715.10 Review of Affidavit or Declaration for Evidence of Prior Public Use or Sale or Failure to Disclose Best Mode [R-11.2013]

[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.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. 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. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.]

Any affidavits or declarations submitted under 37 CFR 1.131(a) and the accompanying evidence must be reviewed carefully by the examiner in order to determine whether they show that the claimed invention was “in public use” or “on sale” in this country more than one year prior to the effective filing date of the application, which acts constitute a statutory bar under pre-AIA 35 U.S.C. 102(b). Although the rejection based on the reference(s) or activity sought to be antedated may actually be overcome by such an affidavit or declaration, the effect of the applicant’s prior “public use” or “on sale” activities may not be overcome under 37 CFR 1.131(a). See MPEP § 2133.03 regarding rejections based on “public use” and “on sale” statutory bars under pre-AIA 35 U.S.C. 102.

Where the 37 CFR 1.131(a) evidence relies on an embodiment of the invention not disclosed in the application, the question of whether the application includes the “best mode” must be considered. However, a “best mode” rejection should not be made unless the record, taken as a whole, establishes by a preponderance of the evidence that applicant’s specification has not set forth the best mode contemplated by the inventor of carrying out the invention. See MPEP §§ 2165 – § 2165.04 regarding the best mode requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.