Q) Rejection, 35 USC 102(e) (4.03.42a)
Question #42 from the April 2003 (AM) patent bar exam is reported by exam takers as a question in the current exam database.
42. Which of the following practices or procedures may be employed in accordance with the USPTO rules and the procedures set forth in the MPEP to overcome a rejection properly based on 35 USC 102(e)?
(A) Persuasively arguing that the claims are patentably distinguishable from the prior art.
(B) Filing an affidavit or declaration under 37 CFR 1.132 showing that the reference invention is not by “another.”
(C) Filing an affidavit or declaration under 37 CFR 1.131 showing prior invention, if the reference is not a U.S. patent that either claims the same invention or claims an obvious variation of the subject matter in the rejected claim(s).
(D) (A) and (C).
(E) (A), (B) and (C).
ANSWER: (E) is the most correct answer. See MPEP § 706.02(b), under the heading “Overcoming A 35 U.S.C. § 102 Rejection Based On A Printed Publication Or Patent.” (A), (B), and (C) alone, as well as (D) are not correct because they are not the most inclusive.