MPEP § 715 — MPEP § 715
Current through: 2022-07-01

715-Swearing Behind a Reference — Affidavit or Declaration Under 37 CFR 1.131(a) 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Chapter 0700 

 Section 715 
 

 
 
 
 
 
 715 Swearing Behind a Reference — Affidavit or Declaration Under 37 CFR
 1.131(a) [R-01.2024]
 

 [Editor Note: This MPEP section and the provisions of 37 CFR
 1.131(a) are not applicable to applications subject
 to the first inventor to file provisions of the AIA unless being relied upon to overcome
 a rejection under pre-AIA 35 U.S.C. 102(g) . See 35 U.S.C. 100
 (note) and MPEP § 2159 . For a discussion of
 37 CFR
 1.130 , affidavits or declarations of attribution or prior public
 disclosure in applications subject to the first inventor to file provisions of the AIA,
 see MPEP §
 717 . For a discussion of affidavits or declarations under
 37 CFR
 1.131(c) , see MPEP § 718 .] 

 
 37 CFR 1.131 Affidavit or declaration of prior invention or to disqualify commonly owned
 patent or published application as prior art. 

 
 (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 or § 1.46 , 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 the date
 that it is effective as a reference under 35 U.S.C. 102(e) as in effect
 on March 15, 2013. 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 naming another
 inventor which claims interfering subject matter as defined in §
 41.203(a) of this chapter, in which case an applicant
 may suggest an interference pursuant to § 41.202(a) of this chapter; or
 

 (2) The rejection is based upon a statutory bar.

 
 

 (b) The showing of facts for an oath or declaration under paragraph
 (a) of this section 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.
 

 
 
 (c) When any claim of an application or a patent under
 reexamination is rejected under 35 U.S.C. 103 as in effect on
 March 15, 2013, on a U.S. patent or U.S. patent application publication which is
 not prior art under 35 U.S.C. 102(b) as in effect
 on March 15, 2013, and the inventions defined by the claims in the application or
 patent under reexamination and by the claims in the patent or published
 application are not identical but are not patentably distinct, and the inventions
 are owned by the same party, the applicant or owner of the patent under
 reexamination may disqualify the patent or patent application publication as prior
 art. The patent or patent application publication can be disqualified as prior art
 by submission of:
 
 (1) A terminal disclaimer in accordance with §
 1.321(c) ; and
 

 (2) An oath or declaration stating that the
 application or patent under reexamination and patent or published
 application are currently owned by the same party, and that the inventor
 named in the application or patent under reexamination is the prior inventor
 under 35 U.S.C. 104 as in
 effect on March 15, 2013.
 

 
 

 (d) The provisions of this section apply to any
 application for patent, and to any patent issuing thereon, that contains, or
 contained at any time:
 
 (1) A claim to an invention that has an effective
 filing date as defined in § 1.109 that is before
 March 16, 2013; or
 

 (2) A specific reference under 35 U.S.C.
 120 , 121 , 365(c) , or 386(c) to any patent or
 application that contains, or contained at any time, a claim to an invention
 that has an effective filing date as defined in § 1.109 
 that is before March 16, 2013.
 

 
 

 (e) In an application for patent to which the provisions
 of § 1.130 apply, and to any patent issuing thereon, the
 provisions of this section are applicable only with respect to a rejection under
 35 U.S.C.
 102(g) as in effect on March 15, 2013.
 

 
 

 Under 37 CFR 1.131(a) which provides for the
 establishment of a date of completion of the invention in a NAFTA or WTO member country, as
 well as in the United States, an applicant or patent owner can establish a date of
 completion in a NAFTA member country on or after December 8, 1993, the effective date of
 section 331 of Public Law 103-182, the North American Free Trade Agreement Act, and can
 establish a date of completion in a WTO member country other than a NAFTA member country on
 or after January 1, 1996, the effective date of section 531 of Public Law 103-465, the
 Uruguay Round Agreements Act (URAA). Acts occurring prior to the effective dates of NAFTA
 or URAA may be relied upon to show completion of the invention; however, a date of
 completion of the invention may not be established under 37 CFR 1.131(a) 
 before December 8, 1993, in a NAFTA country or before January 1, 1996, in a WTO country
 other than a NAFTA country, in applications subject to pre-AIA 35 U.S.C. 104 .
 

 If a country joined the WTO after January 1, 1996, the effective date for
 proving inventive activity in that country for the purpose of pre-AIA 35 U.S.C. 104 
 and 37 CFR
 1.131(a) is the date the country becomes a member of the WTO. See
 MPEP §
 213.01 for a list that includes WTO member countries.
 

 Any printed publication or activity dated prior to the effective filing
 date of applicant's or patent owner's claimed invention, or any domestic patent of prior
 filing date, which is in its disclosure pertinent to the claimed invention, is available
 for use by the examiner as a reference in the rejection of the claims of the application or
 patent under reexamination. In addition, patent application publications and certain
 international application publications having an effective prior art date prior to the
 effective filing date of the claimed invention being examined may be used in a rejection of
 the claims. See MPEP §§
 2136 - 2136.03 . 
 

 Such a rejection may be overcome, in certain instances noted below, by
 filing of an affidavit or declaration under 37 CFR 1.131(a) , known as “swearing
 behind” the reference.
 

 It should be kept in mind that it is the rejection that is withdrawn and
 not the reference.
 

 I. SITUATIONS WHERE 37 CFR 1.131 AFFIDAVITS OR DECLARATIONS CAN BE USED Affidavits or declarations under 37 CFR 1.131 may be used to overcome
 rejections in applications subject to pre-AIA 35 U.S.C. 102 , and to
 overcome rejections under pre-AIA 35 U.S.C. 102(g) in
 applications subject to pre-AIA 35 U.S.C. 102(g) and current
 35 U.S.C.
 102 , for example:
 

 
 (A) To antedate a reference or activity that qualifies as prior art
 under pre-AIA 35
 U.S.C. 102(a) and not under pre-AIA 35 U.S.C.
 102(b) , e.g., where the prior art date under
 pre-AIA 35
 U.S.C. 102(a) of the patent, the publication or activity
 used to reject the claim(s) is less than 1 year prior to the effective filing date
 of applicant’s or patent owner’s claimed invention. If the prior art reference
 under pre-AIA 35
 U.S.C. 102(a) is a U.S. patent or U.S. patent application
 publication, the reference may not be antedated if it claims interfering subject
 matter as defined in 37 CFR 41.203(a) . See
 MPEP
 § 715.05 for a discussion of “interfering subject
 matter.”
 

 (B) To antedate a reference that qualifies as prior art under
 pre-AIA 35
 U.S.C. 102(e) , where the reference has a prior art date
 under pre-AIA 35
 U.S.C. 102(e) prior to the effective filing date of
 applicant’s claimed invention, and shows but does not claim interfering subject
 matter. See MPEP
 § 715.05 for a discussion of “interfering subject
 matter.” See MPEP
 §§ 2136 - 2136.03 for an explanation of
 what references qualify as prior art under pre-AIA 35 U.S.C. 102(e) . 
 

 (C) During examination, to antedate an activity that
 qualifies as prior art under pre-AIA 35 U.S.C. 102(g) and
 not under pre-AIA 35 U.S.C. 102(b) ,
 e.g., where the prior art date under pre-AIA 35 U.S.C. 102(g) of
 the activity used to reject the claim(s) is less than 1 year prior to the
 effective filing date of applicant’s or patent owner’s claimed invention. If the
 evidence of the activity under pre-AIA 35 U.S.C. 102(g) is a
 U.S. patent or U.S. patent application publication, the evidence may not be
 antedated if it claims interfering subject matter as defined in 37 CFR
 41.203(a) . See MPEP § 715.05 for a discussion of
 
 "interfering subject matter"
 
 
 .
 

 II. SITUATIONS WHERE 37 CFR 1.131(a) AFFIDAVITS OR DECLARATIONS ARE
 INAPPROPRIATE An affidavit or declaration under 37 CFR
 1.131(a) is not appropriate in the following situations:
 

 
 (A) Where the application is subject to current
 35
 U.S.C. 102 and the affidavit or declaration is not directed
 to evidence used in a rejection based on pre-AIA 35 U.S.C. 102(g) .
 

 (B) Where the reference publication date is more than 1 year prior to
 the effective filing date of applicant’s or patent owner’s claimed invention. Such
 a reference is a “statutory bar” under pre-AIA 35 U.S.C.
 102(b) as referenced in 37 CFR
 1.131(a)(2) . A reference that only qualifies as prior art
 under pre-AIA 35
 U.S.C. 102(a) or (e) is not a “statutory bar.”
 
 

 (C) Where the reference U.S. patent or U.S. patent application
 publication claims interfering subject matter as defined in 37 CFR
 41.203(a) . See MPEP § 715.05 for a discussion of
 
 "interfering subject matter"
 
 
 and
 MPEP Chapter
 2300 . Where the reference patent and the application or
 patent under reexamination are commonly owned, and the inventions defined by the
 claims in the application or patent under reexamination and by the claims in the
 patent are not identical but are not patentably distinct, a terminal disclaimer
 and an affidavit or declaration under 37 CFR 1.131(c) may be used to
 overcome a rejection under 35 U.S.C. 103 . See
 MPEP §
 718 . 
 

 (D) Where the reference is a foreign patent for the same invention to
 applicant or patent owner or their legal representatives or assigns issued prior
 to the filing date of the domestic application or patent on an application filed
 more than 12 months prior to the filing date of the domestic application. See
 pre-AIA 35
 U.S.C. 102(d) .
 

 (E) Where the effective filing date of applicant’s or patent owner’s
 claimed invention is prior to the effective date of the reference, an affidavit or
 declaration under 37 CFR 1.131(a) is unnecessary
 because the reference should not have been used. See MPEP §§
 211 - 216 .
 

 (F) Where the reference U.S. patent or U.S. patent application
 publication claims the same invention and the claimed invention under examination
 is subject to statutory double patenting. See MPEP § 804 .
 

 (G) Where applicant has clearly admitted on the
 record that the subject matter relied on in the rejection is prior art. In this
 case, that subject matter may be used as a basis for rejecting the applicant's
 claims and may not be overcome by an affidavit or declaration under
 37 CFR
 1.131 . In re Hellsund, 474 F.2d 1307, 177
 USPQ 170 (CCPA 1973); In re Garfinkel, 437 F.2d 1000, 168 USPQ
 659 (CCPA 1971); In re Blout, 333 F.2d 928, 142 USPQ 173 (CCPA
 1964); In re Lopresti, 333 F.2d 932, 142 USPQ 177 (CCPA
 1964).
 

 (H) Where the subject matter relied upon is prior art under
 pre-AIA 35
 U.S.C. 102(f) .
 

 (I) Where the subject matter corresponding to a lost count in an
 interference is either prior art under pre-AIA 35 U.S.C. 102(g) or
 barred to applicant by the doctrine of interference estoppel. In re
 Bandel , 348 F.2d 563, 146 USPQ 389 (CCPA 1965); In re
 Kroekel , 803 F.2d 705, 231 USPQ 640 (Fed. Cir. 1986). See also
 In re Deckler , 977 F.2d 1449, 24 USPQ2d 1448 (Fed. Cir.
 1992) (Under the principles of res judicata and
 collateral estoppel , applicant was not entitled to claims
 that were patentably indistinguishable from the claim lost in interference even
 though the subject matter of the lost count was not available for use in an
 obviousness rejection under 35 U.S.C. 103 ). But see
 In re Zletz , 893 F.2d 319, 13 USPQ2d 1320 (Fed. Cir. 1989)
 (A losing party to an interference, on showing that the invention now claimed is
 not “substantially the same” as that of the lost count, may employ the procedures
 of 37 CFR
 1.131(a) to antedate the filing date of an interfering
 application). On the matter of when a “lost count” in an interference constitutes
 prior art under pre-AIA 35 U.S.C. 102(g) , see In re
 McKellin , 529 F.2d 1342, 188 USPQ 428 (CCPA 1976) (A count is not
 prior art under pre-AIA 35 U.S.C. 102(g) as to the loser of an interference
 where the count was lost based on the winner’s foreign priority date). Similarly,
 where one party in an interference wins a count by establishing a date of
 invention in a NAFTA or WTO member country (see pre-AIA 35 U.S.C.
 104 ), the subject matter of that count is unpatentable to
 the other party by the doctrine of interference estoppel, even though it is not
 available as statutory prior art under pre-AIA 35 U.S.C. 102(g) . See
 MPEP §§
 2138.01 and 2138.02 .
 

 III. REFERENCE DATE TO BE OVERCOME The date to be overcome under 37 CFR 1.131(a) is the effective
 date of the reference (i.e., the date on which the reference is available as prior
 art).
 

 A. U.S. Patents, U.S. Patent Application Publications, and International
 Application Publications See MPEP §§ 2136 - 2136.03 for a detailed discussion of
 the effective date of a U.S. patent, U.S. patent application publication, or WIPO
 publication of an international application as a reference under pre-AIA 35 U.S.C.
 102(e) .
 

 The effective date of a domestic patent when used as a reference in a
 rejection under pre-AIA 35 U.S.C. 102(e) is not the foreign filing date to
 which the application for patent may have been entitled under 35 U.S.C.
 119(a) during examination. In re Hilmer, 359
 F.2d 859, 149 USPQ 480 (CCPA 1966). Therefore, the date to be overcome under
 37 CFR
 1.131(a) is the earlier of the actual filing date of the
 reference U.S. patent or U.S. patent application and the earliest claimed domestic
 benefit date that the reference U.S. patent or U.S. patent application publication is
 entitled to, but not the foreign priority date. When a U.S. patent or U.S. patent
 application publication reference claims the benefit of an earlier filed application,
 its effective date as a reference is determined under pre-AIA 35 U.S.C.
 102(e) . See MPEP §§ 2136 - 2136.03 .
 

 B. Foreign Patents See MPEP §§ 2126 through 2127 regarding
 date of availability of foreign patents as prior art.
 

 C. Printed Publications A printed publication, including a published foreign patent
 application, is effective as of its publication date, not its date of receipt by the
 publisher. For additional information regarding effective dates of printed
 publications, see MPEP
 §§ 2128 - 2128.02 .
 

 D. Activities An applicant may make an admission, or submit evidence of use of the
 invention or knowledge of the invention by others, or the examiner may have personal
 knowledge that the invention was used or known by others in this country. See
 MPEP
 §§ 2120.02 and 2133.03 . The effective date of the
 activity used to reject the claim(s) is the date the activity was first known to have
 occurred.
 

 FORM PARAGRAPHS Form paragraphs 7.57.fti - 7.64.fti may be used
 to respond to 37
 CFR 1.131(a) affidavits.
 

 ¶ 7.57.fti Affidavit or Declaration Under 37 CFR 1.131(a): Ineffective-
 Heading
 

 The [1] filed on [2] under
 37 CFR
 1.131(a) has been considered but is ineffective to overcome the
 [3] reference.
 

 Examiner Note:
 
 1. In bracket 1, insert either --affidavit-- or
 --declaration--.
 

 2. This form paragraph must be followed by one or more of form
 paragraphs 7.58.fti to 7.63.fti or a paragraph setting forth
 proper basis for the insufficiency, such as failure to establish acts performed in this
 country, or that the scope of the declaration or affidavit is not commensurate with the
 scope of the claim(s).
 
 
 

 ¶ 7.58.fti Affidavit or Declaration Under 37 CFR 1.131(a): Ineffective,
 Claiming Same Invention
 

 The [1] reference is a U.S. patent or U.S. patent application
 publication of a pending or patented application that claims the rejected invention. An
 affidavit or declaration is inappropriate under 37 CFR 1.131(a) when the reference is
 claiming interfering subject matter as defined in 37 CFR 41.203(a) , see MPEP Chapter
 2300 .
 If the reference and this application are not commonly owned, the reference can only be
 overcome by establishing priority of invention through interference proceedings. See MPEP
 Chapter 2300 for information on initiating interference proceedings. If the
 reference and this application are commonly owned, the reference may be disqualified as prior
 art by an affidavit or declaration under 37 CFR 1.131(c) . See MPEP § 718 .
 

 Examiner Note:
 
 1. If used to respond to the
 submission of an affidavit under 37 CFR 1.131(a) , this paragraph must
 be preceded by paragraph 7.57.fti.
 

 2. This form paragraph may be used without form paragraph
 7.57.fti 
 when an affidavit has not yet been filed, and the examiner desires to notify applicant
 that the submission of an affidavit under 37 CFR 1.131(a) would be
 inappropriate.
 
 
 

 ¶ 7.59.fti Affidavit or Declaration Under 37 CFR 1.131(a): Ineffective,
 Insufficient Evidence of Reduction to Practice Before Reference Date
 

 The evidence submitted is insufficient to establish a
 reduction to practice of the invention in this country or a NAFTA or WTO member country prior
 to the effective date of the [1] reference. [2] 

 Examiner Note:
 
 1. This form paragraph must be preceded by form
 paragraph 7.57.fti .
 

 2. An explanation of the lack of showing of the alleged
 reduction to practice must be provided in bracket 2.
 
 
 

 ¶ 7.60.fti Affidavit or Declaration Under 37 CFR 1.131(a): Ineffective,
 Reference Is a Statutory Bar
 

 The [1] reference is a statutory bar under
 pre-AIA 35 U.S.C.
 102(b) and thus cannot be overcome by an affidavit or declaration under
 37 CFR
 1.131(a) .
 

 Examiner Note:

 This form paragraph must be preceded by form paragraph
 7.57.fti .
 

 

 ¶ 7.61.fti Affidavit or Declaration Under 37 CFR 1.131(a): Ineffective,
 Insufficient Evidence of Conception
 

 The evidence submitted is insufficient to establish a
 conception of the invention prior to the effective date of the [1] reference.
 While conception is the mental part of the inventive act, it must be capable of proof, such as
 by demonstrative evidence or by a complete disclosure to another. Conception is more than a
 vague idea of how to solve a problem. The requisite means themselves and their interaction
 must also be comprehended. See Mergenthaler v. Scudder , 1897 C.D. 724, 81
 OG 1417 (D.C. Cir. 1897). [2] 

 Examiner Note:
 
 1. This form paragraph must be preceded by form
 paragraph 7.57.fti .
 

 2. An explanation of the deficiency in the showing of
 conception must be presented in bracket 2.
 

 3. If the affidavit additionally fails to establish
 either diligence or a subsequent reduction to practice, this form paragraph should be
 followed by form paragraph 7.62.fti and/or 7.63.fti . If either diligence or a
 reduction to practice is established, a statement to that effect should follow this
 paragraph.
 
 
 

 ¶ 7.62.fti Affidavit or Declaration Under 37 CFR 1.131(a): Ineffective,
 Diligence Lacking
 

 The evidence submitted is insufficient to establish
 diligence from a date prior to the date of reduction to practice of the [1] 
 reference to either a constructive reduction to practice or an actual reduction to practice.
 [2] 

 Examiner Note:
 
 1. This form paragraph must be preceded by form
 paragraph 7.57.fti .
 

 2. If the affidavit additionally fails to establish
 conception, this paragraph must also be preceded by form paragraph
 7.61.fti .
 If the affidavit establishes conception, a statement to that effect should be added to
 this paragraph.
 

 3. If the affidavit additionally fails to establish an
 alleged reduction to practice prior to the application filing date, this paragraph must
 be followed by form paragraph 7.63.fti . If such an alleged reduction to practice is
 established, a statement to that effect should be added to this
 paragraph.
 

 4. An explanation of the reasons for a holding of
 non-diligence must be provided in bracket 2.
 

 5. See MPEP § 715.07(a) which explains that
 diligence is not required after reduction to practice.
 
 
 

 ¶ 7.63.fti Affidavit or Declaration Under 37 CFR 1.131(a): Ineffective,
 Insufficient Evidence of Actual Reduction to Practice
 

 The evidence submitted is insufficient to establish the inventor’s
 alleged actual reduction to practice of the invention in this country or a NAFTA or WTO member
 country after the effective date of the [1] reference. [2] .
 

 Examiner Note:
 
 1. This form paragraph must be preceded by form
 paragraph 7.57.fti .
 

 2. If the alleged reduction to practice is prior to the
 effective date of the reference, do not use this paragraph. See form paragraph
 7.59.fti .
 

 3. If the affidavit additionally fails to establish
 either conception or diligence, form paragraphs 7.61.fti and/or
 7.62.fti 
 should precede this paragraph. If either conception or diligence is established, a
 statement to that effect should be included after this paragraph.
 

 4. An explanation of the lack of showing of the alleged
 reduction to practice must be given in bracket 2.
 
 
 

 ¶ 7.64.fti Affidavit or Declaration Under 37 CFR 1.131(a): Effective To
 Overcome Reference
 

 The [1] filed on [2] under 37 CFR 1.131(a) is
 sufficient to overcome the [3] reference.
 

 Examiner Note:
 
 1. In bracket 1, insert either --affidavit-- or
 --declaration--.
 

 2. In bracket 2, insert the filing date of the
 affidavit or declaration.
 

 3. In bracket 3, insert the name of the
 reference.
 
 
 

 
 715.01 37 CFR 1.131(a) Affidavits Versus 37 CFR 1.132
 Affidavits [R-08.2017]
 

 [Editor Note: This MPEP section is not applicable to applications
 subject to the first inventor to file provisions of the AIA unless being relied upon
 to overcome a rejection under pre-AIA 35 U.S.C. 102(g) . See
 35
 U.S.C. 100 (note) and MPEP §
 2159 . For a discussion of 37 CFR 1.130 ,
 affidavits or declarations of attribution or prior public disclosure in applications
 subject to the first inventor to file provisions of the AIA, see
 MPEP §
 717 . For a discussion of affidavits or declarations under
 37 CFR
 1.131(c) , see MPEP § 718 .] 

 The purpose of a 37 CFR 1.131(a) affidavit or
 declaration is to overcome a prior art rejection under pre-AIA 35 U.S.C.
 102 or 103 by proving invention of the
 claimed subject matter by the inventor or at least one joint inventor prior to the
 effective date of the reference or activity relied upon in the rejection.
 

 In some situations, an applicant may, alternatively, be able to overcome
 prior art rejections relying on references or activities which are available as prior
 art under pre-AIA 35
 U.S.C. 102(a) or references which are available as prior art under
 pre-AIA 35 U.S.C.
 102(e) by proving that the subject matter relied upon in the
 reference or activity was the inventor’s or at least one joint inventor’s own invention. 
 

 Similarly, where the reference relied upon in a 35 U.S.C. 103 
 rejection qualifies as prior art only under pre-AIA 35 U.S.C. 102(f) or (g) , or,
 in an application filed on or after November 29, 1999, under pre-AIA 35 U.S.C.
 102(e) , applicant may be able to overcome this rejection by
 proving that the subject matter relied upon and the claimed invention were commonly
 owned or subject to common assignment at the time the later invention was made. See
 MPEP §§
 2146 through 2146.03 .
 

 
 715.01(a) Reference Is a Patent or Published Application Naming
 Different Inventive Entity With at Least One Common Inventor [R-01.2024]
 

 [Editor Note: This MPEP section is not applicable to
 applications subject to the first inventor to file provisions of the AIA unless
 being relied upon to overcome a rejection under pre-AIA 35 U.S.C.
 102(g) . See 35 U.S.C. 100 (note) and
 MPEP § 2159 . For a discussion of 37 CFR
 1.130 , affidavits or declarations of attribution or prior
 public disclosure in applications subject to the first inventor to file provisions
 of the AIA, see MPEP § 717 . For a discussion of
 affidavits or declarations under 37 CFR 1.131(c) , see
 MPEP §
 718 .] 

 When subject matter disclosed in a patent or patent application
 publication (reference) naming an inventive entity including joint inventor S and
 another joint inventor is claimed in a later application naming sole inventor S
 without the joint inventor, the reference may be properly applied under
 pre-AIA 35
 U.S.C. 102(a), (e), or (f) until overcome by an affidavit or
 declaration under 37 CFR 1.131(a) showing prior
 invention (see MPEP §
 715 ) or by an affidavit or declaration under
 37 CFR
 1.132 traversing the rejection. An unequivocal declaration
 under 37 CFR
 1.132 by S that S conceived or invented the subject matter that
 was disclosed but not claimed in the patent or application publication and relied on
 in the rejection has been sufficient to overcome the rejection. In re
 DeBaun, 687 F.2d 459, 214 USPQ 933 (CCPA 1982))(declaration corroborated
 by attached drawing). However, an affidavit or declaration under 37 CFR 1.132 
 that is only a naked assertion of inventorship by an (joint) inventor who has an
 interest at stake and that fails to provide any context, explanation or evidence to
 support that assertion is insufficient to show that the relied-upon subject matter
 was the work of the inventive entity. See EmeraChem Holdings, LLC v.
 Volkswagen Grp. of Am., Inc., 859 F.3d 1341, 1345, 123 USPQ2d 1146, 1149
 (Fed. Cir. 2017) (The court found the declaration submitted by joint inventor
 Campbell more than twenty years after the invention insufficient to establish that he
 and Mr. Guth (deceased) alone invented the subject matter disclosed in a patent
 naming Campbell, Guth, Danziger, and Padron as joint inventors because "[n]othing in
 the declaration itself, or in addition to the declaration, provides any context,
 explanation, or evidence to lend credence to [Campbell’s] bare assertion."). Where
 the reference is a U.S. patent or patent application publication which includes a
 claim reciting the subject matter relied upon in a rejection and that subject matter
 anticipates or would render obvious the subject matter of a claim in the application
 under examination, a declaration under 37 CFR 1.132 must also explain
 the presence of the additional joint inventor in the reference (e.g., the disclosure
 in claim 1 of the reference is relied upon to reject the claims; the affidavit or
 declaration explains that S is the sole inventor of claim 1, and the additional joint
 inventor and S are joint inventors of claim 2 of the reference). Testimony or
 disclaimer from the other joint inventor(s) named in the reference is usually not
 required but, if submitted, should be considered by the examiner.
 

 Note that an affidavit or declaration under
 37 CFR
 1.131(a) cannot be used to overcome a rejection based on a U.S.
 patent or U.S. patent application publication naming a different inventive entity
 which claims interfering subject matter as defined in 37 CFR
 41.203(a) . See MPEP § 715.05 . See
 MPEP §
 716.10 for a discussion of the use of 37 CFR 1.132 
 affidavits or declarations to overcome rejections by establishing that the subject
 matter relied on in the patent or application publication was the invention of the
 inventor or at least one joint inventor named in the application under
 examination.
 

 For applications subject to AIA 35 U.S.C.
 102 , see MPEP §§ 717 and
 2155.01 .
 

 Although affidavits or declarations submitted for the purpose of
 establishing that the reference discloses the inventor’s or at least one joint
 inventor’s invention are properly filed under 37 CFR 1.132 , rather than
 37 CFR
 1.131(a) , such affidavits submitted improperly under
 37 CFR
 1.131(a) will be considered as though they were filed under
 37 CFR
 1.132 to traverse a ground of rejection. In re
 Facius, 408 F.2d 1396, 161 USPQ 294 (CCPA 1969).
 

 

 
 715.01(b) Reference and Application Have Common Assignee [R-01.2024]

 [Editor Note: This MPEP section is not applicable to
 applications subject to the first inventor to file provisions of the AIA unless
 being relied upon to overcome a rejection under pre-AIA 35 U.S.C.
 102(g) . See 35 U.S.C. 100 (note) and
 MPEP § 2159 . For a discussion of 37 CFR
 1.130 , affidavits or declarations of attribution or prior
 public disclosure in applications subject to the first inventor to file provisions
 of the AIA, see MPEP § 717 . For a discussion of
 affidavits or declarations under 37 CFR 1.131(c) , see
 MPEP §
 718 .] 

 The mere fact that the reference patent or application publication
 which discloses but does not claim certain subject matter and the application under
 examination which claims subject matter are owned by the same assignee does not avoid
 the necessity of filing an affidavit or declaration under 37 CFR
 1.131(a) , in the absence of a showing under 37 CFR 1.132 
 that the patentee derived (in the context of pre-AIA law) the subject matter relied
 on from the inventor ( MPEP § 716.10 ). The common assignee does not obtain any
 rights in this regard by virtue of common ownership which they would not have in the
 absence of common ownership. In re Frilette, 412 F.2d 269, 162
 USPQ 163 (CCPA 1969); Pierce v. Watson, 275 F.2d 890, 124 USPQ 356
 (D.C. Cir. 1960); In re Beck, 155 F.2d 398, 69 USPQ 520 (CCPA
 1946). Where, however, a rejection is applied under pre-AIA 35 U.S.C.
 102(f) / 103 or pre-AIA 35 U.S.C.
 102(g) / 103 , or, in an application filed
 on or after November 29, 1999, under pre-AIA 35 U.S.C.
 102(e) / 103 using the reference, a
 showing that the invention was commonly owned, or subject to an obligation of
 assignment to the same person, at the time the later invention was made, would
 preclude such a rejection or be sufficient to overcome such a rejection. See
 MPEP
 §§ 2146.01 - MPEP §
 2146.02 . For applications subject to current
 35
 U.S.C. 102 , see MPEP §
 2154.02(c) .
 

 

 
 715.01(c) Reference Is Publication of Inventor’s Own
 Invention [R-01.2024]
 

 [Editor Note: This MPEP section is not applicable to
 applications subject to the first inventor to file provisions of the AIA unless
 being relied upon to overcome a rejection under pre-AIA 35 U.S.C.
 102(g) . See 35 U.S.C. 100 (note) and
 MPEP § 2159 . For a discussion of 37 CFR
 1.130 , affidavits or declarations of attribution or prior
 public disclosure in applications subject to the first inventor to file provisions
 of the AIA, see MPEP § 717 . For a discussion of
 affidavits or declarations under 37 CFR 1.131(c) , see
 MPEP §
 718 .] 

 Unless it is a statutory bar, a rejection under pre-AIA 35 U.S.C.
 102 based on a publication may be overcome by a showing that it
 was published either by the inventor, at least one joint inventor, or on behalf of
 the inventor or at least one joint inventor. Because such a showing is not made to
 show a date of invention under 37 CFR 1.131(a) , the limitation
 in pre-AIA 35
 U.S.C. 104 and in 37 CFR 1.131(a) that only acts
 which occurred in this country or in a NAFTA or WTO member country may be relied on
 to establish a date of invention is not applicable. See MPEP § 716.10 
 regarding 37 CFR
 1.132 affidavits submitted to show that the reference is a
 publication of the inventor’s or a joint inventor’s own invention to overcome a
 rejection based on pre-AIA 35 U.S.C. 102 or 103 . For applications subject to
 current 35
 U.S.C. 102 , see MPEP §§
 2153 and 2154 .
 

 I. CO-AUTHORSHIP Where the inventor or at least one joint inventor is a co-author
 of a publication cited against an application, a rejection of the application
 under pre-AIA 35
 U.S.C. 102(a) or (e) based on the publication
 may be overcome by filing an affidavit or declaration of the inventor or at least
 one joint inventor under 37 CFR 1.131(a) .
 Alternatively, the rejection may be overcome by filing a specific affidavit or
 declaration of the inventor or at least one joint inventor under 37 CFR 1.132 
 establishing that the publication is describing work of the inventor or one or
 more joint inventors. An uncorroborated affidavit or declaration by a sole
 inventor or single joint inventor indicating that person to be the sole inventor
 and the other co-authors to have been merely working under their direction has
 been sufficient to remove the publication as a reference under pre-AIA 35 U.S.C.
 102(a) . In re Katz, 687 F.2d 450, 215
 USPQ 14 (CCPA 1982). However, an affidavit or declaration under 37 CFR 1.132 
 that is only a naked assertion of inventorship by an (joint) inventor who has an
 interest at stake and that fails to provide any context, explanation or evidence
 to support that assertion is insufficient to show that the relied-upon subject
 matter was the work of the inventive entity. See EmeraChem Holdings, LLC
 v. Volkswagen Grp. of Am., Inc., 859 F.3d 1341, 1345, 123 USPQ2d
 1146, 1149 (Fed. Cir. 2017) (The court found the declaration submitted by inventor
 Campbell more than twenty years after the invention insufficient to establish that
 he and Mr. Guth (deceased) were the inventors of the subject matter disclosed in a
 patent naming Campbell, Guth, Danziger, and Padron as inventors because “[n]othing
 in the declaration itself, or in addition to the declaration, provides any
 context, explanation, or evidence to lend credence to [Campbell’s] bare
 assertion.” Id. at 1345, 123 USPQ2d at 1149.).
 

 II. DERIVATION “Derivation” as used in the discussion below is in
 the context of pre-AIA law. “Derivation proceedings” as created in the AIA are
 discussed in MPEP § 2310 et seq. 

 When the unclaimed subject matter of a patent, application
 publication, or other publication is the inventor’s or at least one joint
 inventor’s own invention, a rejection, which is not a statutory bar, on that
 patent or publication may be removed by submission of evidence establishing the
 fact that the patentee, applicant of the published application, or author derived
 their knowledge of the relevant subject matter from the inventor or at least one
 joint inventor. Moreover the inventor or at least one joint inventor must further
 show that they made the invention upon which the relevant disclosure in the
 patent, application publication, or other publication is based. In re
 Mathews, 408 F.2d 1393, 161 USPQ 276 (CCPA 1969); In re
 Facius, 408 F.2d 1396, 161 USPQ 294 (CCPA 1969). See also
 MPEP §§
 2132.01 , 2136.05 and 2137 .
 

 

 
 715.01(d) Activities Applied Against the Claims [R-08.2017]

 [Editor Note: This MPEP section is not applicable to
 applications subject to the first inventor to file provisions of the AIA unless
 being relied upon to overcome a rejection under pre-AIA 35 U.S.C.
 102(g) . See 35 U.S.C. 100 (note) and
 MPEP § 2159 . For a discussion of 37 CFR
 1.130 , affidavits or declarations of attribution or prior
 public disclosure in applications subject to the first inventor to file provisions
 of the AIA, see MPEP § 717 . For a discussion of
 affidavits or declarations under 37 CFR 1.131(c) , see
 MPEP §
 718 .] 

 Unless it is a statutory bar, a rejection under pre-AIA 35 U.S.C.
 102 or 103 based on an activity showing
 that the claimed invention was used or known prior to the filing date of the
 application may be overcome by an affidavit or declaration under 37 CFR
 1.131(a) establishing a date of invention prior to the date of
 the activity. Alternatively, the applicant may overcome the rejection by filing a
 specific affidavit or declaration under 37 CFR 1.132 showing that the
 activity was performed by the inventor or at least one joint inventor.
 

 

 

 
 715.02 How Much of the Claimed Invention Must Be Shown, Including the
 General Rule as to Generic Claims [R-01.2024]
 

 [Editor Note: This MPEP section is not applicable to applications
 subject to the first inventor to file provisions of the AIA unless being relied upon
 to overcome a rejection under pre-AIA 35 U.S.C. 102(g) . See
 35
 U.S.C. 100 (note) and MPEP §
 2159 . For a discussion of 37 CFR 1.130 ,
 affidavits or declarations of attribution or prior public disclosure in applications
 subject to the first inventor to file provisions of the AIA, see
 MPEP §
 717 . For a discussion of affidavits or declarations under
 37 CFR
 1.131(c) , see MPEP § 718 .] 

 The 37 CFR 1.131(a) affidavit or
 declaration must establish possession of either the whole invention claimed or something
 falling within the claim (such as a species of a claimed genus), in the sense that the
 claim as a whole reads on it. In re Tanczyn, 347 F.2d 830, 146 USPQ
 298 (CCPA 1965) (Where applicant claims an alloy comprising both nitrogen and
 molybdenum, an affidavit showing applicant made an alloy comprising nitrogen but not
 molybdenum is not sufficient under 37 CFR 1.131 to overcome a rejection
 under pre‑AIA 35
 U.S.C. 103(a) based on the combined teachings of one reference
 disclosing an alloy comprising nitrogen but not molybdenum and a second reference
 disclosing an alloy comprising molybdenum but not nitrogen). Note, however, where the
 differences between the claimed invention and the disclosure of the reference(s) are so
 small as to render the claims obvious over the reference(s), an affidavit or declaration
 under 37 CFR
 1.131(a) is required to show no more than the reference shows.
 In re Stryker, 435 F.2d 1340, 168 USPQ 372 (CCPA 1971). In other
 words, where the examiner, in rejecting a claim under pre‑AIA 35 U.S.C.
 103(a) , has treated a claim limitation as being an obvious feature
 or modification of the disclosure of the reference(s) relied upon, without citation of a
 reference which teaches such feature or modification, a 37 CFR
 1.131(a) affidavit or declaration may be sufficient to overcome
 the rejection even if it does not show such feature or modification.
 

 Further, a 37 CFR 1.131(a) affidavit is not
 insufficient merely because it does not show the identical disclosure of the
 reference(s) or the identical subject matter involved in the activity relied upon. “[I]t
 is how much the reference shows of the claimed invention that is crucial to the
 requirement of what the affidavit must show.” In re Clarke , 356 F.2d
 987, 991, 148 USPQ 665, 669 (CCPA 1966). See also In re Wakefield, 
 422 F.2d 897, 164 USPQ 636 (CCPA 1970).
 

 Even if applicant’s 37 CFR 1.131(a) affidavit is not
 fully commensurate with the rejected claim, the applicant can still overcome the
 rejection by showing that the differences between the claimed invention and the showing
 under 37 CFR
 1.131(a) would have been obvious to one of ordinary skill in the
 art, in view of applicant’s 37 CFR 1.131(a) evidence, prior to
 the effective date of the reference(s) or the activity. Such evidence is sufficient
 because the inventor's possession of what is shown carries with it possession of
 variations and adaptations which would have been obvious, at the same time, to one of
 ordinary skill in the art. However, the affidavit or declaration must still establish
 possession of the invention by the inventor (i.e., the basic inventive concept) and not
 just of what one reference (in a combination of applied references) happens to show, if
 that reference does not itself teach the basic inventive concept. In re
 Spiller, 500 F.2d 1170, 182 USPQ 614 (CCPA 1974) (Claimed invention was use
 of electrostatic forces to adhere dry starch particles to a wet paper web on the
 Fourdrinier wire of a paper-making machine. 37 CFR 1.131 affidavit established
 use of electrostatic forces to adhere starch particles to wet blotting paper moved over
 a fluidized bed of starch particles prior to the applied reference date. Affidavit was
 sufficient in view of prior art reference showing that deposition of dry coatings
 directly on wet webs on the Fourdrinier wire of a paper-making machine was well known in
 the art prior to the date of the applied reference. The affidavit established possession
 of the basic invention by the inventor, i.e., use of electrostatic forces to adhere
 starch to wet paper.).
 

 I. SWEARING BEHIND ONE OF A PLURALITY OF COMBINED REFERENCES Applicant may overcome a pre‑AIA 35 U.S.C. 103(a) 
 rejection based on a combination of references by showing completion of the invention
 by the inventor prior to the effective date of any of the references; applicant need
 not antedate the reference with the earliest prior art date. However, as discussed
 above, applicant’s 37 CFR 1.131(a) affidavit must
 show possession by the inventor of either the whole invention as claimed or something
 falling within the claim(s) before the prior art date of the reference being
 antedated; it is not enough merely to show possession of what the reference happens
 to show if the reference does not teach the basic inventive concept.
 

 Where a claim has been rejected under pre‑AIA 35 U.S.C.
 103(a) based on Reference A in view of Reference B, with the
 prior art date of secondary Reference B being earlier than that of Reference A, the
 applicant can rely on the teachings of Reference B to show that the differences
 between what is shown in the 37 CFR 1.131(a) affidavit or
 declaration and the claimed invention would have been obvious to one of ordinary
 skill in the art before the prior art date of Reference A. However, the
 37 CFR
 1.131(a) affidavit or declaration must still establish the
 inventor's possession of the claimed invention, not just what Reference A shows, if
 Reference A does not teach the basic inventive concept.
 

 II. GENERAL RULE AS TO GENERIC CLAIMS A reference or activity applied against generic claims may (in most
 cases) be antedated as to such claims by an affidavit or declaration under
 37 CFR
 1.131(a) showing completion of the invention of only a single
 species, within the genus, before the prior art date of the reference or activity
 (assuming, of course, that the reference or activity is not a statutory bar or a
 patent, or an application publication, claiming the same invention). See Ex
 parte Biesecker, 144 USPQ 129 (Bd. App. 1964). See, also, In re
 Fong, 288 F.2d 932, 129 USPQ 264 (CCPA 1961); In re
 Dafano, 392 F.2d 280, 157 USPQ 192 (CCPA 1968) (distinguishing chemical
 species of genus compounds from embodiments of a single invention). See, however,
 MPEP §
 715.03 for practice relative to cases in unpredictable
 arts.
 

 

 
 715.03 Genus-Species, Practice Relative to Cases Where Predictability
 Is in Question [R-01.2024]
 

 [Editor Note: This MPEP section is not applicable to applications
 subject to the first inventor to file provisions of the AIA unless being relied upon
 to overcome a rejection under pre-AIA 35 U.S.C. 102(g) . See
 35
 U.S.C. 100 (note) and MPEP §
 2159 . For a discussion of 37 CFR 1.130 ,
 affidavits or declarations of attribution or prior public disclosure in applications
 subject to the first inventor to file provisions of the AIA, see
 MPEP §
 717 . For a discussion of affidavits or declarations under
 37 CFR
 1.131(c) , see MPEP § 718 .] 

 Where generic claims have been rejected on a reference or activity which
 discloses a species not antedated by the affidavit or declaration, the rejection will
 not ordinarily be withdrawn, subject to the rules set forth below, unless the applicant
 is able to establish the inventor's possession of the generic invention before the prior
 art date of the reference or activity. In other words, the affidavit or declaration
 under 37 CFR
 1.131(a) must show as much as the minimum disclosure required by a
 patent specification to furnish support for a generic claim.
 

 I. REFERENCE OR ACTIVITY DISCLOSES SPECIES 

 A. Species Claim Where the claim under rejection recites a species and the
 reference or activity discloses the claimed species, the rejection can be overcome
 under 37 CFR
 1.131(a) directly by showing prior completion of the claimed
 species or indirectly by a showing of prior completion of a different species
 coupled with a showing that the claimed species would have been an obvious
 modification of the species completed by the inventor. See In re
 Spiller, 500 F.2d 1170, 182 USPQ 614 (CCPA 1974).
 

 B. Genus Claim The principle is well established that the disclosure of a species
 in a cited reference is sufficient to prevent a later applicant from obtaining a
 “generic claim.” In re Gosteli, 872 F.2d 1008, 10 USPQ2d 1614
 (Fed. Cir. 1989); In re Slayter, 276 F.2d 408, 125 USPQ 345
 (CCPA 1960).
 

 Where the only pertinent disclosure in the reference or activity
 is a single species of the claimed genus, the applicant can overcome the rejection
 directly under 37 CFR 1.131(a) by showing the
 inventor's prior possession of the species disclosed in the reference or activity.
 On the other hand, a reference or activity which discloses several species of a
 claimed genus can be overcome directly under 37 CFR
 1.131(a) only by a showing that the inventor completed,
 prior to the date of the reference or activity, all of the species shown in the
 reference. In re Stempel, 241 F.2d 755, 113 USPQ 77 (CCPA
 1957).
 

 Proof of prior completion of a species different from the species
 of the reference or activity will be sufficient to overcome a reference indirectly
 under 37 CFR
 1.131(a) if the species shown in the reference or activity
 would have been obvious in view of the species shown to have been made by the
 inventor. In re Clarke, 356 F.2d 987, 148 USPQ 665 (CCPA 1966);
 In re Plumb, 470 F.2d 1403, 176 USPQ 323 (CCPA 1973);
 In re Hostettler , 356 F.2d 562, 148 USPQ 514 (CCPA 1966).
 Alternatively, if the applicant cannot show the inventor's possession of the
 species of the reference or activity in this manner, the applicant may be able to
 antedate the reference or activity indirectly by, for example, showing prior
 completion of one or more species, placing the inventor in possession of the
 claimed genus prior to the reference’s or activity’s date. The test is whether the
 species completed by the inventor prior to the reference date or the activity’s
 date provided an adequate basis for inferring that the invention has generic
 applicability. In re Plumb, 470 F.2d 1403, 176 USPQ 323 (CCPA
 1973); In re Rainer, 390 F.2d 771, 156 USPQ 334 (CCPA 1968);
 In re Clarke, 356 F.2d 987, 148 USPQ 665 (CCPA 1966);
 In re Shokal, 242 F.2d 771, 113 USPQ 283 (CCPA 1957).
 

 It is not necessary for the affidavit evidence to show that the
 inventor viewed the invention as encompassing more than the species actually made.
 The test is whether the facts set out in the affidavit are such as would persuade
 one skilled in the art that the inventor possessed so much of the invention as is
 shown in the reference or activity. In re Schaub, 537 F.2d 509,
 190 USPQ 324 (CCPA 1976).
 

 C. Species Versus Embodiments References or activities which disclose one or more embodiments of
 a single claimed invention can be overcome by filing a 37 CFR
 1.131(a) affidavit showing prior completion of a single
 embodiment of the invention, whether it is the same or a different embodiment from
 that disclosed in the reference or activity. See In re Fong ,
 288 F.2d 932, 936, 129 USPQ 264, 267-68 (CCPA 1961) (Where applicant discloses and
 claims a washing solution comprising a detergent and polyvinylpyrrolidone (PVP),
 with no criticality alleged as to the particular detergent used, the PVP being
 used as a soil-suspending agent to prevent the redeposition of the soil removed,
 the invention was viewed as the use of PVP as a soil-suspending agent in washing
 with a detergent. The disclosure in the reference of the use of PVP with two
 detergents, both of which differed from that shown in applicant’s
 37 CFR
 1.131(a) affidavit, was considered a disclosure of different
 embodiments of a single invention, rather than species of a claimed genus). In
 contrast, in evaluating a declaration or affidavit under 37 CFR 1.131(a) in
 genus/species disclosures, “[i]t is necessary that the species which were reduced
 to practice provide an adequate basis for inferring that the invention has generic
 applicability.” In re DaFano , 392 F.2d 280, 284 157 USPQ 192,
 196 (CCPA 1968). 
 

 II. REFERENCE OR ACTIVITY DISCLOSES CLAIMED GENUS In general, where the reference or activity discloses the claimed
 genus, a showing of completion of a single species within the genus is sufficient to
 antedate the reference or activity under 37 CFR 1.131(a) . Ex
 parte Biesecker, 144 USPQ 129 (Bd. App. 1964).
 

 In cases where predictability is in question, on the other hand, a
 showing of prior completion of one or a few species within the disclosed genus is
 generally not sufficient to overcome the reference or activity. In re
 Shokal, 242 F.2d 771, 113 USPQ 283 (CCPA 1957). The test is whether the
 species completed by the inventor prior to the reference date or the date of the
 activity provided an adequate basis for inferring that the invention has generic
 applicability. In re Mantell, 454 F.2d 1398, 172 USPQ 530 (CCPA
 1973); In re Rainer, 390 F.2d 771, 156 USPQ 334 (CCPA 1968);
 In re DeFano, 392 F.2d 280, 157 USPQ 192 (CCPA 1968);
 In re Clarke, 356 F.2d 987, 148 USPQ 665 (CCPA 1965). “[I]n the
 case of a small genus such as the halogens, consisting of four species, a reduction
 to practice of three, or perhaps even two, might serve to complete the generic
 invention, while in the case of a genus comprising hundreds of species, a
 considerably larger number of reductions to practice would probably be necessary.”
 Shokal, 242 F.2d at 773, 113 USPQ at 285. 
 

 It is not necessary for the affidavit evidence to show that the
 inventor viewed the invention as encompassing more than the species the inventor
 actually made. The test is whether the facts set out in the affidavit are such as
 would persuade one of ordinary skill in the art that the inventor possessed so much
 of the invention as is shown in the reference. In re Schaub, 537
 F.2d 509, 512, 190 USPQ 324, 326 (CCPA 1976).
 

 

 
 715.04 Who May Make Affidavit or Declaration Under 37 CFR 1.131(a);
 Formal Requirements of Affidavits and Declarations [R-01.2024]
 

 [Editor Note: This MPEP section is not applicable to applications
 subject to the first inventor to file provisions of the AIA unless being relied upon
 to overcome a rejection under pre-AIA 35 U.S.C. 102(g) . See
 35
 U.S.C. 100 (note) and MPEP §
 2159 . For a discussion of 37 CFR 1.130 ,
 affidavits or declarations of attribution or prior public disclosure in applications
 subject to the first inventor to file provisions of the AIA, see
 MPEP §
 717 . For a discussion of affidavits or declarations under
 37 CFR
 1.131(c) , see MPEP § 718 .] 

 I. WHO MAY MAKE AFFIDAVIT OR DECLARATION Affidavits or declarations filed under 37 CFR
 1.131 to overcome a rejection under pre-AIA 35 U.S.C.
 102 or 103 must be made by either:
 

 
 (A) The entire inventive entity (i.e., the inventor) of the subject
 matter claimed. 
 

 (B) Less than all named joint inventors of an application if it is
 shown by affidavit or declaration that less than all named joint inventors of
 an application invented the subject matter of the claim or claims under
 rejection. For example, one of two joint inventors is accepted where it is
 shown that one of the joint inventors is the sole inventor of the claim or
 claims under rejection.
 

 (C) For affidavits and declarations submitted in an application
 filed before September 16, 2012, a joint inventor or assignee under
 pre-AIA 37 CFR 1.47 if a petition under
 pre-AIA 37 CFR 1.47 was granted or the application was
 accepted under pre-AIA 37 CFR 1.42 or
 1.43 . 
 

 (D) For affidavits and declarations in applications filed before
 September 16, 2012, the legal representative of a deceased, insane or otherwise
 legally incapacitated sole inventor, or joint inventor when item (b) above
 applies, under pre-AIA 37 CFR 1.42 or
 1.43 .
 

 (E) For affidavits and declarations submitted in
 applications filed on or after September 16, 2012, the party qualified under
 37 CFR
 1.42 or 1.46 .
 

 (F) The assignee or other party in interest when it
 is not possible to produce the affidavit or declaration of the sole inventor,
 or joint inventor when item (B) above applies. Ex parte
 Foster, 1903 C.D. 213, 105 OG 261 (Comm’r Pat. 1903). 
 

 (G) The owner of the patent under reexamination.

 
 For affidavits and declarations submitted in applications filed
 before September 16, 2012, where one or more of the named joint inventors of the
 subject matter of the rejected claim(s) (who had originally signed the oath or
 declaration for patent application under 37 CFR 1.63 ) is thereafter
 unavailable to sign an affidavit or declaration under 37 CFR
 1.131(a) , the affidavit or declaration under 37 CFR
 1.131(a) may be signed by the remaining joint inventors
 provided a petition under 37 CFR 1.183 requesting waiver of
 the signature of the unavailable joint inventor is submitted with the affidavit or
 declaration under 37 CFR 1.131(a) . Proof that the
 non-signing joint inventor is unavailable or cannot be found (similar to the proof
 required for a petition under pre-AIA 37 CFR 1.47 ) must be
 submitted with the petition under 37 CFR 1.183 (see
 MPEP §
 409.03(d) ). Petitions under 37 CFR 1.183 
 are decided by the Office of Petitions (see MPEP § 1002.02(b) ). 
 

 II. FORMAL REQUIREMENTS OF AFFIDAVITS AND DECLARATIONS An affidavit is a statement in writing made under oath before a
 notary public, magistrate, or officer authorized to administer oaths. See
 MPEP §
 602 et seq. for additional information regarding formal requirements
 of affidavits.
 

 37 CFR
 1.68 permits a declaration to be used instead of an affidavit.
 The declaration must include an acknowledgment by the declarant that willful false
 statements and the like are punishable by fine or imprisonment, or both (18 U.S.C.
 1001) and may jeopardize the validity of the application or any patent issuing
 thereon. The declarant must set forth in the body of the declaration that all
 statements made of the declarant’s own knowledge are true and that all statements
 made on information and belief are believed to be true.
 

 

 
 715.05 U.S. Patent or Application Publication Claiming Same
 Invention [R-01.2024]
 

 [Editor Note: This MPEP section is not applicable to applications
 subject to the first inventor to file provisions of the AIA unless being relied upon
 to overcome a rejection under pre-AIA 35 U.S.C. 102(g) . See
 35
 U.S.C. 100 (note) and MPEP §
 2159 . For a discussion of 37 CFR 1.130 ,
 affidavits or declarations of attribution or prior public disclosure in applications
 subject to the first inventor to file provisions of the AIA, see
 MPEP §
 717 . For a discussion of affidavits or declarations under
 37 CFR
 1.131(c) , see MPEP § 718 .] 

 For applications subject to pre-AIA 35 U.S.C. 102 , when the
 reference in question is a noncommonly owned U.S. patent or patent application
 publication claiming the same invention as applicant and its publication date is less
 than 1 year prior to the presentation of claims to that invention in the application
 being examined, applicant’s remedy, if any, must be by way of 37 CFR 41.202 
 instead of 37 CFR
 1.131(a) . If the reference is claiming the same invention as the
 application and its publication date is less than 1 year prior to the presentation of
 claims to that invention in the application, this fact should be noted in the Office
 action. The reference can then be overcome only by way of interference. See
 MPEP Chapter
 2300 . If the reference is a U.S. patent which claims the same
 invention as the application and its issue date is more than 1 year prior to the
 presentation of claims to that invention in the application, a rejection of the claims
 of the application under pre-AIA 35 U.S.C. 135(b)(1) 
 applicable generally to applications subject to pre-AIA 35 U.S.C. 102 , see
 MPEP §
 2159 , should be made. See In re McGrew, 
 120 F.3d 1236, 1238, 43 USPQ2d 1632, 1635 (Fed. Cir. 1997) (The court held that
 application of 35 U.S.C. 135(b) is not limited to inter
 partes interference proceedings, but may be used as a basis for ex
 parte rejections.). The expression “prior to one year from the date on
 which the patent was granted” in pre-AIA 35 U.S.C. 135(b) includes
 the one-year anniversary date of the issuance of a patent. See Switzer v.
 Sockman, 333 F.2d 935, 142 USPQ 226 (CCPA 1964).
 

 If the reference is a U.S. patent application publication under
 35 U.S.C.
 122(b) , or a WIPO publication on an international application
 filed on or after November 29, 2000, which claims the same invention as the application
 being examined and its publication date is more than 1 year prior to the presentation of
 claims to that invention in the application being examined, a rejection of the claims of
 the application (being examined) under pre-AIA 35 U.S.C. 135(b)(2) 
 applicable generally to applications subject to pre-AIA 35 U.S.C. 102 , see
 MPEP §
 2159 , should be made only if the application being examined
 was filed after the publication date of the reference.
 

 Form paragraph 23.14 or 23.14.01 may be used
 when making a rejection under pre-AIA 35 U.S.C. 135(b) .
 

 ¶ 23.14 Claims Not Copied Within One Year of Patent Issue Date 

 Claim [l] rejected under pre-AIA 35 U.S.C. 135(b)(1) as not
 being made prior to one year from the date on which U.S. Patent No. [2] was
 granted. See In re McGrew, 120 F.3d 1236, 1238, 43 USPQ2d 1632, 1635
 (Fed. Cir. 1997) where the Court held that pre-AIA 35 U.S.C. 135(b) may be used as
 a basis for ex parte rejections.
 

 

 ¶ 23.14.01 Claims Not Copied Within One Year Of Application Publication Date 

 Claim [l] rejected under pre-AIA 35 U.S.C. 135(b)(2) as not being
 made prior to one year from the date on which [2] was published under
 35 U.S.C.
 122(b) . See In re McGrew, 120 F.3d 1236, 1238, 43
 USPQ2d 1632, 1635 (Fed. Cir. 1997) where the Court held that pre-AIA 35 U.S.C. 135(b) 
 may be used as a basis for ex parte rejections.
 

 Examiner Note:
 
 1. In bracket 2, insert the
 publication number of the published application.
 

 2. This form paragraph should only
 be used if the application being examined was filed after the publication date of the
 published application.
 
 
 

 Where the reference and the application or patent under reexamination
 are commonly owned, and the inventions defined by the claims in the application or
 patent under reexamination and by the claims in the reference are not identical but are
 not patentably distinct, a terminal disclaimer and an affidavit or declaration under
 37 CFR
 1.131(c) may be used to overcome a rejection under
 pre‑AIA 35 U.S.C.
 103(a) . See MPEP § 718 . 
 

 A 37 CFR 1.131(a) affidavit is ineffective to overcome a United
 States patent or patent application publication, not only where there is a verbatim
 correspondence between claims of the application and of the patent, but also where there
 is no patentable distinction between the respective claims. In re
 Clark, 457 F.2d 1004, 173 USPQ 359 (CCPA 1972); In re
 Hidy, 303 F.2d 954, 133 USPQ 650 (CCPA 1962); In re
 Teague, 254 F.2d 145, 117 USPQ 284 (CCPA 1958); In re
 Ward, 236 F.2d 428, 111 USPQ 101 (CCPA 1956); In re
 Wagenhorst, 62 F.2d 831, 16 USPQ 126 (CCPA 1933).
 

 If the application (or patent under reexamination) and the U.S. patent
 or patent application publication contain claims which are identical, or which are not
 patentably distinct, then the application and patent are claiming
 
 "interfering subject matter"
 
 
 as defined in
 37 CFR
 41.203(a) . 
 

 As provided in 37 CFR 41.203(a) , an interference
 exists if the subject matter of a claim of one party would, if prior art, have
 anticipated or rendered obvious the subject matter of a claim of the opposing party and
 vice versa. An applicant who is claiming an invention which is identical to, or obvious
 in view of, the invention as claimed in a domestic patent or patent application
 publication cannot employ an affidavit under 37 CFR 1.131(a) as a means for
 avoiding an interference with the reference. To allow an applicant to do so would result
 in the issuance of two patents to the same invention.
 

 Since 37 CFR 1.131(a) defines
 
 "interfering subject matter"
 
 
 in the same way
 as the interference rules ( 37 CFR 41.203(a) ), the USPTO cannot
 prevent an applicant from overcoming a reference by a 37 CFR
 1.131(a) affidavit or declaration on the grounds that the
 reference claims applicant’s invention and, at the same time, deny applicant an
 interference on the grounds that the claims of the application and those of the
 reference are not for substantially the same invention. See In re
 Eickmeyer, 602 F.2d 974, 202 USPQ 655 (CCPA 1979). Where, in denying an
 applicant’s motion in interference to substitute a broader count, it is held that the
 limitation to be deleted was material for the opponent patentee, this constitutes a
 holding that the proposed count is for an invention which is not interfering subject
 matter with respect to the claims of the reference. Therefore, the applicant may file an
 affidavit or declaration under 37 CFR 1.131(a) to overcome a prior
 art rejection based on the reference. Adler v. Kluver, 159 USPQ 511
 (Bd. Pat. Int. 1968).
 

 Form paragraph 7.58.fti (reproduced in
 MPEP §
 715 ) may be used to note such a situation in the Office
 action.
 

 

 
 715.06 [Reserved]

 

 

 
 715.07 Facts and Documentary Evidence [R-07.2022]

 [Editor Note: This MPEP section is not applicable to applications
 subject to the first inventor to file provisions of the AIA unless being relied upon
 to overcome a rejection under pre-AIA 35 U.S.C. 102(g) . See
 35
 U.S.C. 100 (note) and MPEP §
 2159 . For a discussion of 37 CFR 1.130 ,
 affidavits or declarations of attribution or prior public disclosure in applications
 subject to the first inventor to file provisions of the AIA, see
 MPEP §
 717 . For a discussion of affidavits or declarations under
 37 CFR
 1.131(c) , see MPEP § 718 .] 

 I. GENERAL REQUIREMENTS 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. FACTS, not conclusions, must be alleged. Evidence
 in the form of exhibits may accompany the affidavit or declaration. Each exhibit
 relied upon should be specifically referred to in the affidavit or declaration, in
 terms of what it is relied upon to show. For example, the allegations of fact might
 be supported by submitting as evidence one or more of the following:
 

 
 (A) attached sketches;

 (B) attached blueprints;

 (C) attached photographs;

 (D) attached reproductions of notebook entries;

 (E) an accompanying model;

 (F) attached supporting statements by witnesses, where verbal
 disclosures are the evidence relied upon. Ex parte
 Ovshinsky , 10 USPQ2d 1075 (Bd. Pat. App. & Inter. 1989);
 

 (G) testimony given in an interference. Where interference
 testimony is used, the applicant must point out which parts of the testimony
 are being relied on; examiners cannot be expected to search the entire
 interference record for the evidence;
 

 (H) documents submitted under the Disclosure Document Program
 (discontinued February 1, 2007) may be used as documentary evidence of
 conception.
 

 
 Exhibits and models must comply with the requirements of
 37 CFR
 1.91 to be entered into an application file. See also
 MPEP §
 715.07(d) .
 

 A general allegation that the invention was completed prior to the
 date of the reference is not sufficient. Similarly, a declaration by the inventor to
 the effect that their invention was conceived or reduced to practice prior to the
 reference date, without a statement of facts demonstrating the correctness of this
 conclusion, is insufficient to satisfy 37 CFR 1.131(a) . “An inventor
 cannot rely on uncorroborated testimony to establish a prior invention date.”
 In re NTP, Inc. , 654 F.3d 1279, 1291, 99 USPQ2d 1481, 1488
 (Fed. Cir. 2011).
 

 
 "When the issue of priority concerns the antedating
 of a reference, the applicant is required to demonstrate, with sufficient
 documentation, that the [inventor] was in possession of the later-claimed
 invention before the effective date of the reference. Demonstration of such
 priority requires documentary support, from which factual findings and inferences
 are drawn, in application of the rules and law of conception, reduction to
 practice, and diligence."
 

 
 In re Steed , 802 F.3d 1311, 1316,
 116 USPQ2d 1760 (Fed. Cir. 2015).
 

 37 CFR
 1.131(b) requires that original exhibits of drawings or
 records, or photocopies thereof, accompany and form part of the affidavit or
 declaration or their absence satisfactorily explained. In Ex parte
 Donovan, 1890 C.D. 109, 52 OG 309 (Comm’r Pat. 1890) the court
 stated:
 

 
 If the [inventor] made sketches he should so state, and produce
 and describe them; if the sketches were made and lost, and their contents
 remembered, they should be reproduced and furnished in place of the originals. The
 same course should be pursued if the disclosure was by means of models. If neither
 sketches nor models are relied upon, but it is claimed that verbal disclosures,
 sufficiently clear to indicate definite conception of the invention, were made the
 witness should state as nearly as possible the language used in imparting
 knowledge of the invention to others.
 

 
 When reviewing a 37 CFR 1.131(a) affidavit or
 declaration, the examiner must consider all of the evidence presented in its
 entirety, including the affidavits or declarations and all accompanying exhibits,
 records and “notes.” An accompanying exhibit need not support all claimed
 limitations, provided that any missing limitation is supported by the declaration
 itself. Ex parte Ovshinsky, 10 USPQ2d 1075 (Bd. Pat. App. &
 Inter. 1989).
 

 The affidavit or declaration and exhibits must clearly explain which
 facts or data applicant is relying on to show completion of the inventor's invention
 prior to the particular date. Specifically, “[t]he burden of showing actual reduction
 of practice is on the party seeking its benefit.” In re Steed , 802
 F.3d 1311, 1317-18, 116 USPQ2d 1760 (Fed. Cir. 2015)(citing to In re NTP,
 Inc. , 654 F.3d 1279, 1291, 99 USPQ2d 1481, 1488 (Fed. Cir. 2011)). Vague
 and general statements in broad terms about what the exhibits describe along with a
 general assertion that the exhibits describe a reduction to practice “amounts
 essentially to mere pleading, unsupported by proof or a showing of facts” and, thus,
 does not satisfy the requirements of 37 CFR 1.131(b) . In re
 Borkowski, 505 F.2d 713, 184 USPQ 29 (CCPA 1974). Applicant must give a
 clear explanation of the exhibits pointing out exactly what facts are established and
 relied on by applicant. 505 F.2d at 718-19, 184 USPQ at 33. See also In re
 Harry, 333 F.2d 920, 142 USPQ 164 (CCPA 1964) (Affidavit “asserts that
 facts exist but does not tell what they are or when they occurred.”).
 

 II. ESTABLISHMENT OF DATES If 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.
 

 When alleging that conception or a reduction to practice occurred
 prior to the effective date of the reference, the dates in the oath or declaration
 may be the actual dates or, if disclosure of the actual dates is not desired, the
 declarant/affiant may merely allege that the acts referred to occurred prior to a
 specified date. However, the actual dates of acts relied on to establish diligence
 must be provided. See MPEP § 715.07(a) regarding the diligence requirement.
 

 III. THREE WAYS TO SHOW PRIOR INVENTION The affidavit or declaration must state FACTS and produce such
 documentary evidence and exhibits in support thereof as are available to show
 conception and completion of invention in this country or in a NAFTA or WTO member
 country ( MPEP
 § 715.07(c) ), at least the conception being at a date prior
 to the effective date of the reference. Where there has not been reduction to
 practice prior to the date of the reference, diligence in the completion of the
 invention from a time just prior to the date of the reference continuously up to the
 date of an actual reduction to practice or up to the date of filing the application
 (filing constitutes a constructive reduction to practice, 37 CFR
 1.131 ) must be shown.
 

 As discussed above, 37 CFR 1.131(b) provides three
 ways in which an applicant can establish prior invention of the claimed subject
 matter. The showing of facts must be sufficient to show:
 

 
 (A) actual reduction to practice of the invention prior to the
 effective date of the reference; or
 

 (B) conception of the invention prior to the effective date of the
 reference coupled with due diligence from prior to the reference date to a
 subsequent actual reduction to practice; or
 

 (C) conception of the invention prior to the effective date of the
 reference coupled with due diligence from prior to the reference date to the
 filing date of the application (constructive reduction to practice).
 

 
 A conception of an invention, though evidenced by disclosure,
 drawings, and even a model, is not a complete invention under the patent laws, and
 confers no rights on an inventor, and has no effect on a subsequently granted patent
 to another, UNLESS THE INVENTOR FOLLOWS IT WITH REASONABLE DILIGENCE BY SOME OTHER
 ACT, such as an actual reduction to practice or filing an application for a patent.
 Automatic Weighing Mach. Co. v. Pneumatic Scale Corp., 166 F.2d
 288, 1909 C.D. 498, 139 OG 991 (1st Cir. 1909).
 

 Conception is the mental part of the inventive act, but it must be
 capable of proof, as by drawings, complete disclosure to another person, etc. In
 Mergenthaler v. Scudder, 1897 C.D. 724, 81 OG 1417 (D.C. Cir.
 1897), it was established that conception is more than a mere vague idea of how to
 solve a problem; the means themselves and their interaction must be comprehended
 also.
 

 In general, proof of actual reduction to practice requires a showing
 that the apparatus actually existed and worked for its intended purpose. However,
 “there are some devices so simple that a mere construction of them is all that is
 necessary to constitute reduction to practice.” In re Asahi/America
 Inc., 68 F.3d 442, 37 USPQ2d 1204, 1206 (Fed. Cir. 1995) (citing
 Newkirk v. Lulejian, 825 F.2d 1581, 3USPQ2d 1793 (Fed. Cir.
 1987) and Sachs v. Wadsworth, 48 F.2d 928, 929, 9 USPQ 252, 253
 (CCPA 1931). The claimed restraint coupling was held to be so simple a device that
 mere construction of it was sufficient to constitute reduction to practice.
 Photographs, coupled with articles and a technical report describing the coupling in
 detail were sufficient to show reduction to practice.).
 

 The facts to be established under 37 CFR
 1.131(a) are similar to those to be proved in interference. The
 difference lies in the way in which the evidence is presented. If applicant disagrees
 with a holding that the facts are insufficient to overcome the rejection, the remedy
 is by appeal from the continued rejection.
 

 See MPEP § 2138.04 through § 2138.06 for a
 detailed discussion of the concepts of conception, reasonable diligence, and
 reduction to practice.
 

 For the most part, the terms “conception,” “reasonable diligence,”
 and “reduction to practice” have the same meanings under 37 CFR
 1.131(a) as they have in interference proceedings. However, in
 In re Eickmeyer, 602 F.2d 974, 202 USPQ 655 (CCPA 1979), the
 court stated: 
 

 
 The purpose of filing a [37 CFR 1.]131 affidavit is not to
 demonstrate prior invention, per se , but merely to antedate the
 effective date of a reference. See In re Moore, 58 CCPA 1340,
 444 F.2d 572, 170 USPQ 260 (1971). Although the test for sufficiency of an
 affidavit under Rule 131(b) parallels that for determining priority of invention
 in an interference under pre-AIA 35 U.S.C. 102(g) , it
 does not necessarily follow that Rule 131 practice is controlled by interference
 law. To the contrary, “[t]he parallel to interference practice found in Rule
 131(b) should be recognized as one of convenience rather than necessity.”
 Id. at 1353, 444 F.2d at 580, 170 USPQ at 267. Thus, “the
 ‘conception’ and ‘reduction to practice’ which must be established under the rule
 need not be the same as what is required in the ‘interference’ sense of those
 terms.” Id.; accord, In re Borkowski, 505
 F.2d 713, 718-19, 184 USPQ 29, 33 (CCPA 1974).
 

 
 One difference is that in interference practice a reduction to
 practice requires a proof that a utility was known, whereas under 37 CFR
 1.131(a) practice, proof of a utility must be shown only if the
 reference discloses a utility. In re Wilkinson, 304 F.2d 673,
 134 USPQ 171 (CCPA 1962); In re Moore, 444 F.2d 572, 170 USPQ 260
 (CCPA 1971). Where proof of utility is required, whether or not test results are
 required to establish the utility of the subject matter in question depends on the
 facts of each case. The ultimate issue is whether the evidence is such that one of
 ordinary skill in the art would be satisfied to a reasonable certainty that the
 subject matter necessary to antedate the reference possessed the alleged utility.
 In re Blake, 358 F.2d 750, 149 USPQ 217 (CCPA 1966). Also, in
 interference practice, conception, reasonable diligence, and reduction to practice
 require corroboration, whereas averments made in a 37 CFR
 1.131(a) affidavit or declaration do not require corroboration;
 an applicant may stand on their own affidavit or declaration if they so elect.
 Ex parte Hook, 102 USPQ 130 (Bd. App. 1953).
 

 Form paragraph 7.59.fti or
 7.63.fti (both reproduced in MPEP § 715 ) may be
 used where insufficient evidence is included in a 37 CFR
 1.131(a) affidavit.
 

 
 715.07(a) Diligence [R-01.2024]

 [Editor Note: This MPEP section is not applicable to
 applications subject to the first inventor to file provisions of the AIA unless
 being relied upon to overcome a rejection under pre-AIA 35 U.S.C.
 102(g) . See 35 U.S.C. 100 (note) and
 MPEP § 2159 . For a discussion of 37 CFR
 1.130 , affidavits or declarations of attribution or prior
 public disclosure in applications subject to the first inventor to file provisions
 of the AIA, see MPEP § 717 . For a discussion of
 affidavits or declarations under 37 CFR 1.131(c) , see
 MPEP §
 718 .] 

 Where conception occurs prior to the date of the reference, but
 reduction to practice is afterward, it is not enough merely to allege that the
 inventor had been diligent. Rather, applicant must show evidence of facts
 establishing diligence.
 

 In determining the sufficiency of a 37 CFR
 1.131(a) affidavit or declaration, diligence need not be
 considered unless conception of the invention prior to the effective date of the
 reference as prior art is clearly established. Pursuant to 37 CFR
 1.131(b) , diligence comes into question only after prior
 conception is established. 
 

 In patent law, an inventor is either diligent at a given time or is
 not diligent; there are no degrees of diligence. An inventor may be diligent within
 the meaning of the patent law when the inventor is doing nothing, if the lack of
 activity is excused. Note, however, that the record must set forth an explanation or
 excuse for the inactivity; the USPTO or courts will not speculate on possible
 explanations for delay or inactivity. See In re Nelson , 420 F.2d
 1079, 164 USPQ 458 (CCPA 1970). Diligence must be judged on the basis of the
 particular facts in each case. See In re Steed , 802 F.3d 1311,
 1320, 116 USPQ2d 1760, 1767 (Fed. Cir. 2015)(“Although the claimed invention is a
 method conducted by computer software, this does not avoid the need for sufficient
 evidentiary specificity”). See MPEP § 2138.06 for a detailed
 discussion of the diligence requirement for proving prior invention.
 

 Under 37 CFR 1.131(a) , the critical
 period in which diligence must be shown begins just before the effective date of the
 reference or activity as prior art and ends with the date of a reduction to practice,
 either actual or constructive (i.e., filing a U.S. patent application). Note,
 therefore, that only diligence before reduction to practice is a material
 consideration. Any lack of diligence between an actual reduction to practice of an
 invention and the filing of an application thereon is not relevant to the sufficiency
 of an affidavit or declaration under 37 CFR 1.131(a) .
 

 Form paragraph 7.62.fti (reproduced in
 MPEP §
 715 ) may be used to respond to a 37 CFR
 1.131(a) affidavit where diligence is lacking.
 

 

 
 715.07(b) Interference Testimony Sometimes Used [R-08.2017]

 [Editor Note: This MPEP section is not applicable to
 applications subject to the first inventor to file provisions of the AIA unless
 being relied upon to overcome a rejection under pre-AIA 35 U.S.C.
 102(g) . See 35 U.S.C. 100 (note) and
 MPEP § 2159 . For a discussion of 37 CFR
 1.130 , affidavits or declarations of attribution or prior
 public disclosure in applications subject to the first inventor to file provisions
 of the AIA, see MPEP § 717 . For a discussion of
 affidavits or declarations under 37 CFR 1.131(c) , see
 MPEP §
 718 .] 

 In place of an affidavit or declaration the testimony in an
 interference may be sometimes used to antedate a reference in lieu of a
 37 CFR
 1.131(a) affidavit or declaration.
 

 The part of the testimony to form the basis of priority over the
 reference should be pointed out. Ex parte Bowyer, 1939 C.D. 5, 42
 USPQ 526 (Comm’r Pat. 1939).
 

 

 
 715.07(c) Acts Relied Upon Must Have Been Carried Out in This Country
 or a NAFTA or WTO Member Country [R-07.2015]
 

 [Editor Note: This MPEP section is not applicable to
 applications subject to the first inventor to file provisions of the AIA unless
 being relied upon to overcome a rejection under pre-AIA 35 U.S.C.
 102(g) . See 35 U.S.C. 100 (note) and
 MPEP § 2159 . For a discussion of 37 CFR
 1.130 , affidavits or declarations of attribution or prior
 public disclosure in applications subject to the first inventor to file provisions
 of the AIA, see MPEP § 717 . For a discussion of
 affidavits or declarations under 37 CFR 1.131(c) , see
 MPEP §
 718 .] 

 
 Pre-AIA 35 U.S.C. 104 
 Invention Made Abroad. 

 
 (a) IN GENERAL.—
 
 (1) PROCEEDINGS.—In proceedings in the Patent and
 Trademark Office, in the courts, and before any other competent
 authority, an applicant for a patent, or a patentee, may not establish
 a date of invention by reference to knowledge or use thereof, or other
 activity with respect thereto, in a foreign country other than a NAFTA
 country or a WTO member country, except as provided in sections
 119 and 365 .
 

 (2) RIGHTS.—If an invention was made by a person, civil or
 military—
 
 (A) while domiciled in the United States, and
 serving in any other country in connection with operations by or
 on behalf of the United States,
 

 (B) while domiciled in a NAFTA country and serving
 in another country in connection with operations by or on behalf
 of that NAFTA country, or
 

 (C) while domiciled in a WTO member country and
 serving in another country in connection with operations by or
 on behalf of that WTO member country, that person shall be
 entitled to the same rights of priority in the United States
 with respect to such invention as if such invention had been
 made in the United States, that NAFTA country, or that WTO
 member country, as the case may be.
 

 
 

 (3) USE OF INFORMATION.—To the extent that any information
 in a NAFTA country or a WTO member country concerning knowledge, use,
 or other activity relevant to proving or disproving a date of
 invention has not been made available for use in a proceeding in the
 Patent and Trademark Office, a court, or any other competent authority
 to the same extent as such information could be made available in the
 United States, the Director, court, or such other authority shall draw
 appropriate inferences, or take other action permitted by statute,
 rule, or regulation, in favor of the party that requested the
 information in the proceeding.
 

 
 

 (b) DEFINITIONS.—As used in this section—
 
 (1) The term “NAFTA country” has the meaning given that
 term in section 2(4) of the North American Free Trade Agreement
 Implementation Act; and
 

 (2) The term “WTO member country” has the meaning given
 that term in section 2(10) of the Uruguay Round Agreements Act.
 

 
 

 
 

 The 37 CFR 1.131(a) affidavit or
 declaration must contain an allegation that the acts relied upon to establish the
 date prior to the reference or activity were carried out in this country or in a
 NAFTA country or WTO member country. See pre-AIA 35 U.S.C. 104 .
 

 Under 37 CFR 1.131(a) , which provides
 for the establishment of a date of completion of the invention in a NAFTA or WTO
 member country, as well as in the United States, the applicant or patent owner can
 establish a date of completion in a NAFTA member country on or after December 8,
 1993, the effective date of section 331 of Public Law 103-182, the North American
 Free Trade Agreement Act, and can establish a date of completion in a WTO member
 country other than a NAFTA member country on or after January 1, 1996, the effective
 date of section 531 of Public Law 103-465, the Uruguay Round Agreements Act. Acts
 occurring prior to the effective dates of NAFTA or URAA may be relied upon to show
 completion of the invention; however, a date of completion of the invention may not
 be established under 37 CFR 1.131(a) before December
 8, 1993 in a NAFTA country or before January 1, 1996 in a WTO country other than a
 NAFTA country. 
 

 

 
 715.07(d) Disposition of Exhibits [R-11.2013]

 Exhibits, such as those filed as part of an affidavit or declaration
 under 37 CFR
 1.131(a) , must comply with the requirements of
 37 CFR
 1.91 to be entered into an application file. Exhibits that do
 not comply with the requirements of 37 CFR 1.91 will be disposed of
 or returned to applicant at the discretion of the Office. See also
 MPEP §
 608.03(a) .
 

 

 

 
 715.08 Decided by Primary Examiner [R-11.2013]

 The question of sufficiency of affidavits or declarations under
 37 CFR
 1.131(a) should be reviewed and decided by a primary examiner.
 

 Review of an examiner’s decision with regard to questions of formal
 sufficiency and propriety of an affidavit or declaration under 37 CFR
 1.131(a) is by a petition filed under 37 CFR 1.181 . Such
 petitions are answered by the Technology Center Directors ( MPEP
 § 1002.02(c) ).
 

 Review of an examiner’s determination on the merits of a
 37 CFR
 1.131(a) affidavit or declaration is by appeal to the Patent Trial
 and Appeal Board.
 

 

 
 715.09 Timely Presentation [R-11.2013]

 Affidavits or declarations under 37 CFR 1.131(a) must be timely
 presented in order to be admitted. Affidavits and declarations submitted under
 37 CFR
 1.131(a) and other evidence traversing rejections are considered
 timely if submitted:
 

 
 (A) prior to a final rejection;

 (B) before appeal in an application not having a final rejection; 

 (C) after final rejection, but before or on the same date of filing an
 appeal, upon a showing of good and sufficient reasons why the affidavit or other
 evidence is necessary and was not earlier presented in compliance with
 37 CFR
 1.116(e) ; or 
 

 (D) after the prosecution is closed (e.g., after a final rejection,
 after appeal, or after allowance) if applicant files the affidavit or other
 evidence with a request for continued examination (RCE) under 37 CFR 1.114 
 in a utility or plant application filed on or after June 8, 1995; or a continued
 prosecution application (CPA) under 37 CFR 1.53(d) in a design
 application.
 

 
 All admitted affidavits and declarations are acknowledged and commented
 upon by the examiner in his or her next succeeding action.
 

 For affidavits or declarations under 37 CFR
 1.131(a) filed after appeal, see 37 CFR 41.33(d) 
 and MPEP
 § 1206 and § 1211.03 .
 

 Review of an examiner’s refusal to enter an affidavit as untimely is by
 petition and not by appeal to the Patent Trial and Appeal Board. In re
 Deters, 515 F.2d 1152, 185 USPQ 644 (CCPA 1975); Ex parte
 Hale, 49 USPQ 209 (Bd. App. 1941). See MPEP § 715.08 
 regarding review of questions of propriety of 37 CFR 1.131(a) affidavits and
 declarations.
 

 

 
 715.10 Review of Affidavit or Declaration for Evidence of Prior Public
 Use or Sale or Failure to Disclose Best Mode [R-01.2024]
 

 [Editor Note: This MPEP section is not applicable to applications
 subject to the first inventor to file provisions of the AIA unless being relied upon
 to overcome a rejection under pre-AIA 35 U.S.C. 102(g) . See
 35
 U.S.C. 100 (note) and MPEP §
 2159 . For a discussion of 37 CFR 1.130 ,
 affidavits or declarations of attribution or prior public disclosure in applications
 subject to the first inventor to file provisions of the AIA, see
 MPEP §
 717 . For a discussion of affidavits or declarations under
 37 CFR
 1.131(c) , see MPEP § 718 .] 

 Any affidavits or declarations submitted under 37 CFR
 1.131(a) and the accompanying evidence must be reviewed carefully
 by the examiner in order to determine whether they show that the claimed invention was
 “in public use” or “on sale” in this country more than one year prior to the effective
 filing date of the claimed invention, which acts constitute a statutory bar under
 pre-AIA 35 U.S.C.
 102(b) . Although the rejection based on the reference(s) or
 activity sought to be antedated may actually be overcome by such an affidavit or
 declaration, the effect of the applicant’s prior “public use” or “on sale” activities
 may not be overcome under 37 CFR 1.131(a) . See
 MPEP §
 2133.03 regarding rejections based on “public use” and “on
 sale” statutory bars under pre-AIA 35 U.S.C. 102 .
 

 Where the 37 CFR 1.131(a) evidence relies on
 an embodiment of the invention not disclosed in the application, the question of whether
 the application includes the “best mode” must be considered. However, a “best mode”
 rejection should not be made unless the record, taken as a whole, establishes by a
 preponderance of the evidence that applicant’s specification has not set forth the best
 mode contemplated by the inventor of carrying out the invention. See
 MPEP §§
 2165 - § 2165.04 regarding the best mode
 requirement of 35 U.S.C. 112(a) or pre-AIA 35
 U.S.C. 112, first paragraph.
 

 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 701-Statutory Authority for Examination 

 702-Requisites of the Application 
 702.01-Obviously Informal Cases 

 
 

 703-[Reserved] 

 704-Search and Requirements for Information 
 704.01-Search 

 704.02-704.09-[Reserved] 

 704.10-Requirements for Information 

 704.11-What Information May Be Required 
 704.11(a)-Examples of Information Reasonably Required 

 704.11(b)-When May a Requirement for Information Be Made 

 
 

 704.12-Replies to a Requirement for Information 
 704.12(a)-Relationship of Requirement for Information to Duty of Disclosure 

 704.12(b)-What Constitutes a Complete Reply 

 704.12(c)-Treatment of an Incomplete Reply 

 
 

 704.13-Time Periods for Reply 

 704.14-Making a Requirement for Information 
 704.14(a)-Format of the Requirement 

 704.14(b)-Examiner’s Obligation Following Applicant’s Reply 

 704.14(c)-Petitions to Requirements Under 37 CFR 1.105 

 704.14(d)-Relationship to Information Disclosure Statements 

 
 

 
 

 705-Patentability Reports 
 705.01-Instructions re Patentability Reports 
 705.01(a)-Nature of P.R., Its Use and Disposal 

 705.01(b)-Sequence of Examination 

 705.01(c)-Counting and Recording P.R.s 

 705.01(d)-[Reserved] 

 705.01(e)-Limitation as to Use 

 705.01(f)-Interviews With Applicants 

 
 

 
 

 706-Rejection of Claims 
 706.01-Contrasted With Objections 

 706.02-Rejection on Prior Art 
 706.02(a)-[Reserved] 
 706.02(a)(1)-[Reserved] 

 706.02(a)(2)-[Reserved] 

 
 

 706.02(b)-[Reserved] 
 706.02(b)(1)-[Reserved] 

 706.02(b)(2)-[Reserved] 

 
 

 706.02(c)-[Reserved] 
 706.02(c)(1) -[Reserved] 

 706.02(c)(2)-[Reserved] 

 
 

 706.02(d)-[Reserved] 

 706.02(e)-[Reserved] 

 706.02(f)-[Reserved] 
 706.02(f)(1)-[Reserved] 

 706.02(f)(2)-[Reserved] 

 
 

 706.02(g)-[Reserved] 

 706.02(h)-[Reserved] 

 706.02(i)-[Reserved] 

 706.02(j)-[Reserved] 

 706.02(k)-[Reserved] 

 706.02(l)-[Reserved] 
 706.02(l)(1)-[Reserved] 

 706.02(l)(2)-[Reserved] 

 706.02(l)(3)-[Reserved] 

 
 

 706.02(m)-[Reserved] 

 706.02(n)-[Reserved] 

 
 

 706.03-Rejections Not Based on Prior Art 
 706.03(a)-[Reserved] 

 706.03(b)-[Reserved] 

 706.03(c)-[Reserved] 

 706.03(d)-[Reserved] 

 706.03(e)-[Reserved] 

 706.03(f) - 706.03(j)-[Reserved] 

 706.03(k)-[Reserved] 

 706.03(l) - 706.03(n)-[Reserved] 

 706.03(o)-[Reserved] 

 706.03(p) - 706.03(r)-[Reserved] 

 706.03(s)-[Reserved] 

 706.03(t)-[Reserved] 

 706.03(u)-[Reserved] 

 706.03(v)-[Reserved] 

 706.03(w)-[Reserved] 

 706.03(x)-[Reserved] 

 706.03(y)-[Reserved] 

 
 

 706.04-Rejection of Previously Allowed Claims 

 706.05-Rejection After Allowance of Application 

 706.06-Rejection of Claims Copied From Patent 

 706.07-Final Rejection 
 706.07(a)-Final Rejection, When Proper on Second Action 

 706.07(b)-Final Rejection, When Proper on First Action 

 706.07(c)-Final Rejection, Premature 

 706.07(d)-Final Rejection, Withdrawal of, Premature 

 706.07(e)-Withdrawal of Final Rejection, General 

 706.07(f)-Time for Reply to Final Rejection 

 706.07(g)-Transitional After-Final Practice 

 706.07(h)-Request for Continued Examination (RCE) Practice 

 
 

 
 

 707-Examiner’s Letter or Action 
 707.01-Primary Examiner Indicates Action for New Assistant 

 707.02-Applications Up for Third Action and 5-Year Applications 

 707.03‑707.04-[Reserved] 

 707.05-Citation of References 
 707.05(a)-Copies of Cited References 

 707.05(b)-Citation of Related Art and Information by Applicants 

 707.05(c)-Order of Listing 

 707.05(d)-Reference Cited in Subsequent Actions 

 707.05(e)-Data Used in Citing References 

 707.05(f)-Non-Patent Documents Having a Lengthy Citation 

 707.05(g)-Incorrect Citation of References 

 
 

 707.06-Citation of Decisions, Orders Memorandums, and Notices 

 707.07-Completeness and Clarity of Examiner’s Action 
 707.07(a)-Complete Action on Formal Matters 

 707.07(b) - 707.07(c)-[Reserved] 

 707.07(d)-Language To Be Used in Rejecting Claims 

 707.07(e)-Note All Outstanding Requirements 

 707.07(f)-Answer All Material Traversed 

 707.07(g)-Piecemeal Examination 

 707.07(h)-Notify of Inaccuracies in Amendment 

 707.07(i)-Each Claim To Be Mentioned in Each Office Action 

 707.07(j)-State When Claims Are Allowable 

 707.07(k)-Numbering Paragraphs 

 707.07(l)-Comment on Examples 

 
 

 707.08-Reviewing and Initialing by Assistant Examiner 

 707.09-Signing by Primary or Other Authorized Examiner 

 707.10-Entry 

 707.11-Date 

 707.12-Mailing 

 707.13-Returned Office Action 

 
 

 708-Order of Examination 
 708.01-List of Special Cases 

 708.02-Petition To Make Special 
 708.02(a)-Accelerated Examination 

 708.02(b)-Prioritized Examination 

 708.02(c)-Patent Prosecution Highway Program 

 
 

 708.03-Examiner Tenders Resignation 

 
 

 709-Suspension of Action 
 709.01-Overlapping Applications by Same Applicant or Owned by Same Assignee 

 
 

 710-Period for Reply 
 710.01-Statutory Period 
 710.01(a)-Statutory Period, How Computed 

 
 

 710.02-Shortened Statutory Period and Time Limit Actions Computed 
 710.02(a)-[Reserved] 

 710.02(b)-Shortened Statutory Period: Situations in Which Used 

 710.02(c)-Specified Time Limits: Situations in Which Used 

 710.02(d)-Difference Between Shortened Statutory Periods for Reply and Specified Time Limits 

 710.02(e)-Extension of Time 

 
 

 710.03-[Reserved] 

 710.04-Two Periods Running 
 710.04(a)-Copying Patent Claims 

 
 

 710.05-Period Ending on Saturday, Sunday, or a Federal Holiday 

 710.06-Situations When Reply Period Is Reset or Restarted 

 
 

 711-Abandonment of Patent Application 
 711.01-Express or Formal Abandonment 

 711.02-Failure To Take Required Action During Statutory Period 
 711.02(a)-Insufficiency of Reply 

 711.02(b)-Special Situations Involving Abandonment 

 711.02(c)-Termination of Proceedings 

 
 

 711.03-Reconsideration of Holding of Abandonment; Revival 
 711.03(a)-Holding Based on Insufficiency of Reply 

 711.03(b)-Holding Based on Failure To Reply Within Period 

 711.03(c)-Petitions Relating to Abandonment 

 711.03(d)-Examiner’s Statement on Petition To Set Aside Examiner’s Holding 

 
 

 711.04-Public Access to Abandoned Applications 
 711.04(a)-Date of Abandonment 

 711.04(b)-Ordering of Patented and Abandoned Files 

 711.04(c)-Notifying Applicants of Abandonment 

 
 

 711.05-Letter of Abandonment Received After Application Is Allowed 

 711.06-Abstracts, Abbreviatures, and Defensive Publications 
 711.06(a)-Citation and Use of Abstracts, Abbreviatures, and Defensive Publications as References 

 
 

 
 

 712-[Reserved] 

 713-Interviews 
 713.01-General Policy, How Conducted 

 713.02-Interviews Prior to First Official Action 

 713.03-Interview for “Sounding Out” Examiner Not Permitted 

 713.04-Substance of Interview Must Be Made of Record 

 713.05-Interviews Prohibited or Granted, Special Situations 

 713.06-No Inter Partes Questions Discussed Ex Parte 

 713.07-Exposure of Other Cases 

 713.08-Demonstration, Exhibits, Models 

 713.09-Interviews Between Final Rejection and Notice of Appeal 

 713.10-Interview Preceding Filing Amendment Under 37 CFR 1.312 

 
 

 714-Amendments, Applicant’s Action 
 714.01-Signatures to Amendments 
 714.01(a)-Unsigned or Improperly Signed Amendment 

 714.01(b)-[Reserved] 

 714.01(c)-Signed by Attorney or Agent Not of Record 

 714.01(d)-Amendment Signed by Applicant but Not by Attorney or Agent of Record 

 714.01(e)-Amendments Before First Office Action 

 
 

 714.02-Must Be Fully Responsive 

 714.03-Amendments Not Fully Responsive, Action To Be Taken 
 714.03(a)-Supplemental Amendment 

 
 

 714.04-Claims Presented in Amendment With No Attempt To Point Out Patentable Novelty 

 714.05-Examiner Should Immediately Review 

 714.06-[Reserved] 

 714.07-Amendments Not in Permanent Ink 

 714.08-714.09-[Reserved] 

 714.10-Claims Added in Excess of Claims Previously Paid For 

 714.11-Amendment Filed During Interference Proceedings 

 714.12-Amendments and Other Replies After Final Rejection or Action 

 714.13-Amendments and Other Replies After Final Rejection or Action, Procedure Followed 

 714.14-Amendments After Allowance of All Claims 

 714.15-Amendment Received in Technology Center After Mailing of Notice of Allowance 

 714.16-Amendment After Notice of Allowance, 37 CFR 1.312 
 714.16(a)-Amendments Under 37 CFR 1.312, Copied Patent Claims 

 714.16(b)-Amendments Under 37 CFR 1.312 Filed With a Motion Under 37 CFR 41.208 

 714.16(c)-Amendments Under 37 CFR 1.312, Additional Claims 

 714.16(d)-Amendments Under 37 CFR 1.312, Handling 

 714.16(e)-Amendments Under 37 CFR 1.312, Entry in Part 

 
 

 714.17-Amendment Filed After the Period for Reply Has Expired 

 714.18-Entry of Amendments 

 714.19-List of Amendments, Entry Denied 

 714.20-List of Amendments Entered in Part 

 714.21-Amendments Inadvertently Entered, No Legal Effect 

 714.22-714.24-[Reserved] 

 714.25-Discourtesy of Applicant or Attorney 

 
 

 715-Swearing Behind a Reference — Affidavit or Declaration Under 37 CFR 1.131(a) 
 715.01-37 CFR 1.131(a) Affidavits Versus 37 CFR 1.132 Affidavits 
 715.01(a)-Reference Is a Patent or Published Application Naming Different Inventive Entity With at Least One Common Inventor 

 715.01(b)-Reference and Application Have Common Assignee 

 715.01(c)-Reference Is Publication of Inventor’s Own Invention 

 715.01(d)-Activities Applied Against the Claims 

 
 

 715.02-How Much of the Claimed Invention Must Be Shown, Including the General Rule as to Generic Claims 

 715.03-Genus-Species, Practice Relative to Cases Where Predictability Is in Question 

 715.04-Who May Make Affidavit or Declaration Under 37 CFR 1.131(a); Formal Requirements of Affidavits and Declarations 

 715.05-U.S. Patent or Application Publication Claiming Same Invention 

 715.06-[Reserved] 

 715.07-Facts and Documentary Evidence 
 715.07(a)-Diligence 

 715.07(b)-Interference Testimony Sometimes Used 

 715.07(c)-Acts Relied Upon Must Have Been Carried Out in This Country or a NAFTA or WTO Member Country 

 715.07(d)-Disposition of Exhibits 

 
 

 715.08-Decided by Primary Examiner 

 715.09-Timely Presentation 

 715.10-Review of Affidavit or Declaration for Evidence of Prior Public Use or Sale or Failure to Disclose Best Mode 

 
 

 716-Affidavits or Declarations Under 37 CFR 1.132 and Other Evidence Traversing Rejections 
 716.01-Generally Applicable Criteria 
 716.01(a)-Objective Evidence of Nonobviousness 

 716.01(b)-Nexus Requirement and Evidence of Nonobviousness 

 716.01(c)-Probative Value of Objective Evidence 

 716.01(d)-Weighing Objective Evidence 

 
 

 716.02-Allegations of Unexpected Results 
 716.02(a)-Evidence Must Show Unexpected Results 

 716.02(b)-Burden on Applicant 

 716.02(c)-Weighing Evidence of Expected and Unexpected Results 

 716.02(d)-Unexpected Results Commensurate in Scope With Claimed Invention 

 716.02(e)-Comparison With Closest Prior Art 

 716.02(f)-Advantages Disclosed or Inherent 

 716.02(g)-[Reserved] 

 
 

 716.03-Commercial Success 
 716.03(a)-Commercial Success Commensurate in Scope With Claimed Invention 

 716.03(b)-Commercial Success Derived From Claimed Invention 

 
 

 716.04-Long-Felt Need and Failure of Others 

 716.05-Skepticism of Experts 

 716.06-Copying 

 716.07-Inoperability of References 

 716.08-Utility and Operability of Applicant’s Disclosure 

 716.09-Sufficiency of Disclosure 

 716.10-Attribution Affidavit or Declaration to Overcome Rejection Under Pre-AIA 35 U.S.C. 102 or 103 

 
 

 717-Prior Art Exceptions under AIA 35 U.S.C. 102(b)(1) and (2) 
 717.01-Affidavit or Declaration Under 37 CFR 1.130 
 717.01(a) -Declarations or Affidavits under 37 CFR 1.130(a) – Attribution 
 717.01(a)(1) -Evaluation of Declarations or Affidavits under 37 CFR 1.130(a) 

 
 

 717.01(b) -Declarations or Affidavits under 37 CFR 1.130(b) – Prior Public Disclosure 
 717.01(b)(1) -Evaluation of Declarations or Affidavits under 37 CFR 1.130(b) 

 717.01(b)(2) -Determining if the Subject Matter of the Intervening Disclosure is the Same as the Subject Matter of the Inventor–Originated
 Prior Public Disclosure 

 
 

 717.01(c) -Who May Make Affidavit or Declaration; Formal Requirements of Affidavits and Declarations 

 717.01(d)-U.S. Patent or Application Publication Claiming Same Invention 

 717.01(e) -Passed Upon (or Decided by) by Primary Examiner 

 717.01(f) -Seasonable (or Timely) Presentation 

 
 

 717.02 -Prior Art Exception for Commonly Owned or Joint Research Agreement Subject Matter under AIA 35 U.S.C. 102(b)(2)(C) 
 717.02(a) -Invoking the Prior Art Exception under 35 U.S.C. 102(b)(2)(C) 

 717.02(b) -Evaluating Whether the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) is Properly Invoked 

 717.02(c) -Examination Procedure With Respect to the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) 

 717.02(d) -Form Paragraphs With Respect to the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) 

 
 

 
 

 718-Affidavit or Declaration to Disqualify Commonly Owned Patent as Prior Art, 37 CFR 1.131(c) 

 719-File Wrapper 
 719.01-Papers in Image File Wrapper 

 719.02-Residence of Inventor Changed 

 719.03-Classification During Examination 

 719.04-Index of Claims 

 719.05-Field of Search 

 
 

 720-Public Use Proceedings 

 721‑723-[Reserved] 

 724-Trade Secret, Proprietary, and Protective Order Materials 
 724.01-Completeness of the Patent File Wrapper 

 724.02-Method of Submitting Trade Secret, Proprietary, and/or Protective Order Materials 

 724.03-Types of Trade Secret, Proprietary, and/or Protective Order Materials Submitted Under MPEP § 724.02 

 724.04-Office Treatment and Handling of Materials Submitted Under MPEP § 724.02 
 724.04(a)-Materials Submitted in an Application Covered by 35 U.S.C. 122 

 724.04(b)-Materials Submitted in Reissue Applications Open to the Public Under 37 CFR 1.11(b) 

 724.04(c)-Materials Submitted in Reexamination File Open to the Public Under 37 CFR 1.11(d) 

 
 

 724.05-Petition To Expunge Information or Copy of Papers in Application File 

 724.06-Handling of Petitions To Expunge Information or Copy of Papers in Application File 

 
 

 

 

 
 

 
 
 

 
 

 

 
 
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