Q) Prior Art (4.00.42a)

by patentbar on November 9, 2007 · 14 comments

in Exam Questions

Questions #42 from the April 2000 (AM) patent bar exam is in the Prometric database.

42. Which of the following can never properly be available as prior art for purposes of a rejection under 35 U.S.C. § 102(a)?

(A) A drawing, labeled “Prior Art,” submitted by the applicant.

(B) Canceled matter in an application that matured into a U.S. patent where the matter is not published in the patent.

(C) An abandoned patent application referenced in a publication available to the public.

(D) The combination of two references, where one of the references is used merely to explain the meaning of a term used in the primary reference.

(E) A reference authored only by applicant, and published less than one year prior to the effective filing date of applicant’s patent application.

ANSWER: (E) is the correct answer. (A) is incorrect since admissions, including figures labeled “prior art” may be used. MPEP 2129. (B) is incorrect since canceled matter in the application file of a U.S. patent becomes available as prior art as of the date the application issues into a patent. See MPEP 2127, and Ex parte Stalego, 154 USPQ 52, 53 (Bd. App. 1966) cited therein. (C) is incorrect since an abandoned patent application may become evidence of prior art when it has been appropriately disclosed, as, for example, when it is referenced in a publication. See 37 C.F.R. § 1.14(a)(3)(iv); MPEP 2127; and Lee Pharmaceutical v. Kreps, 577 F.2d 610, 613, 198 USPQ 601, 605 (9th Cir. 1978) cited in MPEP 2127. (D) is incorrect because multiple reference rejections under 35 U.S.C. § 102 may be used where one reference is used to merely explain a term used in the primary reference. See MPEP 2131.01 and In re Baxter Travenol Labs., 952 F.2d 388, 21 USPQ2d 1281 (Fed. Cir. 1991) cited therein. (E) is correct since the reference is not by “another.”

1 nuke-u-lar_inNMNo Gravatar September 22, 2009 at 6:54 pm

Maybe it’s the insidious influence of law school here, but I find “E,” while obviously the “best answer,” to also be a little too vague — what if the “reference” is an article wherein the applicant reviews and discloses prior art not of his own making? To me the wording seems incomplete, and if there was a “none of the above” choice here I may have picked it. Am I way off base here??

2 MichaelNo Gravatar August 8, 2010 at 2:39 pm

Or maybe if the “reference” was an article wherein the applicant abandons said invention.

3 SolNo Gravatar March 26, 2012 at 2:07 am

That will be a 102(c) reference not 102(a), so E is still not a 102(a).

4 SolNo Gravatar March 26, 2012 at 2:06 am

If that is the case, E is still correct. The Examiner should find the real reference of the prior art disclosed in the applicant’s review.

5 AparnaNo Gravatar September 29, 2009 at 9:40 am

Well, the language in 102(a) seems to state that as long as it was described in a printed publication (and for 102(a) it must be “by another”), it is prior art. Thus to fall under 102(a) it must be *described* by another and here it was described by the applicant.

6 aNo Gravatar October 7, 2009 at 4:43 pm

Also to answer #1’s question: say the applicant authored article A, in which he reviewed & disclosed articles B and C. Assume B or C could each be 102(a) references barring the patent. The question asks ‘which of the following could never be a proper 102(a) reference?’ Article A is not a PROPER 102(a) reference — B and C might be, but A, written by the applicant cannot be one. Hairs can be split the other way =)

7 dotNo Gravatar August 1, 2010 at 1:37 pm

I had the same question as #1.. thanks for the clarification!

8 JakeNo Gravatar June 3, 2011 at 4:30 pm

I would just add that I think the main point of 102(a) is that the publication must be published before the INVENTION, not the filing data like 102(b). Therefore, the applicant himself, cannot publish something that antedates his own invention … otherwise, it wouldn’t anticipate!

9 fengyuwuzuNo Gravatar August 5, 2011 at 2:48 pm

Good point!

10 SolNo Gravatar March 26, 2012 at 2:09 am

Yes, I use this way to understand (a), an inventor could in no way disclose his invention before his invention.

11 RTNo Gravatar April 6, 2012 at 1:58 pm

Thanks, Jake and Sol.

It helps me understand better, too.

12 Pass 8/13No Gravatar August 14, 2012 at 10:43 am

Had this 8/13.

13 KyleNo Gravatar December 28, 2012 at 4:35 pm

#1 above is correct. a publication by the sole author could be used in a 102(a) rejection against their own invention if they write, for example, a review article (within 1 year before the filing date) reviewing the work of someone else. The document could be used as evidence of prior public knowledge (very similar to the print date of a declassified document) and would therefore be used in a 102(a) rejection. However, the question asks that the article “properly be available as prior art.” In the outlined scenario, the author’s own work would not be used as “prior art” but would instead be used as evidence of prior knowledge by another. any thoughts?

14 ZNo Gravatar March 31, 2013 at 12:55 pm

Got this 3/30/13.

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