Q) 37 CFR 1.131 (10.02.6a)

by patentbar on August 22, 2008 · 3 comments

in Exam Questions

6. According to USPTO rules and procedure, which of the following can be overcome by an affidavit under 37 CFR 1.131?

(A) A rejection properly based on statutory double patenting. (B) A rejection properly made under 35 USC 102(d) based on a foreign patent granted in a non-WTO country. (C) A rejection properly made under 35 USC 102(a) based on a journal article dated one month prior to the effective filing date of the U.S. patent application. Applicant has clearly admitted on the record during the prosecution of the application that subject matter in the journal article relied on by the examiner is prior art. (D) A rejection properly made under 35 USC 102(b) based on a U.S. patent that issued 18 months before the effective filing date of the application. The patent discloses, but does not claim, the invention. (E) None of the above.

6. ANSWER: (E) is the correct answer. MPEP § 715. (A) is incorrect because an affidavit
under 37 C.F.R. § 1.131 is not appropriate where the reference is a prior U.S. patent to the same
entity, claiming the same invention. MPEP § 715. (B) and (D) are each incorrect because an
affidavit under 37 C.F.R. § 1.131 is not appropriate where the reference is a statutory bar under
35 U.S.C. § 102(d) as in (B) or a statutory bar under 35 U.S.C. § 102(b) as in (D). MPEP § 715.
(C) is incorrect because an affidavit under 37 C.F.R. § 1.131 is not appropriate where applicant
has clearly admitted on the record that subject matter relied on in the reference is prior art. MPEP
§ 715.

{ 3 comments… read them below or add one }

1 LNo Gravatar October 17, 2010 at 12:39 pm

got a variation of this question where most of the questions had 102(b) and 102(d) in it, and two of the choices asked about 102(a) and the other had 102(a) together with 102(g)… i chose the 102(a) w/0 the 102(g)…

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2 NarNo Gravatar June 26, 2012 at 5:43 pm

Dont understand, doesn’t 102(b) constitute statutory bar for swearing behind?

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3 NarNo Gravatar June 26, 2012 at 5:44 pm

Ok. I guess I had the wrong choices in my publication.

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