Question 37
Domain 3: Patent Prosecution and MPEP-Based PracticeAn examiner issues an Office Action with a rejection under § 102 based on a single prior art reference. To overcome this rejection, the applicant can:
Correct answer: B
Explanation
A § 102 rejection requires that a single prior art reference disclose every claim element, so the applicant may amend the claims to add distinctions or argue that the reference "does not anticipate." The applicant may also submit a declaration under § 1.130 to remove the reference as prior art by showing an exception to prior art under the statute and rules.
Why each option is right or wrong
A. Only file an appeal
B. Amend the claims to distinguish over the prior art, argue that the reference does not anticipate, or provide a declaration under § 1.130
Under 35 U.S.C. § 102, anticipation requires that one reference disclose every element of the claimed invention arranged as in the claim; if any limitation is missing, the rejection fails. The applicant may therefore traverse by amendment or argument, and may also file a declaration under 37 C.F.R. § 1.130 to show the cited disclosure is not prior art against the claim under the exceptions in § 102(b)(1) or § 102(b)(2).
C. File a complaint in federal court
D. Request a reexamination of the application