What is the first step in the three-step procedure to overcome a pre-AIA prior art rejection?

The first step in the three-step procedure to overcome a pre-AIA prior art rejection involves determining the prior art date. This is crucial because the prior art date establishes the point in time at which any potentially relevant prior art is considered in relation to the claimed invention.

Understanding the prior art date allows the applicant to assess whether the cited prior art is truly relevant to the application at hand. The pre-AIA (pre-America Invents Act) law provides that an invention must have been patented, published, or publicly used before the application filing date in order to be considered prior art against the claimed invention. Therefore, identifying the correct prior art date is essential to evaluate how past developments relate to the inventive aspects of the current application.

Once the prior art date is established, an applicant can then proceed to evaluate the references cited by the examiner as potential prior art. This structured approach aids in formulating a response to the rejection, either by showing that the claimed invention is novel and non-obvious in light of the prior art or by amending claims to differentiate the invention from those references.