Showing That the Subject Matter Disclosed Had Been Previously Publicly Disclosed by the Inventor or a Joint Inventor

[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 with

37 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)

vit or declaration must be accompanied by a copy of the printed

publication in accordance with

37 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:

Example 1

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

laration 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:

Example 1

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

s 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.

Example 2

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

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.