Q) Declassified Reference (4.00.34a)

by patentbar on September 4, 2008 · 8 comments

in Exam Questions

34. You have just received an Office action rejecting all of your claims in your patent
application as anticipated under 35 U.S.C. § 102(a) using published declassified material as the
reference. The examiner explains that the declassified material is being used as prima facie
evidence of prior knowledge as of the printing date. The published declassified material contains
information showing that it was printed six months before the filing date of the application, and
that it was published two months after the application’s filing date. You correctly note that
although the printing date precedes your application filing date by six months, you note that the
publication was classified as of its printing date (thus, available only for limited distribution even
when the application was filed), and was not declassified until its publication date (when it
became available to the general public). Each element of the claimed invention is described in
the publication of the declassified material. Which of the following statements is true?
(A) The rejection is not supported by the reference.
(B) The publication is not available as a reference because it did not become available
to the general public until after the filing date of your patent application.
(C) The publication is prima facie evidence of prior knowledge even though it was
available only for limited distribution as of its printing date.
(D) The publication constitutes an absolute statutory bar.
(E) It is not possible to use a Rule 131 affidavit or declaration to antedate the printing
date of the publication.

34. ANSWER: (C). As stated in MPEP § 707.05(f), “For the purpose of anticipation
predicated upon prior knowledge under 35 U.S.C. 102(a), the above noted declassified material
may be taken as prima facie evidence of such prior knowledge as of its printing date even though
such material was classified at that time.” (A) is incorrect. The reference supports the rejection
inasmuch as each element of the claimed invention is disclosed in the reference. (B), (D), and
(E) are not the most correct. MPEP § 707.05(f).

{ 8 comments… read them below or add one }

1 MeganNo Gravatar August 31, 2009 at 2:10 pm

this is kind of interesting as I remembered in John’s audio, he mentioned the shelfing date/distributing the general public date. Why is this different?

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2 PotentialNo Gravatar May 19, 2012 at 5:03 pm

John White says about 102(a) as: Somebody else did it before you did it. So, someone else invented something before you did, although it was not published to public, but the invention prior to your invention is an actual existence.

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3 MichaelNo Gravatar August 8, 2010 at 2:26 pm

Because this anticipation is being based on prior knowledge, not publication.

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4 studierNo Gravatar December 5, 2010 at 7:09 pm

Note — in searching for this answer, I thought it may be in chapter 900 (Prior Art), but I couldn’t find it.

The Lesson — use the index! I searched for “declassified” in the index. First hit showed that the information was in Chapter 700 (not a bad place to look for anything, but using the index was faster — leads you to the exact section of Ch. 700).

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5 SolNo Gravatar March 26, 2012 at 1:03 am

Studier, nice tip on search index.

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6 RTNo Gravatar April 6, 2012 at 1:47 pm

Agreed nice tip on index.

Question however, does the index appear on the MPEP available during prometric exam?

(Note: my version of Acrobat shows the MPEP in a more usable form than is at Prometric. I’m running Adobe Acr 9 and Prometric uses 5.)

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7 TheGhostOfBilskiNo Gravatar April 6, 2012 at 2:00 pm

RT: My understanding is that yes, the index will appear as one of the Appendices PDFs accessible on the exam. That said, i’s usefulness as a tool to timely locate information is limited.

8 mmmaryNo Gravatar May 21, 2015 at 4:30 pm

In the 9th MPEP, the original 707.05(f) regarding “declassified material” is removed. don’t know why though.

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