Antedating a reference

The effective date of a domestic patent when used as a reference in a rejection under pre-AIA 35 U. Conception is more than a vague idea of how to solve a problem.

102(e) is not the foreign filing date to which the application for patent may have been entitled under 35 U. While conception is the mental part of the inventive act, it must be capable of proof, such as by demonstrative evidence or by a complete disclosure to another. The evidence submitted is insufficient to establish applicant’s alleged actual reduction to practice of the invention in this country or a NAFTA or WTO member country after the effective date of the [1] reference. The [1] filed on [2] under 37 CFR 1.31(a) is sufficient to overcome the [3] reference. In bracket 1, insert either --affidavit-- or --declaration--. In bracket 2, insert the filing date of the affidavit or declaration.

A printed publication, including a published foreign patent application, is effective as of its publication date, not its date of receipt by the publisher. patent application publication of a pending or patented application that claims the rejected invention.

See MPEP §§ 706.02(a), 706.02(f)(1), and 2136 - 2136.03.

Judge Schall’s dissent argued that the Board evaluated diligence using the correct legal standard: “As I read them, our cases turn on whether evidence supports a satisfactory explanation for periods of inactivity.” The antedating inquiry under Pre-AIA section102(g) is directed to evidence of diligent activity during the critical period as a whole and does not require justifying every period of unexplained inactivity.

Robert Schaffer is an intellectual property partner at Troutman Sanders.

patent application publication, or WIPO publication of an international application as a reference under pre-AIA 35 U.

6,030,384 as anticipated or obvious over Japanese Publication No. Pre-AIA section 102(g) allows antedating a reference, which removes it from the prior art for analysis of novelty and nonobviousness.

104 and 37 CFR 1.131(a) is the date the country becomes a member of the WTO.

102, for example: See MPEP §§ 706.02(a), 706.02(f)(1), and 2136 - 2136.03 for a detailed discussion of the effective date of a U.

If the reference and this application are commonly owned, the reference may be disqualified as prior art by an affidavit or declaration under 37 CFR 1.131(c). The evidence submitted is insufficient to establish a reduction to practice of the invention in this country or a NAFTA or WTO member country prior to the effective date of the [1] reference. This form paragraph must be preceded by form paragraph 7.57 An explanation of the lack of showing of the alleged reduction to practice must be provided in bracket 2. 102(b) and thus cannot be overcome by an affidavit or declaration under 37 CFR 1.131(a). The evidence submitted is insufficient to establish diligence from a date prior to the date of reduction to practice of the [1] reference to either a constructive reduction to practice or an actual reduction to practice. This form paragraph must be preceded by form paragraph 7.57 If the affidavit additionally fails to establish conception, this paragraph must also be preceded by form paragraph 7.61

The [1] filed on [2] under 37 CFR 1.131(a) has been considered but is ineffective to overcome the [3] reference. In bracket 1, insert either --affidavit-- or --declaration--. This form paragraph must be followed by one or more of form paragraphs 7.58to 7.63or a paragraph setting forth proper basis for the insufficiency, such as failure to establish acts performed in this country, or that the scope of the declaration or affidavit is not commensurate with the scope of the claim(s). See MPEP Chapter 2300 for information on initiating interference proceedings. If used to respond to the submission of an affidavit under 37 CFR 1.131(a), this paragraph must be preceded by paragraph 7.57 This form paragraph may be used without form paragraph 7.57when an affidavit has not yet been filed, and the examiner desires to notify applicant that the submission of an affidavit under 37 CFR 1.131(a) would be inappropriate. If either diligence or a reduction to practice is established, a statement to that effect should follow this paragraph.

Leave a Reply