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.
- 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.
- 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 §§ 706.02 and 2152.01 regarding determination of effective filing date of the claimed invention.
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.