This section outlines instances where the reference is a publication of the applicant's own invention. Unless it is a statutory bar, a rejection under pre-AIA 35 U.S.C. 102 prior art based on a publication may be overcome by a showing that it was published either by applicant himself/herself or on his/her behalf. It covers both co-authorship and derivation.

• Review Ed9 10.2019: 715.01(c)

The essential thing to be shown under 37 CFR 1.131(a) is priority of invention and this may be done by any satisfactory evidence of the fact. This section outlines the evidence that may be submitted. For instance sketches, photographs, and models may be submitted as evidence.

In situations where the dates of the exhibits have been removed or blocked off, the matter of dates can be taken care of in the body of the oath or declaration.715.07(a). This section also covers three ways to show prior invention.

• Review Ed9 10.2019: 715.07

Claims must be given their broadest reasonable interpretation in light of the specification. Due to the fact that the applicant has the opportunity to amend the claims during prosecution, giving a claim its broadest reasonable interpretation will reduce the possibility that the claim, once issued, will be interpreted more broadly than is justified.

The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention.

• Review Ed9 10.2019: 2111

The determination of whether a preamble limits a claim is made on a case-by-case basis in light of the facts in each case; there is no litmus test defining when a preamble limits the scope of a claim.

• Review Ed9 10.2019: 2111.02

The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. This section covers the burden of proof for a rejection based on inherency.

This includes that something old does not become patentable upon the discovery of a new property. In addition, the inherent feature need not be recognized at the time of the invention. In addition there is a brief discussion how a rejection under 35 U.S.C. 102/103 can be made when the prior art product seems to be identical except that the prior art is silent as to an inherent characteristic. Finally, this section states that the examiner must provide rationale or evidence tending to show inherency.

• Review Ed9 10.2019: 2112

Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself.

The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.

• Review Ed9 10.2019: 2113

This section covers the general level of operability required to make a prima facie case. It covers the idea that prior art is presumed to be operable/enabling and that what constitutes an enabling disclosure does not depend on the type of prior art the disclosure is contained in. Essentially, the level of disclosure required within a reference to make it an “enabling disclosure” is the same no matter what type of prior art is at issue. The last point made by this section is that efficacy is not a requirement for prior art enablement.

• Review Ed9 10.2019: 2121

This section briefly covers the use of prior art in rejections where operability is in question. It is possible to make a 35 U.S.C. 102 rejection even if the reference does not itself teach one of ordinary skill how to practice the invention, i.e., how to make or use the article disclosed. In addition, this section states that even if a reference discloses an inoperative device, it is prior art for all that it teaches.

• Review Ed9 10.2019: 2121.01

This section covers a rejection over a prior art's broad disclosure instead of preferred embodiments. Patents are relevant as prior art for all they contain. Nonpreferred and alternative embodiments constitute prior art.

• Review Ed9 10.2019: 2123

This section covers the level of public accessibility required. Examples given state that a thesis placed in a university library may be considered prior art if it was sufficiently accessible to the public. In addition, an orally presented paper can constitute a printed publication if written copies are made available without restriction. Internal documents intended to be confidential are not considered printed publications.

Lastly, publicly displayed documents can constitute a printed publication even if the duration of display is for only a few days and the documents are not disseminated by copies or indexed in a library or database.

Each of these examples is discussed in more detail in this section.

• Review Ed9 10.2019: 2128.01

This section covers anticipation regarding 35 U.S.C. 102. Essentially, to anticipate a claim, the disclosure must teach every element of the claim.

• Review Ed9 10.2019: 2131

This section covers the anticipation of ranges. For instance a specific example in the prior art which is within a claimed range anticipates the range. In addition, prior art which teaches a range of overlapping or touching the claimed range anticipates if the prior art range discloses the claimed range with sufficient specificity. Finally, prior art which teaches a value or range that is very close to, but does not overlap or touch the claimed range does not anticipate the claimed range.

• Review Ed9 10.2019: 2131.03

Evidence of secondary considerations, such as unexpected results or commercial success, is irrelevant to 35 U.S.C. 102 rejections and thus cannot overcome a rejection so based.

• Review Ed9 10.2019: 2131.04

“Arguments that the alleged anticipatory prior art is ‘nonanalogous art’ or ‘teaches away from the invention’ or is not recognized as solving the problem solved by the claimed invention, [are] not ‘germane’ to a rejection under section 102.” A reference is no less anticipatory if, after disclosing the invention, the reference then disparages it. The question whether a reference “teaches away” from the invention is inapplicable to an anticipation analysis.

• Review Ed9 10.2019: 2131.05

This section covers pre-AIA 35 U.S.C. 102(a) in detail. It explains that 'known or used' means publicly known or used, that 'in this country' only applies to knowledge or use in the U.S., and that 'by others' means any combination of authors or inventors different than the inventive entity.

• Review Ed9 10.2019: 2132

This section covers publications as pre-AIA 35 U.S.C. 102(a) prior art. Included is a brief discussion on how a pre-AIA 35 U.S.C. 102(a) prima facie case is established if the reference publication is 'by others'. However, the applicant can rebut the prima facie case by showing that the reference's disclosure was derived from the applicant's own work. Lastly, a 37 C.F.R. 1.131 affidavit can be used to overcome a pre-AIA 35 U.S.C. 102(a) rejection.

• Review Ed9 10.2019: 2132.01

This section discusses pre-AIA 35 U.S.C. 102(b). Publications, patents, public uses and sales must occur “more than one year prior to the date of application for patent in the United States” in order to bar a patent under pre-AIA 35 U.S.C. 102(b). The 1-year grace period is extended to the next working day if it would otherwise end on a holiday or weekend. In addition the 1-year time bar is measured from the U.S. filing date.

• Review Ed9 10.2019: 2133

This section provides an overview of rejections based on 'public use' or 'on sale' focusing primarily on pre-AIA 35 U.S.C. 102(b). Pre-AIA 35 U.S.C. 102(b) “contains several distinct bars to patentability, each of which relates to activity or disclosure more than one year prior to the date of the application. Two of these - the ‘public use’ and the ‘on sale’ objections - are sometimes considered together although it is quite clear that either may apply when the other does not.” This section provides further details as well as policy considerations.

• Review Ed9 10.2019: 2133.03

This section covers the 'on sale' bar of pre-AIA 35 U.S.C. 102(b). The on-sale bar is triggered if the invention is both the subject of a commercial offer for sale not primarily for experimental purposes and is ready for patenting. This section discusses the meaning of 'sale', offers for sale, sale by inventor, assignee or others associated with the inventor in the course of business, and sales by independent third parties.

• Review Ed9 10.2019: 2133.03(b)

This section covers the phrase 'in this country' in relation to pre-AIA 35 U.S.C. 102(b). For purposes of pre-AIA 35 U.S.C. 102(b) public use or on sale activity must take place in the United States.

• Review Ed9 10.2019: 2133.03(d)

This section explains how a use or sale that was experimental will not lead to a bar under pre-AIA 35 U.S.C. 102(b).

• Review Ed9 10.2019: 2133.03(e)

This section discusses pre-AIA 35 U.S.C. 102(d) which covers how a person shall be entitled to a patent unless the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than twelve months before the filing of the application in the United States.

• Review Ed9 10.2019: 2135

This section discusses pre-AIA 35 U.S.C. 102(d) which covers how a person shall be entitled to a patent unless the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than twelve months before the filing of the application in the United States.

• Review Ed9 10.2019: 2135.01

This section discusses pre-AIA 35 U.S.C. 102(f) which states that a person shall be entitled to a patent unless he did not himself invent the subject matter sought to be patented. A rejection under 35 U.S.C. 102(f) is proper where it can be shown that an applicant derived an invention from another. Derivation requires complete conception by another and communication to the alleged deriver. The party alleging derivation does not have to prove an actual reduction to practice, derivation of public knowledge, or derivation in this country. In addition, there is a discussion that pre-AIA 35 U.S.C. 102(f) may apply where pre-AIA 35 U.S.C. 102(a) and pre-AIA 35 U.S.C. 102(e) are not available statutory grounds for rejection.

• Review Ed9 10.2019: 2137

This section covers pre-AIA 35 U.S.C. 102(g). Pre-AIA 35 U.S.C. 102(g) issues such as conception, reduction to practice and diligence, while more commonly applied to interference matters, also arise in other contexts.

• Review Ed9 10.2019: 2138

This section covers the scope and content of the prior art. Prior art available under 35 U.S.C. 102 is available under 35 U.S.C. 103. The content of the prior art is determined at the time the invention was made to avoid hindsight. This section also discusses the evidence required to show conditions of pre-AIA 35 U.S.C. 103(c) apply.

• Review Ed9 10.2019: 2141.01

This section covers alternative limitations including Markush groups, 'or' terminology, and the use of the term 'optionally'. A Markush claim is commonly formatted as: ‘‘selected from the group consisting of A, B, and C;’’ Alternative expressions using “or” are acceptable, such as “wherein R is A, B, C, or D.” An alternative format which requires some analysis before concluding whether or not the language is indefinite involves the use of the term “optionally.”

• Review Ed9 10.2019: 2173.05(h)

The reexamination proceeding provides a complete reexamination of the patent claims on the basis of prior art patents and printed publications. This section covers the scope of the ex parte reexamination including prior art patents or printed publications, and double patenting as well as compliance with 35 U.S.C. 112 where new claims are presented or where any part of the disclosure is amended. In addition, this section discusses how claims in the proceeding must not enlarge the scope of the claims of the patent. Other matters are also discussed.

• Review Ed9 10.2019: 2258