Pre-AIA 103(a) rejection and swearing behind

[bs6440]

Facts: My case was filed on 2/10/14 (claiming priority to a provisional application 2/3/13). Examiner citing case filed 9/10/13, claiming priority to Prov. 1 (9/10, 12), Prov 2 (12/20/12), Prov. 3 (3/4/13), and Prov. 4 (5/2/13). Provisional apps 3 & 4 are after our filing date - as such are improperly cited prior art. Prov 1 & 2 are 1 page each - no text. Obviously there are substantial questions whether this is even and enabled disclosure for a complex processing system.

Here is the question - I have the invention disclosure and presentation our inventor made (internally) on 12/8/12, which obviously predates Prov. 2. I have looked everywhere for an answer on swearing behind the a cited prior art case under pre-AIA 103(a). It would seem logical and appropriate use of an 1.131 affidavit.

Am I losing my mind? P.S. sometimes I overthink things not believing that obvious things are correct.

[lazyexaminer]

Are you asking if you are permitted to swear behind one reference in a pre-AIA 103? Yes, if you antedate one of the references the whole rejection fails. Note if the reference is used for a minor point it might easily be replaced by a new reference.

It sounds like you may be better off simply arguing that the reference does not have an effective date prior to your invention, because the material being relied upon is not sufficiently supported by Prov 1 or 2, and therefore is not before your own effective date of 2/3/13 (assuming your own provisional is sufficient). No declaration needed.

If the reference is prior to your effective date, then yes the invention disclosure and presentation may be good evidence of conception. If that is the case then you would also need evidence of diligence. It is possible that those things can be evidence of a reduction to practice in which case you wouldn't need diligence. These things are totally fact specific and often complicated so I don't feel like getting into those issues at this point...

[Tobmapsatonmi]

I don't remember the diligence cases too well, but would doubt a court would find that a period under 2 mos from invention disclosure to application filing (and bridging the winter holidays, too) fails diligence.

But filing the declaration is not what I'd consider my first line; instead, I would prefer to argue what lazyexaminer suggests. 

Take a look at the rejection, is the examiner pointing out specification text from the reference in support of the rejection?  Well, you know there's no antedating text, just figures.  Argue that the figures present in isolation in P1, P2 don't teach the element to the skilled person, without the help of the explanatory text which is not antedating.

Now, if you think this is a weak argument (e.g., the figs alone arguably may teach the element this ref is being used for), then I might still make a stab at the dec.

But so far, in cases where I wanted to antedate a ref, the invention disclosures and notebook entries have always been too inexplicit to support the claims that are actually in the case at the time the rejection is made.

[bluerogue]

Facts: My case was filed on 2/10/14 (claiming priority to a provisional application 2/3/13).

I'm assuming standard US dates of Feb. 10, 2014 and Feb. 3, 2013 and not the european version where the day comes first.
Edit: October 2, 2014 and March 2, 2013 would also not be helpful as that is also > 1 year from the filing of the non-provisional.

If so, it would seem that your priority date is Feb. 10, 2014 and treated under AIA because the provisional was > 1 year from the filing of the non-provisional. 
If under AIA, you pretty much lose the ability to swear behind.

Edit 2: You may be able to restore priority assuming US dating system as it was < 14 months from the filing of the provisional.  You'd have to file a petition to get the priority restored, however.  Not sure if that would restore your pre-AIA status.

[Tobmapsatonmi]

If so, it would seem that your priority date is Feb. 10, 2014 and treated under AIA because the provisional was > 1 year from the filing of the non-provisional. 
If under AIA, you pretty much lose the ability to swear behind.

Ha!  Good catch, I totally missed the > 1 year thing.  Wonder if OP typo'd his prov date, given 03 Feb 2013 was a Sunday.  Maybe it was supposed to have been written 2/13/13.