Rejections and Exceptions under AIA 102 statutory framework
The America Invents Act (AIA) has introduced new ways to overcome prior art rejections, specifically, in terms of which declarations to use. Currently, rejections under 35 USC 102(a)(1) and (a)(2) have their counterpart exceptions which are under 35 USC 102(b)(1) and (b)(2), respectively. While the USPTO does provide a table summarizing the AIA 102 statutory framework, the table below further summarizes which declaration to use [1.130(a) or 1.130(b)] when trying to overcome a rejection due to a disclosure obtained from the inventor or an intervening disclosure.
Note also that the CFR 1.77(b)(6) statement in the specification (which is a preemptive statement), when made during the filing of the patent application allows the Applicant to not have to use any of the declarations (130(a) or 130(b) later on.
37 CFR 1.130(a) Affidavit or declaration of attribution. When any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.
37 CFR 1.130(b) Affidavit or declaration of prior public disclosure. When any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. An affidavit or declaration under this paragraph must identify the subject matter publicly disclosed and provide the date such subject matter was publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
(1) If the subject matter publicly disclosed on that date was in a printed publication, the affidavit or declaration must be accompanied by a copy of the printed publication.
(2) If the subject matter publicly disclosed on that date was not in a printed publication, the affidavit or declaration must describe the subject matter with sufficient detail and particularity to determine what subject matter had been publicly disclosed on that date by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
As far as overcoming a rejection due to common ownership, a statement on the record is sufficient and no declarations are needed.
35 USC 102(b)(2)(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.