35 USC 102(f)"Derivation"

by patentbar on November 27, 2007 · 7 comments

in 35 USC 102(f), MPEP 2100

35 USC 102(f) A person shall be entitled to a patent unless (f) he did not himself invent the subject matter sought to be patented.” Derivation requires proof that the entire invention was previously conceived by another.

{ 7 comments… read them below or add one }

1 littleyellowduckNo Gravatar July 13, 2011 at 9:41 am

This is from Oct. 2002 AM

An examiner has advanced a reasonable basis for questioning the adquacy of the enabling disclosure in the specification of your client’s patent application, and has properly rejected all the claims in the application. The claims in the application are drawn to a computer program system. In accordance with proper USPTO practice and procedure, the rejection should be overcome by submitting

A. Factual evidence directed t othe amount of time and effort and lelvel of knowledge required for the practice of the invention from disclosure alone.

C. an affidavit under 37 CFR 1.132 by an affiant, who is more than a routineer in the art, submitting few facts to support his conclusions on the ultimate legal question of sufficiency, i.e., that the system “could be constructed”

The answer is A. What place of 2100 to find the answer? Thx.

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2 maggieNo Gravatar October 30, 2011 at 2:40 pm

Exam 4.00.44p

Which of the following statements best correctly describes current PTO practice and
 procedure for 102(f) ? 


(A) Where a patent discloses subject matter being claimed in an application
undergoing examination, if the patent’s designation of inventorship differs from
that of the application, then the patent’s designation of inventorship does not raise
a presumption of inventorship regarding the subject matter disclosed but not
claimed in the patent so as to justify a rejection under 35 U.S.C. § 102(f).
(B) The fact that a claim recites various components, all of which can be
 argumentatively assumed to be old, provides a proper basis for a rejection under
35 U.S.C. § 102(f).

(C) A person can be an inventor without having contributed to the conception of the
invention.

(D) In arriving at conception, an inventor may not consider and adopt ideas and
materials derived from other sources such as an employee or hired consultant.

(E) It is essential for the inventor to be personally involved in reducing the invention
to actual practice.

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3 maggieNo Gravatar October 30, 2011 at 2:53 pm

44. ANSWER: (A) is the most correct answer. See MPEP § 2137, p.2100-89.
(B) is incorrect. The mere fact that the claim recites components, all of which can be argumentatively assumed to be old, does not provide a basis for rejection under 35 U.S.C. § 102(f). Ex parte Billottet, 192 USPQ 413, 415 (Bd. App. 1976); MPEP§ 2137.
(C) is incorrect. One must contribute to the conception to be an inventor. In re Hardee, 223 USPQ 1122, 1123 (Comm’r Pat. 1984). Unless a person contributes to the conception of the invention, the person cannot be an inventor. Fiers v. Revel, 984 F.2d 1164, 1168, 25 USPQ2d 1601, 1604-05 (Fed. Cir. 1993); MPEP § 2137.01 (section styled “An Inventor Must Contribute To The Conception of the Invention”).
(D) is incorrect. An inventor may consider and adopt suggestions from many sources. Morse v. Porter, 155 USPQ 280, 283 (Bd. Pat. Inter. 1965); New England Braiding Co. v. A.W. Cheterton Co., 970 F.2d. 878, 883, 23 USPQ2d 1622, 1626 (Fed. Cir. 1992); MPEP § 2137.01 (section styled “As Long As The Inventor Maintains Intellectual Domination Over Making The Invention, Ideas, Suggestions, And Materials May Be Adopted From Others”).
(E) is incorrect. In re DeBaun, 687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA 1982) (“there is no requirement that the inventor be the one to reduce the invention to practice so long as the reduction to practice was done on his behalf”); MPEP § 2137.01 (section styled “The Inventor Is Not Required To Reduce The Invention To Practice).

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4 maggieNo Gravatar October 30, 2011 at 2:54 pm

Saw this on my exam 8/24/2011

5 maggieNo Gravatar October 30, 2011 at 2:44 pm

Exam Q: 102(f) what is true?
Answer: 102(f) can use a reference where reference date is subsequent to effective application date.

A publication after the date of invention can be used to support a sec. 102(f) rejection. 102(f) does not require an inquiry into the relative dates of a reference and the application.

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6 maggieNo Gravatar October 30, 2011 at 2:55 pm

Reported to be on exam 2011

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7 ENo Gravatar November 16, 2011 at 8:08 pm

thanks maggie

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