707.05(f) Declassfied printed matter
From Patentbarquestions
Q) Declassified Reference (4.00.34a)
34. You have just received an Office action rejecting all of your claims in your patent
application as anticipated under 35 U.S.C. § 102(a) using published declassified material as the
reference. The examiner explains that the declassified material is being used as prima facie
evidence of prior knowledge as of the printing date. The published declassified material contains
information showing that it was printed six months before the filing date of the application, and
that it was published two months after the application’s filing date. You correctly note that
although the printing date precedes your application filing date by six months, you note that the
publication was classified as of its printing date (thus, available only for limited distribution even
when the application was filed), and was not declassified until its publication date (when it
became available to the general public). Each element of the claimed invention is described in
the publication of the declassified material. Which of the following statements is true?
(A) The rejection is not supported by the reference.
(B) The publication is not available as a reference because it did not become available
to the general public until after the filing date of your patent application.
(C) The publication is prima facie evidence of prior knowledge even though it was
available only for limited distribution as of its printing date.
(D) The publication constitutes an absolute statutory bar.
(E) It is not possible to use a Rule 131 affidavit or declaration to antedate the printing
date of the publication.
34. ANSWER: (C). As stated in MPEP § 707.05(f), “For the purpose of anticipation
predicated upon prior knowledge under 35 U.S.C. 102(a), the above noted declassified material
may be taken as prima facie evidence of such prior knowledge as of its printing date even though
such material was classified at that time.” (A) is incorrect. The reference supports the rejection
inasmuch as each element of the claimed invention is disclosed in the reference. (B), (D), and
(E) are not the most correct. MPEP § 707.05(f).
Q) 102 dates (10.02.17a)
17. Which of the following statements is true?
(A) In the context of 35 USC 102(b), a magazine need only be placed in the mail to be effective
as a printed publication.
(B) The earliest date declassified printed material may be taken as prima facie evidence of prior knowledge
under 35 USC 102(a) is as of the date the material is cataloged and placed on the shelf of a public library.
(C) Declassified printed material is effective as a printed publication under 35 USC 102(b)
as of the date of its release following declassification.
(D) The American Inventors Protection Act (AIPA) amended 35 USC 102(e) to provide that U.S. patents,
U.S. application publications, and certain international application publications can be used as prior art
under 35 USC 102(e) based on their earliest effective filing date only against applications filed on or
after November 29, 2000.
(E) The American Inventors Protection Act (AIPA) amended 35 USC 102(e) to provide that U.S. patents,
U.S. application publications, and certain international application publications can be used as prior art
under 35 USC 102(e) based on their earliest effective filing date only against applications filed prior to
November 29, 2000 which have been voluntarily published.
17. ANSWER: (C) is correct. MPEP § 707.05(f) states, “In the use of [declassified material] …
as an anticipatory publication, the date of release following declassification is the effective date
of publication within the meaning of the statute.” (A) is wrong. MPEP § 706.02(a) states, “A
magazine is effective as a printed publication under 35 U.S.C. § 102(b) as of the date it reached
the addressee and not the date it was placed in the mail.” (B) is wrong. MPEP § 707.05(f)
states, “For the purpose of anticipation predicated upon prior knowledge under 35 U.S.C.
§102(a) the above noted declassified material may be taken as prima facie evidence of such prior
knowledge as of its printing date even though such material was classified at that time.” (D) and
(E) are wrong. The AIPA amended 35 U.S.C. § 102(e) to provide that U.S. patents, U.S.
application publications, and certain international application publications can be used as prior
art under 35 U.S.C. § 102(e) based on their earliest effective filing date against applications filed
on or after November 29, 2000, and applications filed prior to November 29, 2000 which have
been voluntarily published. MPEP § 706.02(a).
- 707.05(f) Effective Dates of Declassified Printed Matter
- [...]
- For the purpose of anticipation predicated upon prior knowledge under 35 U.S.C. 102(a) the above noted
- declassified material may be taken as prima facie evidence of such prior knowledge as of its printing
- date even though such material was classified at that time. When so used the material does not
- constitute an absolute statutory bar and its printing date may be antedated by an affidavit or
- declaration under 37 CFR 1.131.
