1.131 affidavits
From Patentbarquestions
Q) 37 CFR 1.131 (10.02.6a)
6. According to USPTO rules and procedure, which of the following can be overcome by an affidavit under 37 CFR 1.131?
(A) A rejection properly based on statutory double patenting.
(B) A rejection properly made under 35 USC 102(d) based on a foreign patent granted in a non-WTO country.
(C) A rejection properly made under 35 USC 102(a) based on a journal article dated one month prior to
the effective filing date of the U.S. patent application. Applicant has clearly admitted on the record
during the prosecution of the application that subject matter in the journal article relied on by the
examiner is prior art.
(D) A rejection properly made under 35 USC 102(b) based on a U.S. patent that issued 18 months before
the effective filing date of the application. The patent discloses, but does not claim, the invention.
(E) None of the above.
6. ANSWER: (E) is the correct answer. MPEP § 715. (A) is incorrect because an affidavit
under 37 C.F.R. § 1.131 is not appropriate where the reference is a prior U.S. patent to the same
entity, claiming the same invention. MPEP § 715. (B) and (D) are each incorrect because an
affidavit under 37 C.F.R. § 1.131 is not appropriate where the reference is a statutory bar under
35 U.S.C. § 102(d) as in (B) or a statutory bar under 35 U.S.C. § 102(b) as in (D). MPEP § 715.
(C) is incorrect because an affidavit under 37 C.F.R. § 1.131 is not appropriate where applicant
has clearly admitted on the record that subject matter relied on in the reference is prior art.
MPEP § 715.
§ 1.131 Affidavit or declaration of prior invention.
(a) When any claim of an application or a patent under reexamination is rejected, the inventor of the subject matter of the rejected claim, the owner of the patent under reexamination, or the party qualified under §§ 1.42, 1.43, or 1.47, may submit an appropriate oath or declaration to establish invention of the subject matter of the rejected claim prior to the effective date of the reference or activity on which the rejection is based. The effective date of a U.S. patent, U.S. patent application publication, or international application publication under PCT Article 21(2) is the earlier of its publication date or date that it is effective as a reference under 35 U.S.C. 102(e). Prior invention may not be established under this section in any country other than the United States, a NAFTA country, or a WTO member country. Prior invention may not be established under this section before December 8, 1993, in a NAFTA country other than the United States, or before January 1, 1996, in a WTO member country other than a NAFTA country. Prior invention may not be established under this section if either:
(1) The rejection is based upon a U.S. patent or U.S. patent application publication of a pending or patented application to another or others which claims the same patentable invention as defined in § 41.203(a) of this title, in which case an applicant may suggest an interference pursuant to § 41.202(a) of this title; or
(2) The rejection is based upon a statutory bar.
(b) The showing of facts shall be such, in character and weight, as to establish reduction to practice prior to the effective date of the reference, or conception of the invention prior to the effective date of the reference coupled with due diligence from prior to said date to a subsequent reduction to practice or to the filing of the application. Original exhibits of drawings or records, or photocopies thereof, must accompany and form part of the affidavit or declaration or their absence must be satisfactorily explained.
