Comments on: Q) 102(f) (4.00.44p) http://mypatentbar.com/2008/08/25/q-102f-40044p/ Patent Bar Review and Study Guide Tue, 22 May 2012 00:33:43 +0000 http://wordpress.org/?v=2.9.2 hourly 1 By: TheGhostOfBilski http://mypatentbar.com/2008/08/25/q-102f-40044p/#comment-37637 TheGhostOfBilski Fri, 06 Apr 2012 19:45:11 +0000 http://patentbar.wordpress.com/?p=709#comment-37637 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. 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.

]]> By: Miranda http://mypatentbar.com/2008/08/25/q-102f-40044p/#comment-37630 Miranda Fri, 06 Apr 2012 18:40:04 +0000 http://patentbar.wordpress.com/?p=709#comment-37630 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). 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).

]]> By: TheGhostOfBilski http://mypatentbar.com/2008/08/25/q-102f-40044p/#comment-37566 TheGhostOfBilski Fri, 06 Apr 2012 02:43:00 +0000 http://patentbar.wordpress.com/?p=709#comment-37566 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. 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.

]]> By: MnGirl http://mypatentbar.com/2008/08/25/q-102f-40044p/#comment-35562 MnGirl Wed, 21 Mar 2012 04:04:44 +0000 http://patentbar.wordpress.com/?p=709#comment-35562 Had one very similar to this 3/19/12. Had one very similar to this 3/19/12.

]]> 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.

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