Q) 102(f) (4.00.44p)

by patentbar on August 25, 2008 · 17 comments

in Exam Questions

44. Which of the following statements best correctly describes current PTO practice and
(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
(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.

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).

{ 16 comments… read them below or add one }

1 apps23No Gravatar September 2, 2008 at 3:17 pm

Another 102(f) variant on the exam as of 2008 – an inventor and his companion, and the inventor stays on a desert island while his companion returns to the US. She later wants to file an application for his invention.


2 balokNo Gravatar August 21, 2009 at 8:03 am

I assume that the correct answer had something to do with the rule that if the inventor is unavailable, someone else is allowed to file on his behalf (MPEP 409).


3 TheGhostOfBilskiNo Gravatar April 5, 2012 at 10:43 pm

The desert island question comes from another previous exam. The answer to that Q involved knowing that she could NOT claim the invention for her own and file on the inventor’s behalf, without his consent. Being marooned on an island was not sufficient for unavailability, as far as I recall.


4 MirandaNo Gravatar April 6, 2012 at 2:40 pm

I read that problem differently – I thought being marooned on an island WAS sufficient for unavailability, but the companion did not qualify as someone who could make an application under 1.47 (no proprietary interest, not an assignee, etc).

5 TheGhostOfBilskiNo Gravatar April 6, 2012 at 3:45 pm

Miranda you’re right.

As to being marooned on an island – I suppose that would probably count as “unavailable” as in “cannot be found or reached after diligent effort”… I seem to recall the fact pattern being that bad weather made it impossible to get back to the island. At any rate, she was not a co-inventor (and there were no other facts re: proprietary interest or assignee) so she couldn’t file on his behalf anyway.

6 hase321No Gravatar February 23, 2010 at 2:40 pm

Can someone please translate choice A for me?


7 lanceNo Gravatar August 7, 2010 at 1:32 pm

agree with S…in fact, this description is valid for about 50% of the exam.


8 StephenNo Gravatar August 11, 2010 at 5:42 pm

The answer is terribly phrased. I guess whoever wrote the MPEP didn’t believe in using multiple sentences to convey a single idea. I believe it means that if a patent discloses an invention being claimed in an application being examined, but the patent refers to the inventor of the invention as someone OTHER than the applicant claiming the invention in the examined application then it won’t create a statutory bar under 102(f) (must be the actual inventor to file for a patent). Basically, just because the patent says the inventor is someone other than the applicant filing for the invention in the application currently being examined doesn’t necessarily mean that the applicant didn’t invent the claimed invention. Ok so I guess there’s no way to explain it in a very simple way…..I could be wrong, but that’s my interpretation. It makes sense to me.


9 dalchemistNo Gravatar November 13, 2010 at 3:08 pm

The answer is indeed terribly phrased. You have to assume that just because two applications disclose the same invention does not mean that one is derived (102F) from the other.


10 LostNo Gravatar March 13, 2011 at 8:29 pm

It actually made more sense in the original MPEP 2137 when talking about a published article OR a patent. Taking out the authorship of the article from the sentence made it awkward. Basically – authorship (by another) of an article or designation as an inventor of unclaimed (but disclosed) subject matter doesn’t justify 102(f) rejection.


11 OverworkkedNo Gravatar April 28, 2011 at 3:21 pm

Distant variant on 4/27/2011 MPEP E8R8 testing 102(f). (also filed under grape squeezer).

Know what grounds are proper for a 102(f) rejection given a piece of prior art that exactly fits the claimed invention and spec.


12 TJLNo Gravatar August 14, 2011 at 3:40 pm

My interpretation:

Published Patent 1 Discloses A and B, but only claims B.
Or, Publication 1 Discloses A.

Patent Application 2 (different author/inventor from Publication 1/Patent 1) claims A. Answer (A) says that this does not provide grounds for a 102(f) rejection, despite the fact that it was DISCLOSED in a patent/publication by a different author/inventor.

From the MPEP (2137): “Where there is a published article” . . . “or a patent” . . . “that discloses subject matter being claimed in an application undergoing examination”, there is no “presumption of inventorship with respect to the subject matter disclosed” . . . “but not claimed” . . . “so as to justify a rejection under 35 U.S.C. 102(f).”


13 maggieNo Gravatar August 27, 2011 at 3:01 am



14 maggieNo Gravatar August 27, 2011 at 3:09 am

I got a very close variant 102(f), which one is true 8/24/2011


15 JeremyNo Gravatar October 18, 2011 at 4:12 pm

A variant 10/18/11. Pretty much a look-up unless you’ve spent some time on 102(f)


16 MnGirlNo Gravatar March 21, 2012 at 12:04 am

Had one very similar to this 3/19/12.


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