What action should be taken if prior art constitutes an anticipation under pre-AIA 102(e)?

In cases where prior art constitutes an anticipation under pre-AIA 102(e), the appropriate action to take is to swear back of the reference under 37 CFR 1.131. This procedure allows the applicant to establish that their claimed invention was actually conceived and reduced to practice before the effective filing date of the prior art reference that is causing the anticipation rejection.

The process under 37 CFR 1.131 involves asserting that the applicant had prior invention and can provide evidence to support this claim. If successful, it essentially nullifies the reference's anticipatory effect by showing that the applicant's work predates the prior art. This is particularly important under pre-AIA law, where effective filing dates play a crucial role in determining entitlement to the claimed invention.

The other options do not adequately address the problem of anticipation by prior art. Cancelling the application would not resolve the issues related to prior art. Filing a new application would not necessarily eliminate the problem posed by the anticipation unless the new application has claims that are distinct enough. Requesting an extension of time does not resolve the substantive issue of anticipation and would simply delay the inevitable need to address the prior art reference. Thus, swearing back under 37 CFR 1.131 is the correct and