Overcoming a Pre-AIA 35 U.S.C. 102(b) Rejection Based on a Printed Publication or Patent

In all applications, an applicant may overcome a

pre-AIA 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

pre-AIA 35 U.S.C. 102

prior art depend on the applicable

paragraph of

pre-AIA 35 U.S.C. 102

. See

MPEP § 2132.01

for

overcoming a rejection under

pre-AIA 35 U.S.C. 102(a)

and

MPEP §

2136.05

et seq.

for overcoming a rejection under

pre-AIA 35 U.S.C.

102(e)

.

A rejection based on

pre-AIA 35 U.S.C. 102(b)

can be

overcome by:

(A) Persuasively arguing that the claims are patentably

distinguishable from the prior art;

(B) Amending the claims to patentably distinguish over the prior

art;

(C) Submitting and perfecting a benefit claim under

35

U.S.C. 120

, within the time period set in

37 CFR

1.78

(or by filing a grantable petition to accept an

unintentionally delayed claim under

37 CFR 1.78

as explained in

MPEP § 211.04

):

(1)

(a) for applications filed on or after

September 16, 2012, by filing a corrected application data sheet

under

37 CFR 1.76

which contains a specific reference to a prior application in

accordance with

37 CFR 1.78

, or

(b) for applications filed prior to

September 16, 2012, by amending the specification of the

application to contain a specific reference to a prior application

or by filing a corrected application data sheet under

37 CFR 1.76

which contains a specific reference to a prior application in

accordance with

37 CFR

1.78

,

and

specific reference to a prior application in

accordance with

37 CFR 1.78

, or

(b) for applications filed prior to

September 16, 2012, by amending the specification of the

application to contain a specific reference to a prior application

or by filing a corrected application data sheet under

37 CFR 1.76

which contains a specific reference to a prior application in

accordance with

37 CFR

1.78

,

and

(2) by establishing that the prior application

satisfies the enablement and written description requirements of

35 U.S.C. 112(a)

(for applications filed on or

after September 16, 2012), or

35 U.S.C. 112

, first

paragraph (for applications filed prior to September 16, 2012). See

MPEP § 211

et

seq.

;

or

(D) Submitting and perfecting a benefit claim under

35 U.S.C.

119(e)

by complying with the requirements of

37 CFR

1.78

or filing a grantable petition to accept an

unintentionally delayed claim under

37 CFR 1.78

(see item (C)

above). Because a provisional application could not have been filed more than

one year prior to the filing of a nonprovisional application that claims

benefit to the provisional application, once the benefit claim under

35 U.S.C.

119(e)

is perfected, the rejection must be reconsidered

to determine whether the prior art still qualifies as prior art under

pre-AIA 35

U.S.C. 102(b)

or whether the prior art qualifies as prior

art under

pre-AIA 35 U.S.C. 102(a)

. Note, however, effective

December 18, 2013, title II of the Patent Law Treaties Implementation Act

(PLTIA) provides for restoration of the right to claim benefit of a provisional

application filed after the expiration of the twelve-month period in

35 U.S.C.

119(e)

. See

MPEP §

211.01(a)

, subsection II. If the prior art qualifies

as prior art under

pre-AIA 35 U.S.C. 102(a)

,

see

MPEP §

2132.01

as to how to overcome the

pre-AIA 35 U.S.C.

102(a)

rejection.