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2132    Pre-AIA 35 U.S.C. 102(a) [R-11.2013]

[Editor Note: This MPEP section is not 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 § 2150 et seq. for examination of applications subject to those provisions. See MPEP § 2152 et seq. for a detailed discussion of AIA 35 U.S.C. 102(a) and (b).]

Pre-AIA 35 U.S.C. 102   Conditions for patentability; novelty and loss of right to patent.

A person shall be entitled to a patent unless -

  • (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.

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I.   “KNOWN OR USED”

A.   “Known or Used” Means Publicly Known or Used

“The statutory language ‘known or used by others in this country’ [pre-AIA 35 U.S.C. 102(a)], means knowledge or use which is accessible to the public.” Carellav. Starlight Archery, 804 F.2d 135, 231 USPQ 644 (Fed. Cir. 1986). The knowledge or use is accessible to the public if there has been no deliberate attempt to keep it secret. W. L. Gore & Assoc. v.Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983).

See MPEP § 2128 - § 2128.02 for case law concerning public accessibility of publications.

B.   Another’s Sale of a Product Made by a Secret Process Can Be a Pre-AIA 35 U.S.C. 102(a) Public Use if the Process Can Be Determined by Examining the Product

“The nonsecret use of a claimed process in the usual course of producing articles for commercial purposes is a public use.” But a secret use of the process coupled with the sale of the product does not result in a public use of the process unless the public could learn the claimed process by examining the product. Therefore, secret use of a process by another, even if the product is commercially sold, cannot result in a rejection under pre-AIA 35 U.S.C. 102(a) if an examination of the product would not reveal the process. Id.

II.   “IN THIS COUNTRY”

  Only Knowledge or Use in the U.S. Can Be Used in a Pre-AIA 35 U.S.C. 102(a) Rejection

The knowledge or use relied on in a pre-AIA 35 U.S.C. 102(a) rejection must be knowledge or use “in this country.” Prior knowledge or use which is not present in the United States, even if widespread in a foreign country, cannot be the basis of a rejection under pre-AIA 35 U.S.C. 102(a). In reEkenstam, 256 F.2d 321, 118 USPQ 349 (CCPA 1958). Note that the changes made to pre-AIA 35 U.S.C. 104 by NAFTA (Public Law 103-182) and Uruguay Round Agreements Act (Public Law 103-465) do not modify the meaning of “in this country” as used in pre-AIA 35 U.S.C. 102(a) and thus “in this country” still means in the United States for purposes of pre-AIA 35 U.S.C. 102(a) rejections.

III.   “BY OTHERS”

  “Others” Means Any Combination of Authors or Inventors Different Than the Inventive Entity

The term “others” in pre-AIA 35 U.S.C. 102(a) refers to any entity which is different from the inventive entity. The entity need only differ by one person to be “by others.” This holds true for all types of references eligible as prior art under pre-AIA 35 U.S.C. 102(a) including publications as well as public knowledge and use. Any other interpretation of pre-AIA 35 U.S.C. 102(a) “would negate the one year [grace] period afforded under § 102(b).” In re Katz, 687 F.2d 450, 215 USPQ 14 (CCPA 1982).

IV.   “PATENTED IN THIS OR A FOREIGN COUNTRY”

See MPEP § 2126 for information on the use of secret patents as prior art.

2132.01   Publications as Pre-AIA 35 U.S.C. 102(a) Prior Art [R-11.2013]

[Editor Note: This MPEP section is not 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 § 2150 et seq. for examination of applications subject to those provisions. See MPEP § 2152 et seq. for a detailed discussion of AIA 35 U.S.C. 102(a) and (b).]

I.   Pre-AIA 35 U.S.C. 102(a) PRIMA FACIE CASE IS ESTABLISHED IF REFERENCE PUBLICATION IS “BY OTHERS”

A prima facie case is made out under pre-AIA 35 U.S.C. 102(a) if, within 1 year of the filing date, the invention, or an obvious variant thereof, is described in a “printed publication” whose authorship differs in any way from the inventive entity unless it is stated within the publication itself that the publication is describing the applicant’s work. In re Katz, 687 F.2d 450, 215 USPQ 14 (CCPA 1982). See MPEP § 2128 for case law on what constitutes a “printed publication.” Note that when the reference is a U.S. patent published within the year prior to the application filing date, a pre-AIA 35 U.S.C. 102(e) rejection should be made. See MPEP § 2136 - § 2136.05 for case law dealing with pre-AIA 35 U.S.C. 102(e).

II.   APPLICANT CAN REBUT PRIMA FACIE CASE BY SHOWING REFERENCE’S DISCLOSURE WAS DERIVED FROM APPLICANT’S OWN WORK

Applicant’s disclosure of his or her own work within the year before the application filing date cannot be used against him or her under pre-AIA 35 U.S.C. 102(a). In re Katz, 687 F.2d 450, 215 USPQ 14 (CCPA 1982) (discussed below). Therefore, where the applicant is one of the co-authors of a publication cited against his or her application, the publication may be removed as a reference by the filing of affidavits made out by the other authors establishing that the relevant portions of the publication originated with, or were obtained from, applicant. Such affidavits are called disclaiming affidavits. Ex parte Hirschler, 110 USPQ 384 (Bd. App. 1952). The rejection can also be overcome by submission of a specific declaration by the applicant establishing that the article is describing applicant’s own work. In re Katz, 687 F.2d 450, 215 USPQ 14 (CCPA 1982). However, if there is evidence that the co-author has refused to disclaim inventorship and believes himself or herself to be an inventor, applicant’s affidavit will not be enough to establish that applicant is the sole inventor and the rejection will stand. Ex parte Kroger, 219 USPQ 370 (Bd. Pat. App. & Int. 1982) (discussed below). It is also possible to overcome the rejection by adding the coauthors as inventors to the application if the requirements of 35 U.S.C. 116, third paragraph are met. In reSearles, 422 F.2d 431, 164 USPQ 623 (CCPA 1970).

In In re Katz, 687 F.2d 450, 215 USPQ 14 (CCPA 1982), Katz stated in a declaration that the coauthors of the publication, Chiorazzi and Eshhar, “were students working under the direction and supervision of the inventor, Dr. David H. Katz.” The court held that this declaration, in combination with the fact that the publication was a research paper, was enough to establish Katz as the sole inventor and that the work described in the publication was his own. In research papers, students involved only with assay and testing are normally listed as coauthors but are not considered co-inventors.

In Ex parte Kroger, 219 USPQ 370 (Bd. Pat. App. & Inter. 1982), Kroger, Knaster and others were listed as authors on an article on photovoltaic power generation. The article was used to reject the claims of an application listing Kroger and Rod as inventors. Kroger and Rod submitted affidavits declaring themselves to be the inventors. The affidavits also stated that Knaster merely carried out assignments and worked under the supervision and direction of Kroger. The Board stated that if this were the only evidence in the case, it would be established, under In re Katz, that Kroger and Rod were the only inventors. However, in this case, there was evidence that Knaster had refused to sign an affidavit disclaiming inventorship and Knaster had introduced evidence into the case in the form of a letter to the PTO in which he alleged that he was a co-inventor. The Board held that the evidence had not been fully developed enough to overcome the rejection. Note that the rejection had been made under pre-AIA 35 U.S.C. 102(f) but the Board treated the issue the same as if it had arisen under pre-AIA 35 U.S.C. 102(a). See also case law dealing with overcoming pre-AIA 35 U.S.C. 102(e) rejections as presented in MPEP § 2136.05. Many of the issues are the same.

III.   A 37 CFR 1.131 AFFIDAVIT CAN BE USED TO OVERCOME A Pre-AIA 35 U.S.C. 102(a) REJECTION

When the reference is not a statutory bar under pre-AIA 35 U.S.C. 102(b), (c), or (d), applicant can overcome the rejection by swearing back of the reference through the submission of an affidavit under 37 CFR 1.131. In re Foster, 343 F.2d 980, 145 USPQ 166 (CCPA 1965). If the reference is disclosing applicant’s own work as derived from him or her, applicant may submit either a 37 CFR 1.131 affidavit to antedate the reference or a 37 CFR 1.132 affidavit to show derivation of the reference subject matter from applicant and invention by applicant. In re Facius, 408 F.2d 1396, 161 USPQ 294 (CCPA 1969). See MPEP § 715 for more information on when an affidavit under 37 CFR 1.131 can be used to overcome a reference and what evidence is required.

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Last Modified: 03/27/2014 10:10:33