Comments on: Q) 102(f) (4.00.44p) http://mypatentbar.com/2008/08/25/q-102f-40044p/ Patent Bar Review and Study Guide Tue, 07 Feb 2012 03:15:12 +0000 http://wordpress.org/?v=2.9.2 hourly 1 By: Jeremy http://mypatentbar.com/2008/08/25/q-102f-40044p/#comment-17918 Jeremy Tue, 18 Oct 2011 20:12:25 +0000 http://patentbar.wordpress.com/?p=709#comment-17918 A variant 10/18/11. Pretty much a look-up unless you've spent some time on 102(f) A variant 10/18/11. Pretty much a look-up unless you’ve spent some time on 102(f)

]]> By: maggie http://mypatentbar.com/2008/08/25/q-102f-40044p/#comment-14836 maggie Sat, 27 Aug 2011 07:09:20 +0000 http://patentbar.wordpress.com/?p=709#comment-14836 I got a very close variant 102(f), which one is true 8/24/2011 I got a very close variant 102(f), which one is true 8/24/2011

]]> By: maggie http://mypatentbar.com/2008/08/25/q-102f-40044p/#comment-14835 maggie Sat, 27 Aug 2011 07:01:24 +0000 http://patentbar.wordpress.com/?p=709#comment-14835 8/24/2011 8/24/2011

]]> By: TJL http://mypatentbar.com/2008/08/25/q-102f-40044p/#comment-14339 TJL Sun, 14 Aug 2011 19:40:04 +0000 http://patentbar.wordpress.com/?p=709#comment-14339 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)." 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).”

]]> By: Overworkked http://mypatentbar.com/2008/08/25/q-102f-40044p/#comment-10120 Overworkked Thu, 28 Apr 2011 19:21:29 +0000 http://patentbar.wordpress.com/?p=709#comment-10120 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. 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.

]]> By: Lost http://mypatentbar.com/2008/08/25/q-102f-40044p/#comment-8518 Lost Mon, 14 Mar 2011 00:29:30 +0000 http://patentbar.wordpress.com/?p=709#comment-8518 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. 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.

]]> By: dalchemist http://mypatentbar.com/2008/08/25/q-102f-40044p/#comment-4664 dalchemist Sat, 13 Nov 2010 20:08:41 +0000 http://patentbar.wordpress.com/?p=709#comment-4664 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. 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.

]]> By: Stephen http://mypatentbar.com/2008/08/25/q-102f-40044p/#comment-3487 Stephen Wed, 11 Aug 2010 21:42:05 +0000 http://patentbar.wordpress.com/?p=709#comment-3487 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. 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.

]]> By: lance http://mypatentbar.com/2008/08/25/q-102f-40044p/#comment-3412 lance Sat, 07 Aug 2010 17:32:25 +0000 http://patentbar.wordpress.com/?p=709#comment-3412 agree with S...in fact, this description is valid for about 50% of the exam. agree with S…in fact, this description is valid for about 50% of the exam.

]]> By: S http://mypatentbar.com/2008/08/25/q-102f-40044p/#comment-1575 S Mon, 29 Mar 2010 14:48:39 +0000 http://patentbar.wordpress.com/?p=709#comment-1575 I lost it too halfway through, but found it verbatim in 2137 p2. I guess in such a scenario (in the actual exam) is to just find the key word, do a quick search in MPEP, find it and move on. Is it right, exam passers? I lost it too halfway through, but found it verbatim in 2137 p2. I guess in such a scenario (in the actual exam) is to just find the key word, do a quick search in MPEP, find it and move on.

Is it right, exam passers?

]]>