insane or legally incapacitated inventor), or

1.47 (uncooperative inventor)

– The assignee or other party in interest when it is not possible to produce the affidavit or declaration of the

inventor. Ex parte Foster, 1903 C.D. 213, 105 O.G. 261 (Comm'r Pat. 1903)



July 11 – 22, 2016




57


•Where can prior inventive activities be established?

– “Prior invention may not be established under this section in any country other than the United States, a

NAFTA country, or a WTO member country.”

– Cannot establish prior invention if rejection is based on a U.S. patent or published application that claim the

same patentable invention

• Must invoke an INTERFERENCE



July 11 – 22, 2016




58


•How do you show / What is needed to establish prior invention?

– Show actual reduction to practice prior to the effective date of the reference; or

– Show conception of the invention prior to the effective date of the reference AND due diligence from prior

to the effective date of the cited reference and reduction to practice (constructive or otherwise)

– Drawings or records must accompany and form part of the affidavit or must explain why such evidence is

missing – Lab books, journals, sketches, invention disclosure forms, records of experiments, etc.



July 11 – 22, 2016




59

SHOWING AN INVENTION IS “NOT BY ANOTHER”

•Add/remove inventors - if possible

• Submit Declaration under 37 CFR § 1.132



July 11 – 22, 2016




60

SHOWING AN INVENTION IS “NOT BY ANOTHER”

•37 CFR § 1.132 provides for filing a declaration traversing the rejections or objections for a

reason “not otherwise provided for”

– Remove cited art by filing a declaration stating that relevant portions of the cited art describes the

inventor’s own work

– In sum, it is a declaration of the inventor that the cited reference is merely describing the inventor’s own

work

– Declaration that Applicant of cited reference learned of, or derived, invention from current inventor

– Do not need to establish reduction to practice – conception is sufficient.

– Do not need an affidavit from all of the inventors

• Typically used to show invention was “not by another” in the context of scientific publications,

technical journals, Joint Research Agreements, etc.



July 11 – 22, 2016



"Post-AIA" 35 U.S.C. §102(a)(2):

61

NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—

• (2) the claimed invention was described in a patent issued under section 151, or in an

application for patent published or deemed published under section 122(b), in which the

patent or application, as the case may be, names another inventor and was effectively filed

before the effective filing date of the claimed invention.

NOTE: Foreign patent documents (for example, JP or GB patents or published applications) cannot be prior art as of their filing date under 102(a)(2). However, they may be printed

publication prior art under 102(a)(1).



July 11 – 22, 2016



"Post-AIA" 35 U.S.C. 102(a)(2): Important Points about WIPO Published PCT

(International) Applications

62

•A WIPO published PCT application must have designated the United States in order to be

102(a)(2) prior art. PCT applications filed on or after January 1, 2004 automatically designate

the United States.

• There is no requirement that the WIPO published PCT application have been filed on or after

November 29, 2000, or have been published in English. This is a distinction from pre-AIA 102(e).



July 11 – 22, 2016



"Post-AIA" 35 U.S.C. 102(a)(2) Documents Must Name "Another Inventor"

63

•Under 102(a)(2), a disclosure in a U.S. patent document, including a WIPO published PCT

(international) application, is not prior art unless the document names "another inventor" (i.e., a

different inventive entity).

• Example provided by USPTO:



July 11 – 22, 2016



"Post-AIA" 102(a)(2) References Must Have an Effectively Filed Date Before

the EFD of the Claimed Invention

64

•102(a)(2) precludes a patent if, before the effective filing date of a claimed

invention, the claimed invention was described in a:

– U.S. Patent;

– U.S. Patent Application Publication; or

– WIPO published PCT (international) application that designated the United States,

that names a different inventive entity and was effectively filed before the effective filing date

of the claimed invention.



July 11 – 22, 2016



"Post-AIA" 35 U.S.C. 102(d) Explains "Effectively Filed Date" for 102(a)(2)

Prior Art

65

d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS PRIOR ART.—For purposes of

determining whether a patent or application for patent is prior art to a claimed invention under

subsection (a)(2), such patent or application shall be considered to have been effectively filed,

with respect to any subject matter described in the patent or application—

(1) if paragraph (2) does not apply, as of the actual filing date of the patent or the

application for patent; or

2) if the patent or application for patent is entitled to claim a right of priority under

section 119, 365(a), 365(b), 386(a), or 386(b), or to claim the benefit of an earlier filing

date under section 120, 121, 365(c), or 386(c) based upon 1 or more prior filed

applications for patent, as of the filing date of the earliest such application that

describes the subject matter.



July 11 – 22, 2016



"Post-AIA" 35 U.S.C. 102(d) Explains "Effectively Filed Date" for 102(a)(2)

Prior Art (cont.)

66

•A U.S. patent document may be applied as prior art as of its effectively filed date. The

effectively filed date for 102(a)(2) references according to 102(d) is the earlier of:

– the actual filing date of the U.S. patent or the published application (U.S. or WIPO), or

– the filing date of the earliest application to which the U.S. patent or the published application (U.S. or WIPO)

is entitled to claim a right of foreign priority or domestic benefit which describes the subject matter.

• NOTE: "Post-AIA" 35 U.S.C 102(d) is CANNOT be used as the basis for a prior art rejection.



July 11 – 22, 2016



Overcoming "Post-AIA" 35 U.S.C. §102(a)(1) Rejections

67

HOW DO YOU OVERCOME A 102(a)(1) Rejection?

• Establish prior invention; (37 C.F.R. § 1.131 declarations no longer allowed under "Post-AIA" 102;

HOWEVER, can still perfect priority)

• Show that prior invention was not “by another;” (37 C.F.R. § 1.132 declarations no longer

allowed under "Post-AIA" 102)




• Show that the cited reference does not name "another inventor."

• Show that the Effectively Filed Date of the cited reference was after the EFD of the Claimed

Invention

• (New) Show that the prior art reference falls under one of the exceptions of 35 U.S.C. §102(b)(2)

(– more on that below!).



July 11 – 22, 2016



Exceptions to Prior Art under 35 U.S.C.102(b)(2):

68

• (b) EXCEPTIONS.—

(2) (2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.—A disclosure shall not be prior art to a

claimed invention under subsection (a)(2) if—

(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;

(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection

(a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject

matter disclosed directly or indirectly from the inventor or a joint inventor; or

(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the

claimed invention, were owned by the same person or subject to an obligation of assignment to the same

person.



July 11 – 22, 2016



Exceptions to Prior Art under "Post-AIA" 35 U.S.C. 102(a)(2)

69

• Even though a 102(a)(2) reference describes the claimed invention, the reference may not be

used in a prior art rejection if one of the exceptions stated in 102(b)(2) applies.

• The three exceptions are stated in 102(b)(2)(A), 102(b)(2)(B), and 102(b)(2)(C). Unlike the

102(b)(1) exceptions that apply to 102(a)(1) disclosures, the 102(b)(2) exceptions do not

involve the one-year grace period.

• REMEMBER: The 102(b)(2) exceptions apply to 102(a)(2) prior art!



July 11 – 22, 2016



102(b)(2)(A) Exception to "Post-AIA" 102(a)(2) Prior Art

70

•Under the 102(b)(2)(A) exception, a 102(a)(2) reference is not prior art as of the effectively filed

date if "the subject matter disclosed" was obtained from one or more members of the

inventive entity, either directly or indirectly.

• This is similar to the exception in 102(b)(1)(A).



July 11 – 22, 2016



102(b)(2)(B) Exception to "Post-AIA" 102(a)(2) Prior Art

Subject Matter In a Previous Inventor-Originated Disclosure

71

•For this exception to apply to a third party’s U.S. patent document disclosing

subject matter X:

– the third party’s U.S. patent document must have been effectively filed before the effective

filing date of the claimed invention,

– an inventor-originated disclosure must have been made prior to the third party’s effectively

filed date, and

– both must have disclosed subject matter X.



July 11 – 22, 2016



72

• For the 102(b)(2)(C) exception to apply, the subject matter of the potential 102(a)(2)

reference and the claimed invention in the application under examination must have been:

– owned by the same person,

– subject to an obligation of assignment to the same person, OR

– deemed to have been owned by or subject to an obligation of assignment to the same person

not later than the effective filing date of the claimed invention.

• If this exception applies, a U.S. patent document cannot be used as 102(a)(2) prior art as of its effectively filed

date, but it may still be used as 102(a)(1) prior art as of its publication or patent date.

102(b)(2)(C) Exception to "Post-AIA" 102(a)(2) Prior Art

Common Ownership



July 11 – 22, 2016



Common Ownership and Joint Research Agreements under "Post-AIA"

102(c):

73

• (c) COMMON OWNERSHIP UNDER JOINT RESEARCH AGREEMENTS.—Subject matter disclosed

and a claimed invention shall be deemed to have been owned by the same person or

subject to an obligation of assignment to the same person in applying the provisions of

subsection (b)(2)(C) if—

• (1) the subject matter disclosed was developed and the claimed invention was made by, or

on behalf of, 1 or more parties to a joint research agreement that was in effect on or before

the effective filing date of the claimed invention;

• (2) the claimed invention was made as a result of activities undertaken within the scope of the

joint research agreement; and

• (3) the application for patent for the claimed invention discloses or is amended to disclose the

names of the parties to the joint research agreement.



July 11 – 22, 2016



"Deemed" Common Ownership under "Post-AIA" 102(c)

74

• There are three conditions for the 102(b)(2)(C) common ownership exception in view of a joint

research agreement (JRA) under 102(c):

– the subject matter disclosed in a potential prior art U.S. patent document was developed, and the claimed

invention was made, by or on behalf of parties to a JRA that was in effect not later than the effective filing

date of the claimed invention,

– the claimed invention was made as a result of activities within the scope of the JRA, and

– the application that includes the claimed invention must name, or be amended to name, the parties to the

JRA.



July 11 – 22, 2016



Common Ownership Exception: AIA vs. pre-AIA Comparison

75

• The 102(b)(2)(C) exception is similar to pre-AIA 103(c), but with some important differences:

– The AIA common ownership exception applies to anticipation as well as obviousness rejections, whereas

the pre-AIA 103(c) exception applies only to obviousness rejections in which the prior art qualifies only under

pre-AIA 102(e), (f), or (g).

– Under the AIA, common ownership must exist no later than the effective filing date of the claimed

invention. By contrast, pre-AIA 103(c) requires common ownership as of the date that the claimed invention

was made.

– Under both pre-AIA and AIA practice, a statement is sufficient and a declaration is not needed to establish

common ownership.



July 11 – 22, 2016



Declarations under 37 CFR 1.130

76

•An applicant may overcome or avoid a rejection under 102(a)(2) by filing a declaration under

37 CFR 1.130.

•Declarations under 37 CFR 1.130 are used to invoke the exceptions of 102(b)(2).



July 11 – 22, 2016



Overcoming "Pre-AIA" 35 U.S.C. §102(e) Rejections or "Post-AIA" § 102(a)(2)

Rejections:

77

Prosecution Tips

•Prepare multiple claim sets ranging from very broad to more narrow to avoid rejections and amendments.

• Seek to minimize the record during prosecution!

– If you can remove a reference by perfecting a priority claim, do it!

– Under "Pre-AIA" 102(e), if you can show “not by another” by properly adding/removing an inventor, do it!

• Show differences between claimed invention and cited art – prior art structures are not arranged as in the claims, alleged inherent disclosures are not necessarily present, etc.

•Under "Pre-AIA" 102(e), use § 1.132 declarations to overcome public use and/or on sale bars, if applicable. For example, experimental exception, non-enabling disclosure, non reduction to

practice, not ready for patenting, etc.)

– Demonstrate knowledge was not “by others”

– Demonstrate knowledge was not “in this country”

•Under "Pre-AIA" 102(e), use § 1.131 declarations to “swear behind” when you can show prior

reduction to practice or prior conception and due diligence to reduction to practice.

•Under "Post-AIA" 102(a)(2), invoke one of the exceptions of 102(b)(2).



July 11 – 22, 2016



Overcoming "Pre-AIA" 35 U.S.C. §102(e) Rejections or "Post-AIA" § 102(a)(2)

Rejections:

78

Prosecution Tips

•Argue/Amend only when necessary and do so with caution – remember prosecution history

estoppel and equivalents!

• Include statements that claims amendments are made to correct other issues, for example,

language/grammatical errors, and that amendments are made without the intention of

surrendering available of equivalents

•Reserve right, without prejudice, to resubmit the original subject matter in the application, or in

a continuing application



July 11 – 22, 2016



Overcoming 35 U.S.C. §102 Rejections

79

QUESTIONS?

Much of this presentation was drawn from the USPTO's "First Inventor to File (FITF) Comprehensive

Training" available at

http://www.uspto.gov/sites/default/files/aia_implementation/fitf_comprehensive_training_prior_

art_under_aia.pdf

BOS111_12501507

http://www.uspto.gov/sites/default/files/aia_implementation/fitf_comprehensive_training_prior_art_under_aia.pdf




Thank you!

80

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