2155.02 Showing That the Subject Matter Disclosed Had Been Previously Publicly Disclosed by the Inventor or a Joint Inventor [R-07.2022]
[Editor Note: This MPEP section is only 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 § 2131–MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]
AIA 35 U.S.C. 102(b)(1)(B) provides that a grace period disclosure shall not be prior art to a claimed invention under AIA 35 U.S.C. 102(a)(1) if subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor. Similarly, AIA 35 U.S.C. 102(b)(2)(B) provides that a disclosure shall not be prior art to a claimed invention under AIA 35 U.S.C. 102(a)(2) if the subject matter disclosed had, before such subject matter was effectively filed under AIA 35 U.S.C. 102(a)(2), been publicly disclosed by the inventor or a joint inventor. An applicant may show that the subject matter disclosed had been publicly disclosed by the inventor or a joint inventor before the disclosure or effective filing date of the subject matter on which the rejection was based by way of an affidavit or declaration under 37 CFR 1.130(b) (an affidavit or declaration of prior public disclosure). Specifically, the affidavit or declaration must identify the subject matter publicly disclosed and establish the date and content of their earlier public disclosure. If the earlier public disclosure is a printed publication, the affidavit or declaration must be accompanied by a copy of the printed publication in accordance with37 CFR 1.130(b)(1). If the earlier disclosure is not a printed publication, the affidavit or declaration must describe the earlier disclosure with sufficient detail and particularity to determine that the earlier disclosure is a public disclosure of the subject matter, as required by 37 CFR 1.130(b)(2).
The manner of disclosure of subject matter referenced in an affidavit or declaration under 37 CFR 1.130(b)(2) is not critical. Just as the prior art provision of AIA 35 U.S.C. 102(a)(1) encompasses any disclosure that renders a claimed invention “available to the public,” any manner of disclosure may be evidenced in an affidavit or declaration under 37 CFR 1.130(b). That is, when using an affidavit or declaration under 37 CFR 1.130(b) to except an intervening disclosure as prior art based on a prior public disclosure by an inventor or a joint inventor, it is not necessary for the subject matter to have been disclosed in the same manner or using the same words. For example, the inventor or a joint inventor may have publicly disclosed the subject matter in question via a slide presentation at a scientific meeting, while the intervening disclosure of the subject matter may have been made in a journal article. This difference in the manner of disclosure or differences in the words used to describe the subject matter will not preclude the inventor from submitting an affidavit or declaration under 37 CFR 1.130(b) to except subject matter in the intervening disclosure (e.g., a journal article) as prior art.
The following examples are provided for illustration only:
On May 18, 2021, an attorney for Acme Corp. files a U.S. patent application claiming subject matter X. An inventor’s oath or declaration under 37 CFR 1.63 signed by Maria is also filed with the application. During the prior art search, the examiner finds a journal article authored by Keiko that published on March 16, 2021 and discloses the same subject matter X. The journal article by Keiko is publicly available before Acme’s filing date. Accordingly, the examiner should reject the claims to X as being anticipated by Keiko under 35 U.S.C. 102(a)(1). At the time of the rejection, the examiner has no information about Maria’s prior public disclosure.
In reply to the Office action, Acme’s attorney files a 37 CFR 1.130(b) declaration signed by Maria averring that she had disclosed X at a virtual conference on June 7, 2020, which is prior to the public availability date of Keiko’s disclosure of X in the journal article. The reply also includes a copy of Maria’s presentation slides at the virtual conference. In addition, the reply calls the examiner’s attention to the inventor’s oath or declaration signed by Maria that is already of record.
The examiner should withdraw the anticipation rejection under 35 U.S.C. 102(a)(1) because the evidence of record establishes that Maria had made a prior public disclosure of the same subject matter disclosed in Keiko’s journal article. It is important to note that if a prior public disclosure is made by a printed publication, 37 CFR 1.130(b)(1) requires that a copy be included with the declaration. Acme has complied with this requirement by supplying a copy of the conference presentation slides. Furthermore, the application file includes an inventor’s oath or declaration under 37 CFR 1.63 signed by Maria. Therefore, the record contains sufficient evidence that Maria is the inventor of X. Finally, it is clear that Maria disclosed the same subject matter as Keiko because both disclosed X.
This example has the same facts as example 1 above, but in this example, the journal article to Keiko discloses not only X, but also Y and a genus that encompasses both X and Y. As in example 1, the examiner should make an anticipation rejection under 35 U.S.C. 102(a)(1) for the claims to X.
At the time of the rejection, the examiner has no information about Maria’s prior public disclosure and cannot predict how the applicant will respond. Thus, in order to conclude prosecution in a timely manner and avoid the possibility of an additional non-final action, the examiner should consider whether Acme’s claim to X can be rejected as obvious over Keiko’s disclosure of Y. The disclosure of Y by Keiko is still available as prior art because Maria’s disclosure of X is not the same subject matter as Keiko’s disclosure of Y. If the applicant shows that the Keiko’s disclosure of X and the genus that encompasses X and Y is not prior art in response to the rejection, the examiner could maintain the obviousness rejection based on Keiko’s disclosure of Y and make the next Office action final, unless it is not appropriate for other reasons. Stated another way, the second Office action cannot be made final if a new obviousness rejection based on Keiko’s disclosure of Y is made in response to the filing of the 37 CFR 1.130(b) declaration, assuming Acme did not amend the claims.
Note that Maria’s prior public disclosure of X is considered to be the same subject matter as Keiko’s later‐disclosed genus that includes X, in the same sense that a species can be said to anticipate a genus. In other words, the inventor is not penalized just because a third party sees the inventor’s disclosure and then re‐publicizes it in a more generalized fashion.