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

When dealing with anticipation under pre-AIA 102(e), the appropriate action is to swear back of the reference under 37 CFR 1.131. This regulation allows an applicant to overcome a rejection based on prior art by providing evidence that their invention was publicly disclosed or in use prior to the effective filing date of the cited reference. Essentially, this means showing that the invention was actually in existence and available to the public before the reference's critical date.

By swearing back of the reference, the applicant is effectively asserting their entitlement to the earlier date, thus negating the impact of the anticipation. This is a strategic step in preserving the application, as it does not require re-filing or canceling the application, and it directly addresses the concern raised by the prior art.

In contrast, other options such as canceling the application or filing a new application would not effectively overcome the situation of anticipation. Requesting an extension of time is not relevant in this circumstance, as the core issue revolves around the established prior art rather than the need for additional time to respond. Thus, swearing back of the reference represents the most appropriate and direct action to take in the scenario of anticipation under pre-AIA 102(e).