Editing MPEP 2136

<noinclude>{{MPEP Section|2135|2100|2137}}</noinclude>

==[[MPEP 2136|2136 35 U.S.C. 102(e)]]==

<noinclude><div class="noautonum">__TOC__</div></noinclude>

35 U.S.C. 102(e) applies in 
the examination of all applications,and the reexamination of, or other proceedings to contest, 
all patents, with only one 
exception: when the potential reference is 
based on an international application filed prior to 
November 29, 2000

The prior art date 
of a reference under 35 U.S.C. 102(e) may be the 
international filing date if the international filing date 
was on or after November 29, 2000, the international 
application designated the United States, and the 
international application was published by the World 
Intellectual Property Organization (WIPO) under the 
Patent Cooperation Treaty (PCT) Article 21(2) in the 
English language. See MPEP § 706.02(f)(1) for 
examination guidelines on the application of 
35 
U.S.C. 102(e).

{{Statute|35 U.S.C. 102. Conditions for patentability; novelty and loss of right to patent.}}
A person shall be entitled to a patent unless-
{{Ellipsis}}
(e)the invention was described in — (1) an application for 
patent, published under section 122(b), by another filed in the 
United States before the invention by the applicant for patent or 
(2) a patent granted on an application for patent by another filed in 
the United States before the invention by the applicant for patent, 
except that an international application filed under the treaty 
defined in section 351(a) shall have the effects for the purposes of 
this subsection of an application filed in the United States only if 
the international application designated the United States and was 
published under Article 21(2) of such treaty in the English language. 
{{Ellipsis}}
|}


As mentioned above, references based on international 
applications that were filed prior to November 
29, 2000 are subject to the former (pre-AIPA) version 
of 35 U.S.C. 102(e) as set forth below.

{{Statute|Former 35 U.S.C. 102. Conditions for patentability; novelty and loss of right to patent.}}
A person shall be entitled to a patent unless-
{{Ellipsis}}
(e)the invention was described in a patent granted on an 
application for patent by another filed in the United States before 
the invention thereof by the applicant for patent, or on an international 
application by another who has fulfilled the requirements of 
paragraphs (1), (2), and (4) of section 371(c) of this title before the 
invention thereof by the applicant for patent.
{{Ellipsis}}
|}


I. STATUTORY INVENTION REGISTRA-
TIONS (SIRs) ARE ELIGIBLE AS PRIOR 
ART UNDER 35 U.S.C. 102(e)

In accordance with 35 U.S.C. 157(c), a published 
SIR will be treated the same as a U.S. patent for all 
defensive purposes, usable as a reference as of its filing 
date in the same manner as a U.S. patent. A SIR is 
prior art under all applicable sections of 35 U.S.C. 
102 including 35 U.S.C. 102(e). See MPEP § 1111.

II. DEFENSIVE PUBLICATIONS ARE NOT 
PRIOR ART AS OF THEIR FILING DATE

The Defensive Publication Program, available 
between April 1968 and May 1985, provided for the 
voluntary publication of the abstract of the technical 
disclosure of a pending application under certain conditions. 
A defensive publication is not a patent or an 
application publication under 35 U.S.C. 122(b); it is a 
publication. Therefore, it is prior art only as of its 
publication date. Ex parte Osmond, 191 USPQ 334 
(Bd. App. 1973). See MPEP § 711.06(a) for more 
information on Defensive Publications.

===2136.01 Status of U.S. Application as aReference===

I. WHEN THERE IS NO COMMON ASSIGNEE 
OR INVENTOR, A U.S. APPLICATION 
MUST ISSUE AS A PATENT OR 
BE PUBLISHED AS A SIR OR AS AN APPLICATION 
PUBLICATION BEFORE IT 
IS AVAILABLE AS PRIOR ART UNDER 35 
U.S.C. 102(e)

In addition to U.S. patents and SIRs, certain U.S. 
application publications and certain international 
application publications are also available as prior art 
under 35 U.S.C. 102(e) as of their effective U.S. filing 
dates (which will include certain international filing 
dates). See MPEP § 706.02(a).



II. WHEN THERE IS A COMMON ASSIGNEE 
OR INVENTOR, A PRO-VISIONAL 
35 U.S.C. 102(e) REJECTION OVER 
AN EARLIER FILED UNPUB-LISHED 
APPLICATION CAN BE MADE

Based on the assumption that an application will 
ripen into a U.S. patent (or into an application publication), 
it is permissible to provisionally reject a later 
application over an earlier filed, and unpublished, 
application under 35 U.S.C. 102(e) when there is a 
common assignee or inventor. In re Irish, 433 F.2d 
1342, 167 USPQ 764 (CCPA 1970). In addition, a 
provisional 35 U.S.C. 102(e) rejection may be made if 
the earlier filed copending U.S. application has been 
published as redacted (37 CFR 1.217) and the subject 
matter relied upon in the rejection is not supported in 
the redacted publication of the patent application. 
Such a provisional rejection “serves to put applicant 
on notice at the earliest possible time of the possible 
prior art relationship between copending applications” 
and gives applicant the fullest opportunity to overcome 
the rejection by amendment or submission of 
evidence. In addition, since both applications are 
pending and usually have the same assignee, more 
options are available to applicant for overcoming the 
provisional rejection than if the other application were 
already issued. Ex parte Bartfeld, 16 USPQ2d 1714 
(Bd. Pat. App. & Int. 1990) aff’d on other grounds,
925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991). 
Note that provisional rejections over 35 U.S.C. 102(e)
are only authorized when there is a common inventor 
or assignee, otherwise the copending application prior 
to publication must remain confidential. MPEP 
§ 706.02(f)(2) and § 706.02(k) discuss the procedures 
to be used in provisional rejections over 35 U.S.C. 
102(e) and 102(e)/103.

For applications filed on or after November 29, 
1999 or pending on or after December 10, 2004, a 
provisional rejection under 35 U.S.C. 103(a) using 
prior art under 35 U.S.C. 102(e) is not proper if the 
application contains evidence that the application and 
the prior art reference were owned by the same person, 
or subject to an obligation of assignment to the 
same person, at the time the invention was made. The 
changes to 35 U.S.C. 102(e) in the Intellectual Property 
and High Technology Technical Amendments 
Act of 2002 (Pub. L. 107-273, 116 Stat. 1758 (2002)) 
did not affect 35 U.S.C. 103(c) as amended on 
November 29, 1999. See MPEP § 706.02(l)(1)
through § 706.02(l)(3) for information relating to 
rejections under 35 U.S.C. 103 and evidence of common 
ownership.

In addition, certain non-commonly owned references 
may be disqualified from being applied in a 
rejection under 35 U.S.C. 103(a) due to the Cooperative 
Research and Technology Enhancement Act of 
2004 (CREATE Act) (Public Law 108-453; 118 Stat. 
3596 (2004)), which was enacted on December 10, 
2004 and was effective for all patents granted on or 
after December 10, 2004. The CREATE Act 
amended 
35 U.S.C. 103(c) to provide that subject 
matter developed by another person shall be treated as 
owned by the same person or subject to an obligation 
of assignment to the same person for purposes of 
determining obviousness if certain conditions are met. 
35 U.S.C. 103(c), as amended by the CREATE Act, 
continues to apply only to subject matter which qualifies 
as prior art under 35 U.S.C. 102(e), (f) or (g), and 
which is being relied upon in a rejection under 35 
U.S.C. 103. It does not apply to or affect subject matter 
which is applied in a rejection under 35 U.S.C. 102or a double patenting rejection (see 37 CFR 1.78(c) 
and MPEP § 804). In addition, if the subject matter 
qualifies as prior art under any other subsection of 35 
U.S.C. 102 (e.g., 35 U.S.C. 102(a) or (b)) it will not 
be disqualified as prior art under 35 U.S.C. 103(c). 
See also MPEP § 706.02(l)(1) through § 706.02(l)(3)
for information relating to rejections under 35 U.S.C. 
103 and evidence of joint research agreements.

===2136.02 Content of the Prior Art Available Against the Claims===

I. A 35 U.S.C. 102(e) REJECTION MAY 
RELY ON ANY PART OF THE PATENT 
OR APPLICATION PUBLICATION DIS-
CLOSURE 

Under 35 U.S.C. 102(e), the entire disclosure of a 
U.S. patent, a U.S. patent application publication, or 
an international application publication having an earlier 
effective U.S. filing date (which will include certain 
international filing dates) can be relied on to 
reject the claims. Sun Studs, Inc. v. ATA Equip. Leasing, 
Inc., 872 F.2d 978, 983, 10 USPQ2d 1338, 
1342 
(Fed. Cir. 1989). See MPEP § 706.02(a). 

II. REFERENCE MUST ITSELF CONTAIN 
THE SUBJECT MATTER RELIED ON IN 
THE REJECTION

When a U.S. patent, a U.S. patent application publication, 
or an international application publication is 
used to reject claims under 35 
U.S.C. 102(e), the disclosure 
relied on in the rejection must be present in 
the issued patent or application publication. It is the 
earliest effective U.S. filing date (which will include 
certain international filing dates) of the U.S. patent or 
application publication being relied on as the critical 
reference date and subject matter not included in the 
patent or application publication itself can only be 
used when that subject matter becomes public. Portions 
of the patent application which were canceled 
are not part of the patent or application publication 
and thus cannot be relied on in a 35 U.S.C. 102(e)
rejection over the issued patent or application publication. 
Ex parte Stalego, 154 USPQ 52 (Bd. App. 1966). 
Likewise, subject matter which is disclosed in a parent 
application, but not included in the child continuation-
in-part (CIP) cannot be relied on in a 35 U.S.C. 
102(e) rejection over the issued or published CIP. In 
re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967) 
(The examiner made a 35 U.S.C. 102(e) rejection over 
an issued U.S. patent which was a continuation-in-
part (CIP). The parent application of the U.S. patent 
reference contained an example II which was not carried 
over to the CIP. The court held that the subject 
matter embodied in the canceled example II could not 
be relied on as of either parent or child filing date. 
Thus, the use of example II subject matter to reject the 
claims under 35 U.S.C. 102(e) was improper.).

III. THE SUPREME COURT HAS AUTHOR-
IZED 35 
U.S.C. 103 REJECTIONS BASED 
ON 35 U.S.C. 102(e)

U.S. patents may be used as of their filing dates to 
show that the claimed subject matter is anticipated or 
obvious. Obviousness can be shown by combining 
other prior art with the U.S. patent reference in a 
35 
U.S.C. 103 rejection. Hazeltine Research v. Brenner, 
382 U.S. 252, 147 USPQ 429 (1965). Similarly, 
certain U.S. application publications and certain international 
application publications may also be used as 
of their earliest effective U.S. filing dates (which will 
include certain international filing dates) to show that 
the claimed subject matter would have been anticipated 
or obvious.

See MPEP § 706.02(l)(1) - § 706.02(l)(3) for 
additional information on rejections under 35 U.S.C. 
103 and evidence of common ownership or a joint 
research agreement. 

===2136.03 Critical Reference Date===

I.FOREIGN PRIORITY DATE

Reference’s Foreign Priority Date Under 35 U.S.C. 
119(a)-(d) and (f) Cannot Be Used as the 35 U.S.C. 
102(e) Reference Date

35 U.S.C. 102(e) is explicitly limited to certain references 
“filed in the United States before the invention 
thereof by the applicant” (emphasis added). 
Foreign applications’ filing dates that are claimed (via 
35 U.S.C. 119(a) – (d), (f) or 365(a)) in applications, 
which have been published as U.S. or WIPO application 
publications or patented in the U.S., may not be 
used as 35 U.S.C. 102(e) dates for prior art purposes. 
This includes international filing dates claimed as foreign 
priority dates under 35 U.S.C. 365(a).Therefore, 
the foreign priority date of the reference under 
35 
U.S.C. 119(a)-(d) (f), and 365(a) cannot be used to 
antedate the application filing date. In contrast, applicant 
may be able to overcome the 35 U.S.C. 102(e)
rejection by proving he or she is entitled to his or her 
own 35 U.S.C. 119 priority date which is earlier than 
the reference’s U.S. filing date. In re Hilmer, 359 F.2d 
859, 149 USPQ 480 (CCPA 1966) (Hilmer I) (Applicant 
filed an application with a right of priority to a 
German application. The examiner rejected the claims 
over a U.S. patent to Habicht based on its Swiss priority 
date. The U.S. filing date of Habicht was later than 
the application’s German priority date. The court held 
that the reference’s Swiss priority date could not be 
relied on in a 35 U.S.C. 102(e) rejection. Because the 
U.S. filing date of Habicht was later than the earliest 
effective filing date (German priority date) of the 
application, the rejection was reversed.). See MPEP 
§ 201.15 for information on procedures to be followed 
in considering applicant's right of priority. 

Note that certain international application (PCT) 
filings are considered to be “filings in the United 
States” for purposes of applying an application publication 
as prior art. See MPEP § 706.02(a).

II.INTERNATIONAL (PCT) APPLICA-
TIONS; INTERNATIONAL APPLICA-
TION PUBLICATIONS

If the potential reference resulted from, or claimed 
the benefit of, an international application, the following 
must be determined:

(A) If the international application meets the following 
three conditions:

<p style="padding-left: +20px;">(1) an international filing date on or after 
November 29, 2000;</p>

<p style="padding-left: +20px;">(2) designated the United States; and</p>

<p style="padding-left: +20px;">(3) published under PCT Article 21(2) in 
English,</p>

the international filing date is a U.S. filing date 
for prior art purposes under 35 U.S.C. 102(e). If such 
an international application properly claims benefit to 
an earlier-filed U.S. or international application, or 
priority to an earlier-filed U.S. provisional application, 
apply the reference under 35 U.S.C. 102(e) as of 
the earlier filing date, assuming all the conditions of 
35 U.S.C. 102(e) and 35 U.S.C. 119(e), 120, or 365(c) 
are met. In addition, the subject matter relied upon in 
the rejection must be disclosed in the earlier-filed 
application in compliance with 35 U.S.C. 112, first 
paragraph, in order to give that subject matter the benefit 
of the earlier filing date under 35 U.S.C. 102(e).
Note, where the earlier application is an international 
application, the earlier international application must 
satisfy the same three conditions (i.e., filed on or after 
November 29, 2000, designated the U.S., and had 
been published in English under PCT Article 21(2)) 
for the earlier international filing date to be a U.S. filing 
date for prior art purposes under 35 U.S.C.102(e).

(B)If the international application was filed on or 
after November 29, 2000, but did not designate the 
United States or was not published in English under 
PCT Article 21(2), do not treat the international filing 
date as a U.S. filing date. In this situation, do notapply the reference as of its international filing date, 
its date of completion of the 35 U.S.C. 371(c)(1), (2) 
and (4) requirements, or any earlier filing date to 
which such an international application claims benefit 
or priority. The reference may be applied under 
35 
U.S.C. 102(a) or (b) as of its publication date, or 
35 U.S.C. 102(e) as of any later U.S. filing date of an 
application that properly claimed the benefit of the 
international application (if applicable).

(C)If the international application has an international 
filing date prior to November 29, 2000, apply 
the reference under the provisions of 35 U.S.C. 102and 374, prior to the AIPA amendments:

<p style="padding-left: +20px;">(1) For U.S. patents, apply the reference under 
35 U.S.C. 102(e) as of the earlier of the date of completion 
of the requirements of [[35_U.S.C.#35_U.S.C._371_National_stage:_Commencement.|35 U.S.C. 371(c)(1), (2) 
and (4)]] or the filing date of the later-filed U.S. application 
that claimed the benefit of the international 
application;</p>

<p style="padding-left: +20px;">(2) For U.S. application publications and 
WIPO publications directly resulting from international 
applications under PCT Article 21(2), never 
apply these references under 35 U.S.C. 102(e). These 
references may be applied as of their publication dates 
under 35 U.S.C. 102(a) or (b);</p>

<p style="padding-left: +20px;">(3) For U.S. application publications of applications 
that claim the benefit under 35 U.S.C. 120 or 
365(c) of an international application filed prior to 
November 29, 2000, apply the reference under 
35 U.S.C. 102(e) as of the actual filing date of the 
later-filed U.S. application that claimed the benefit of 
the international application.</p>

Examiners should be aware that although a publication 
of, or a U.S. patent issued from, an international 
application may not have a 35 U.S.C. 102(e) date at 
all, or may have a 35 U.S.C. 102(e) date that is after 
the effective filing date of the application being examined 
(so it is not “prior art”), the corresponding WIPO 
publication of an international application may have 
an earlier 35 U.S.C. 102(a) or (b) date.

See [[MPEP_706#706.02.28f.29_Rejection_Under_35_U.S.C._102.28e.29|MPEP 706.02(f)]] for examination guidelines and examples.

III. PRIORITY FROM PROVISIONAL APPLICATION 
UNDER 35 U.S.C. 119(e)

The 35 U.S.C. 102(e) critical reference date of a 
U.S. patent or U.S. application publications and certain 
international application publications entitled to 
the benefit of the filing date of a provisional application 
under 35 U.S.C. 119(e) is the filing date of the 
provisional application with certain exceptions if the 
provisional application(s) properly supports the subject 
matter relied upon to make the rejection in compliance 
with 35 U.S.C. 112, first paragraph. See 
MPEP § 706.02(f)(1), examples 5 to 9. Note that 
international applications which (1) were filed prior to 
November 29, 2000, or (2) did not designate the U.S., 
or (3) were not published in English under PCT Article 
21(2) by WIPO, may not be used to reach back 
(bridge) to an earlier filing date through a priority or 
benefit claim for prior art purposes under 35 U.S.C. 
102(e).

IV.PARENT’S FILING DATE WHEN REFERENCE 
IS A CONTINUATION-IN-PART OF 
THE PARENT

Filing Date of U.S. Parent Application Can Only Be 
Used as the 35 U.S.C. 102(e) Date If It Supports the 
Claims of the Issued Child

In order to carry back the 35 U.S.C. 102(e) critical 
date of the U.S. patent reference to the filing date of a 
parent application, the U.S. patent reference
must  have a right of priority to the earlier date under 
35 
U.S.C. 120 or 365(c) and the parent application 
must support the invention claimed as required by 
35 U.S.C. 112, first paragraph. “For if a patent could 
not theoretically have issued the day the application 
was filed, it is not entitled to be used against another 
as ‘secret prior art’” under 35 
U.S.C. 102(e). In re 
Wertheim, 646 F.2d 527, 537, 209 USPQ 554, 
564 
(CCPA 1981) (The examiner made a 35 
U.S.C. 
103 rejection over a U.S. patent to Pfluger. The 
Pfluger patent (Pfluger IV) was the child of a string of 
abandoned parent applications (Pfluger I, the first 
application, Pfluger II and III, both CIPs). Pfluger IV 
was a continuation of Pfluger III. The court characterized 
the contents of the applications as follows: 
Pfluger I - subject matter A, II-AB, III-ABC, IV-
ABC. ABC anticipated the claims of the examined 
application, but the filing date of III was later than the 
application filing date. So the examiner reached back 
to “A” in Pfluger I and combined this disclosure with 
another reference to establish obviousness. The court 
held that the examiner impermissibly carried over “A” 
and should have instead determined which of the parent 
applications contained the subject matter which 
made Pfluger patentable. Only if B and C were not 
claimed, or at least not critical to the patentability of 
Pfluger IV, could the filing date of Pfluger I be used. 
The court reversed the rejection based on a determination 
that Pfluger IV was only entitled to the Pfluger III 
filing date. The added new matter (C) was critical to 
the claims of the issued patent.). Note that In re Wertheim 
modified the holding of In re Lund, 376 F.2d 
982, 153 USPQ 625 (CCPA 1967) as to “carrying 
back” the subject matter to the parent applications.

See also Ex parte Gilderdale, 1990 Pat. App. 
LEXIS 25 (Bd. Pat. App. & Inter. Appeal no. 89-
0352) (The examiner made a 35 U.S.C. 102(e) rejection 
over a U.S. patent to Hernandez. Hernandez was 
a continuation of a continuation-in-part. Both the parent 
and grandparent had been abandoned. The parent 
listed a different inventive entity but supported the 
subject matter of the child’s claims. The parent was 
filed on the same day as the examined application and 
thus no 35 U.S.C. 102(e) rejection could be made 
based on the parent’s filing date. The Board reversed 
the rejection, explaining that the Hernandez patent 
was entitled to the filing date of its parent, as the parent 
supported the patent claims and 35 U.S.C. 120was satisfied. Under 35 U.S.C. 120, an application 
can claim the benefit of an earlier filing date even if 
not all inventors are the same. However, Hernandez 
was not entitled to the grandparent filing date because 
the parent and child applications contained new matter 
as compared to the grandparent.). 

Compare Ex parte Ebata, 19 USPQ2d 1952 (Bd. 
Pat. App. & Inter. 1991) (The claims were directed to 
a method of administering a salt of lysocellin to animals. 
A 35 U.S.C. 102(e) rejection was made over 
Martin. Martin was a continuation of an application 
which was in turn a continuation-in-part of an abandoned 
application. The grandparent application disclosed 
administering a manganese complex of 
lysocellin to animals. The Board found that “the new 
matter relates to additional forms of lysocellin which 
are useful in Martin’s process, i.e., species or embodiments 
other than the manganese complex. This is far 
different from adding limitations which are required 
or necessary for 
patentability.” Unlike the situation in 
In re Wertheim, Martin’s invention was patentable as 
presented in the grandparent application.).

See also MPEP § 706.02(f)(1), examples 2 and 5 to 
9.

V.DATE OF CONCEPTION OR REDUCTION 
TO PRACTICE

35 U.S.C. 102(e) Reference Date Is the Filing Date 
Not Date of Inventor’s Conception or Reduction to 
Practice 

If a reference available under 35 U.S.C. 102(e) discloses, 
but does not claim the subject matter of the 
claims being examined or an obvious variant, the reference 
is not prior art under 35 U.S.C. 102(g). Furthermore, 
the reference does not qualify as “prior art” 
under 35 U.S.C. 102 as of a date earlier than its filing 
date based upon any prior inventive activity that is 
disclosed in the U.S. patent or U.S. patent application 
publication in the absence of evidence that the subject 
matter was actually reduced to practice in this 
country on an earlier date. See MPEP § 2138. When 
the cases are not in interference, the effective date of 
the reference as prior art is its filing date in the United 
States (which will include certain international filing 
dates), as stated in 35 U.S.C. 102(e). See MPEP 
§ 706.02(a). The date that the prior art subject matter 
was conceived or reduced to practice is of no importance 
when 35 U.S.C. 102(g) is not at issue. Sun 
Studs, Inc. v. ATA Equip. Leasing, Inc., 872 F.2d 978, 
983, 10 USPQ2d 1338, 1342 (Fed. Cir. 1989) (The 
defendant sought to invalidate patents issued to 
Mason and Sohn assigned to Sun Studs. The earliest 
of these patents issued in June 1973. A U.S. patent to 
Mouat was found which issued in March 1976 and 
which disclosed the invention of Mason and Sohn. 
While the patent to Mouat issued after the Mason and 
Sohn patents, it was filed 7 months earlier than the 
earliest of the Mason and Sohn patents. Sun Studs 
submitted affidavits showing conception in 1969 and 
diligence to the constructive reduction to practice and 
therefore antedated the patent to Mouat. The defendant 
sought to show that Mouat conceived the invention 
in 1966. The court held that conception of the 
subject matter of the reference only becomes an issue 
when the claims of the conflicting patents cover 
inventions which are the same or obvious over one 
another. When 35 U.S.C. 102(e) applies but not 
35 
U.S.C. 102(g), the filing date of the prior art patent 
is the earliest date that can be used to reject or invalidate 
claims.).

===2136.04 Different Inventive Entity; Meaning of "By Another"===

IF THERE IS ANY DIFFERENCE IN THE INVENTIVE 
ENTITY, THE REFERENCE IS "BY 
ANOTHER"

"Another" means other than applicants, In re Land, 
368 F.2d 866, 151 USPQ 621 (CCPA 1966), in other 
words, a different inventive entity. The inventive 
entity is different if not all inventors are the same. The 
fact that the application and reference have one or 
more inventors in common is immaterial. Ex parte 
DesOrmeaux, 25 USPQ2d 2040 (Bd. Pat. App. & 
Inter. 1992) (The examiner made a 35 U.S.C. 102(e)
rejection based on an issued U.S. patent to three 
inventors. The rejected application was a continuation-
in-part of the issued parent with an extra inventor. 
The Board found that the patent was “by another” 
and thus could be used in a 35 U.S.C. 102(e)/103 
rejection of the application.).

A DIFFERENT INVENTIVE ENTITY IS PRIMA 
FACIE EVIDENCE THAT THE REFERENCE IS 
"BY ANOTHER"

As stated by the House and Senate reports on the 
bills enacting section 35 U.S.C. 102(e) as part of the 
1952 Patent Act, this subsection of 102 codifies the 
Milburn rule of Milburn v. Davis-Bournonville, 
270 
U.S. 390 (1926). The Milburn rule authorized the 
use of a U.S. patent containing a disclosure of the 
invention as a reference against a later filed application 
as of the U.S. patent filing date. The existence of 
an earlier filed U.S. application containing the subject 
matter claimed in the application being examined 
indicates that applicant was not the first inventor. 
Therefore, a U.S. patent,  a U.S. patent application 
publication or international application publication, 
by a different inventive entity, whether or not the 
application shares some inventors in common with 
the patent, is prima facie evidence that the invention 
was made “by another” as set forth in 35 U.S.C.
102(e). In re Mathews, 408 F.2d 1393, 161 USPQ 276 
(CCPA 1969); In re Facius, 408 F.2d 1396, 161 USPQ 
294 (CCPA 1969); Ex parte DesOrmeaux, 
25 
USPQ2d 2040 (Bd. Pat. App. & Inter. 1992). See 
MPEP § 706.02(b) and § 2136.05 for discussion of 
methods of overcoming 35 U.S.C. 102(e) rejections.

===2136.05 Overcoming a Rejection Under 35 U.S.C. 102(e)===

A 35 U.S.C. 102(e) REJECTION CAN BE OVERCOME 
BY ANTEDATING THE FILING DATE 
OR SHOWING THAT DISCLOSURE RELIED 
ON IS APPLICANT'S OWN WORK

When a prior U.S. patent,  U.S. patent application 
publication, or international application publication 
is not a statutory bar, a 35 
U.S.C. 102(e)
rejection can be overcome by antedating the filing 
date (see MPEP § 2136.03 regarding critical reference 
date of 35 U.S.C. 102(e) prior art) of the 
reference 
by 
submitting an affidavit or declaration 
under 37 
CFR 1.131 or by submitting an affidavit or 
declaration under 37 
CFR 1.132 establishing that the 
relevant disclosure is applicant’s own work. In re 
Mathews, 408 F.2d 1393, 161 USPQ 276 (CCPA 
1969). The filing date can also be antedated 
by 
applicant’s earlier foreign priority application or 
provisional application if 35 U.S.C. 119 is met and the 
foreign application or provisional application “supports” 
(conforms to 35 U.S.C. 112, first paragraph, 
requirements) all the 
claims of the U.S. application. In 
re Gosteli, 872 F.2d 1008, 10 USPQ2d 1614 (Fed. Cir. 
1989). But a prior application which was not copending 
with the application at issue cannot be used to 
antedate a reference. In re Costello, 717 F.2d 1346, 
219 USPQ 389 (Fed. Cir. 1983). A terminal disclaimer 
also does not overcome a 35 U.S.C. 102(e)
rejection. See, e.g., In re Bartfeld, 925 F.2d 1415, 
17 
USPQ2d 1885 (Fed. Cir. 1991). 

See MPEP § 706.02(b) for a list of methods which 
can be used to overcome rejections based on 
35 
U.S.C. 102(e) rejections. For information on the 
required contents of a 37 
CFR 1.131 affidavit or declaration 
and the situations in which such affidavits and 
declarations are permitted see MPEP § 715. An affidavit 
or declaration is not appropriate if the reference 
describes applicant’s own work. In this case, applicant 
must submit an affidavit or declaration under 37 CFR 
1.132. See the next paragraph for more information 
concerning the requirements of 37 CFR 1.132 affidavits 
and declarations. 

A 35 U.S.C. 102(e) REJECTION CAN BE OVERCOME 
BY SHOWING THE REFERENCE IS 
DESCRIBING APPLICANT’S OWN WORK

“The fact that an application has named a different 
inventive entity than a patent does not necessarily 
make that patent prior art.” Applied Materials Inc. v. 
Gemini Research Corp., 835 F.2d 279, 15 USPQ2d 
1816 (Fed. Cir. 1988). The issue turns on what the 
evidence of record shows as to who invented the subject 
matter. In re Whittle, 454 F.2d 1193, 1195, 
172 
USPQ 535, 537 (CCPA 1972). In fact, even if 
applicant’s work was publicly disclosed prior to his or 
her application, applicant’s own work may not be 
used against him or her unless there is a time bar 
under 35 
U.S.C. 102(b). In re DeBaun, 687 F.2d 459, 
214 USPQ 933 (CCPA 1982) (citing In re Katz, 
687 
F.2d 450, 215 USPQ 14 (CCPA 1982)). Therefore, 
when the unclaimed subject matter of a reference 
is applicant’s own invention, applicant may overcome 
a prima facie case based on the patent,  U.S. patent 
application publication, or international application 
publication, by showing that the disclosure is a 
description of applicant’s own previous work. Such a 
showing can be made by proving that the patentee, or 
the inventor(s) of the U.S. patent application publication 
or the international application publication, 
was associated with applicant (e.g. worked for the 
same company) and learned of applicant’s invention 
from applicant. In re Mathews, 408 F.2d 1393, 161 
USPQ 276 (CCPA 1969). In the situation where one 
application is first filed by inventor X and then a later 
application is filed by X & Y, it must be proven that 
the joint invention was made first, was thereafter 
described in the sole applicant’s patent, or  was 
thereafter described in the sole applicant’s U.S. patent 
application publication or international application 
publication, and then the joint application was filed. 
In re Land, 368 F.2d 866, 151 USPQ 621 (CCPA 
1966).

In In re Land, separate U.S. patents to Rogers and 
to Land were used to reject a joint application to Rogers 
and Land under 35 U.S.C. 102(e)/103. The inventors 
worked for the same company (Polaroid) and in 
the same laboratory. All the patents flowed from the 
same research. In addition, the patent applications 
were prepared by the same attorneys, were interrelated 
and contained cross-references to each other. 
The court affirmed the rejection because (1) the 
inventive entities of the patents (one to Rogers and 
one to Land) were different from the inventive entity 
of the joint application (Rogers and Land) and (2) 
Land and Rogers brought their knowledge of their 
individual work with them when they made the joint 
invention. There was no indication that the portions of 
the references relied on disclosed anything they did 
jointly. Neither was there any showing that what they 
did jointly was done before the filing of the reference 
patent applications.

See also In re Carreira, 532 F.2d 1356, 189 USPQ 
461 (CCPA 1976) (The examiner rejected claims to a 
joint application to Carreira, Kyrakakis, Solodar, and 
Labana under 35 U.S.C. 102(e) and 103 in view of a 
U.S. patent issued to Tulagin and Carreira or a patent 
issued to Clark. The applicants submitted declarations 
under 37 CFR 1.132 by Tulagin and Clark in which 
each declarant stated he was “not the inventor of the 
use of compounds having a hydroxyl group in a position 
ortho to an azo linkage.” The court held that these 
statements were vague and inconclusive because the 
declarants did not disclose the use of this generic 
compound but rather species of this generic compound 
in their patents and it was the species which 
met the claims. The declaration that each did not 
invent the use of the generic compound does not 
establish that Tulagin and Clark did not invent the use 
of the species.) 

MPEP § 715.01(a), § 715.01(c), and § 716.10 set 
forth more information pertaining to the contents and 
uses of affidavits and declarations under 37 CFR 
1.132 for antedating references. See MPEP 
§ 706.02(l)(1) for information pertaining to rejections 
under 35 U.S.C. 102(e)/103 and the applicability of 
35 U.S.C. 103(c).

APPLICANT NEED NOT SHOW DILIGENCE 
OR REDUCTION TO PRACTICE WHEN THE 
SUBJECT MATTER DISCLOSED IN THE REFERENCE 
IS APPLICANT’S OWN WORK

When the reference reflects applicant’s own work, 
applicant need not prove diligence or reduction to 
practice to establish that he or she invented the subject 
matter disclosed in the reference. A showing that the 
reference disclosure arose from applicant’s work coupled 
with a showing of conception by the applicant 
before the filing date of the reference will overcome 
the 35 U.S.C. 102(e) rejection. The showing can be 
made by submission of an affidavit by the inventor 
under 37 CFR 1.132. The other patentees need not 
submit an affidavit disclaiming inventorship, but, if 
submitted, a disclaimer by all other patentees should 
be considered by the examiner. In re DeBaun, 
687 
F.2d 459, 214 USPQ 933 (CCPA 1982) (Declaration 
submitted by DeBaun stated that he was the 
inventor of subject matter disclosed in the U.S. patent 
reference of DeBaun and Noll. Exhibits were attached 
to the declaration showing conception and included 
drawings DeBaun had prepared and given to counsel 
for purposes of preparing the application which issued 
as the reference patent. The court held that, even 
though the evidence was not sufficient to antedate the 
prior art patent under 37 CFR 1.131, diligence and/or 
reduction to practice was not required to show 
DeBaun invented the subject matter. Declarant’s statement 
that he conceived the invention first was enough 
to overcome the 35 U.S.C. 102(e) rejection.). 

CLAIMING OF INDIVIDUAL ELEMENTS OR 
SUBCOMBINATIONS IN A COMBINATION 
CLAIM OF THE REFERENCE DOES NOT ITSELF 
ESTABLISH THAT THE PATENTEE INVENTED 
THOSE ELEMENTS

The existence of combination claims in a reference 
is not evidence that the patentee invented the individual 
elements or subcombinations included if the elements 
and subcombinations are not separately 
claimed apart from the combination. In re DeBaun, 
687 F.2d 459, 214 USPQ 933 (CCPA 1982) (citing In 
re Facius, 408 F.2d 1396, 1406, 161 USPQ 294, 301 
(CCPA 1969)).

See also In re Mathews, 408 F.2d 1393, 161 USPQ 
276 (CCPA 1969) (On September 15, 1961, Dewey 
filed an application disclosing and claiming a time 
delay protective device for an electric circuit. In disclosing 
the invention, Dewey completely described, 
but did not claim, a "gating means 19" invented by 
Mathews which was usable in the protective device. 
Dewey and Mathews were coworkers at General Electric 
Company, the assignee. Mathews filed his application 
on March 7, 1963, before the Dewey patent 
issued but almost 18 months after its filing. The 
Mathews application disclosed that "one illustration 
of a circuit embodying the present invention is shown 
in copending patent application S.N. 138,476-
Dewey." The examiner used Dewey to reject all the 
Mathews claims under 35 
U.S.C. 102(e). In response, 
Mathews submitted an affidavit by Dewey under 
37 CFR 1.132. In the affidavit, Dewey stated that he 
did not invent the gating means 19 but had learned of 
the gating means through Mathews and that GE attorneys 
had advised that the gating means be disclosed in 
Dewey’s application to comply with 35 U.S.C. 112, 
first paragraph. The examiner argued that the only 
way to overcome a 35 U.S.C. 102(e) rejection was by 
submitting an affidavit or declaration under 37 CFR 
1.131 to antedate the filing date of the reference. The 
court reversed the rejection, holding that the totality 
of the evidence on record showed that Dewey derived 
his knowledge from Mathews who is "the original, 
first and sole inventor.").