2120.01 Rejections Under 35 U.S.C. 102(a)(1) and (a)(2) and Pre-AIA 35 U.S.C. 102(a), (b), or (e): Printed Publication or Patent [R-10.2019]
Once the examiner conducts a search and finds a printed publication or patent which discloses the claimed invention, the examiner should determine whether the rejection should be made under 35 U.S.C. 102(a)(1) or (a)(2) or, if the application is subject to the former prior art regime, pre-AIA 35 U.S.C. 102(a), (b), or (e). See MPEP § 2159 for guidance. Form paragraph 7.03.aia or 7.03.fti should be used in an Office action to indicate whether the application is being examined under the first inventor to file provisions of the AIA or the pre-AIA prior art provisions, respectively.
¶ 7.03.aia Application Examined Under AIA First Inventor to File Provisions
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA.
Examiner Note:
- This form paragraph should be used in any application subject to the first inventor to file provisions of the AIA.
¶ 7.03.fti Application Examined Under First to Invent provisions
The present application, filed on or after March 16, 2013, is being examined under the pre-AIA first to invent provisions.
Examiner Note:
- This form paragraph should be used in any application filed on or after March 16, 2013 that is subject to the pre-AIA prior art provisions.
In order to determine which paragraph of 35 U.S.C. 102 applies, the effective filing date of the application and each claimed invention must be determined and compared with the date of the reference. See MPEP § 2139.01 regarding determination of effective filing date of the claimed invention under pre-AIA law and MPEP § 2152.01 regarding determination of effective filing date of the claimed invention under AIA law.
The examiner must also determine the issue or publication date of the reference so that a proper comparison between the application and reference dates can be made. See MPEP §§ 2124, 2126, 2128 – 2128.02, and 2152.02 – 2154.02(c) for case law relevant to reference date determination.
See MPEP § 2152.05 for determining whether to apply 35 U.S.C. 102(a)(1) or (a)(2). See MPEP § 2139.02 for determining whether to apply pre-AIA 35 U.S.C. 102(a), (b), or (e).
In all applications, an applicant may overcome a 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 35 U.S.C. 102 prior art depend on whether or not any claim in the application being examined is subject to the first inventor to file provisions of the AIA.
See MPEP § 2152.06 for overcoming a rejection under 35 U.S.C. 102(a)(1) or (a)(2). See MPEP §§ 2132.01, 2133.02(a), and 2136.05et seq. for overcoming prior art rejections under pre-AIA 35 U.S.C. 102(a), (b), and (e), respectively.