41. Which of the following may not be properly used as prior art for purposes of rejecting a
claim under 35 U.S.C. § 102(b) in an application having an effective filing date of Monday,
May 3, 1999?
(A) A journal article, published Saturday, May 2, 1998, disclosing all the claimed
elements and fully teaching how to make and use the invention as claimed.
(B) A foreign patent, published March 3, 1998, which applicant referenced in the
application when claiming foreign priority based on the foreign application date,
and applicant submitted a certified copy of the original foreign application.
(C) Applicant’s statement in a declaration under 37 C.F.R. § 1.132 that although the
invention as claimed had been offered for sale in department stores in New York
during 1997, this was done only to analyze consumer acceptance of the packaging
in which the invention is marketed.
(D) A journal article, published May 1, 1997, disclosing all the elements of the claim
and teaching how to make and use the claimed invention. The examiner used the
article in combination with another journal article in a previous non-final Office
action to reject the same claim under 35 U.S.C. § 103.
(E) All of the above.
41. ANSWER: (A). MPEP 706.02(a). (B) is incorrect since the foreign patent, published more
than one year before the effective filing date of the application, would serve as a bar regardless
of the attempt to claim priority. 35 U.S.C. § 102(b). (C) is incorrect since market testing is not a
proper exception to a statutory bar under 35 U.S.C. § 102(b). MPEP 2133.03(e)(6). Also, the
facts do not involve testing the invention, but only the packaging. (D) is incorrect since a
reference may be used to reject claims under both 35 U.S.C. § 102 and 35 U.S.C. § 103. MPEP
2141.01. (E) is incorrect since only (A) may not properly be used.
Another variant of 102(b)question:
French App 1-4-03 turns to French patent 12-5-03 then US app in 4-1-04. which 102 may examiner use to reject prior art?
a.102a
b.102b
c.102d
d.102a & 102d
e.102b & 102d
Good Q.
102a – this will apply only if it is a different inventive entity.
102d – this is only if it is the same inventive entity
102a and 102d will almost never be applied together, since one talks about the work or another and the other has to be the same person.
Is the answer E then?
answer is C.
can you elaborate why the answer is not E. both 102b and 102d? Is it because the app ceases to be a publication under 102b once the patent is granted?
I think 102(b) is out because there was no “printed publication or patent” more than one year before the US application.
The initial French app is not a publication. Applications generally get published 18 months after filing, but here the French app was allowed and issued as a French patent before 18 months. And the date of that French patent was less than one year before the US application, so it does not fall under 102(b) either.
E since 102(b) and (d) apply.
My brain is completely burnt out from studying, but I fail to see why the answer to question 41 above is “A.” The journal publication date (May 2, 1998) is more than 1 year prior to the filing of the application(May 3, 1999) , so why wouldn’t the journal publication be considered a 102(b) bar? Is it because it couldn’t have reached any addressee/subscribers on that first day?
I will tell you soon why but in the mean time, here is a brief explanation (try searching “concurrent rights” in MPEP. Basically, the Journal Pub is dated May 2 98 (which is a Sunday). Now, the App has a concurrent right of claiming that his./her effective filing date was May 1 1998 (Sat) and thus can predate the journal article. I know this is not an excellent explanation but if it helps, let me know.
I believe the answer is that the Journal is published on a Saturday, however, the PTO will give someone till the next Monday to publish in order to receive their filing date (hence Monday May 3, 1999).
I’m also burned out–but, MPEP:
706.02(a): Where the last day of the year dated from the date of publication falls on a Saturday, Sunday or Federal holiday, the publication is not a statutory bar under 35 U.S.C. 102(b) if the application was filed on the next succeeding business day. Ex parte Olah, 131 USPQ 41 (Bd. App. 1960) (The Board in Olah held that 35 U.S.C. 21(b) is applicable to the filing of an original application for patent and that applicant’s own activity will not bar a patent if the 1-year grace period expires on a Saturday, Sunday, or Federal holiday and the application’s U.S. filing date is the next succeeding business day.)
So to clarify this some more, because the journal article was published on May 2, 1998 and the 1 year mark falls on May 2, 1999 which is a Sunday, the PTO will allow the applicant to file the next business day which is Monday, May 3, 1999 without penalty of rejection under 102(b). Is this correct?
MPEP 706.02
Where the last day of the year dated from the date of publication falls on a Saturday, Sunday or Federal holiday, the publication is not a statutory bar under 35 U.S.C. 102(b) if the application was filed on the next succeeding business day.
The application is filed the next business day after the (A) Journal Article published on a Saturday, therefore, the (A) Journal Article is not a statutory bar.
Why is answer B constitute prior art under 102(b)?
The foreign patent is not “published MORE than one year prior,” it is published just one year prior (not more than). Does the PTO consider “more than” to fall on the same date one year later?
Just started studying, sorry if this is a stupid question!
Thanks for any help
Nevermind. March and May are blurring together. Not a good sign for when I take this test! Sorry
haha, yeah i made that exact came mistake.
no, exact –same– mistake.
haha i made the same mistake too!
OMG, I made this mistake too
Ditto – same oversight – May vs. March. Oy. *Note to self to watch for months that start with the same letter*
Love the discussion part, it helps my brain to process and glad to know I am not the only one being tricked.