Q) Prior Art (10.00.16a)

by patentbar on September 4, 2008 · 11 comments

in Exam Questions

16. Which of the following statements regarding a proper prior art reference is true?
(A) Canceled matter in the application file of a U.S. patent is a prior art reference as
of the filing date under 35 U.S.C. 102(e).
(B) Where a patent refers to and relies on the disclosure of a copending subsequently
abandoned application, such disclosure is not available as a reference.
(C) Where the reference patent claims the benefit of an earlier filed, copending but
subsequently abandoned application which discloses subject matter in common
with the patent, and the abandoned application has an enabling disclosure for the
common subject matter and the claimed matter in the reference patent, the
effective date of the reference patent as to the common subject matter is the filing
date of the reference patent.
(D) Matter canceled from the application file wrapper of a U.S. patent may be used as
prior art as of the patent date.
(E) All foreign patents are available as prior art as of the date they are translated into
English.

16. ANSWER: (D). 35 U.S.C. § 102(a). As explained in MPEP § 901.01, the “matter canceled
from the application file wrapper of a U.S. patent may be used as prior art as of the patent date in
that it then constitutes prior public knowledge under 35 U.S.C. 102(a), In re Lund,376 F.2d 982,
153 USPQ 625 (CCPA 1967). See also MPEP § § 2127 and § 2136.02.” (A) is incorrect. 35
U.S.C. § 102(e). As stated in MPEP § 901.01, “Canceled matter in the application file of a U.S.
patent is not a proper reference as of the filing date under 35 U.S.C. 102(e), see Ex parte Stalego,
154 USPQ 52, 53 (Bd. App. 1966).” (B) is incorrect. As stated in MPEP § 901.02, “In re
Heritage, 182 F.2d 639, 86 USPQ 160 (CCPA 1950), holds that where a patent refers to and
relies on the disclosure of a copending abandoned application, such disclosure is available as a
reference. See also In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967).” (C) is incorrect.
As MPEP § 901.02 indicates, where the reference patent claims the benefit of a copending but
abandoned application which discloses subject matter in common with the patent, and the
abandoned application has an enabling disclosure of the common subject matter and claimed
matter in the reference patent, the effective date of the reference as to the common subject matter
is the filing date of the abandoned application. In re Switzer, 77 USPQ 1, 612 O.G. 11 (CCPA
1948); Ex parte Peterson, 63 USPQ 99 (Bd. App. 1944); and Ex parte Clifford,49 USPQ 152
(Bd. App. 1940).” (E) is incorrect. As stated in MPEP § 901.05, “In general, a foreign patent,
the contents of its application, or segments of its content should not be cited as a reference until
its date of patenting or publication can be confirmed by an examiner’s review of a copy of the
document.”

{ 11 comments… read them below or add one }

1 ohsoobviousNo Gravatar May 25, 2011 at 3:04 pm

had a question with some of these issues (when canceled matter can be considered prior art and as of what date) on 5/18/11

Reply

2 ChemEEENo Gravatar November 9, 2011 at 7:20 pm

got variant of this 11/7/11

need to know that this is only available under 102(a) not 102(e)

Reply

3 Lisa O.No Gravatar November 9, 2011 at 9:21 pm

ChemEEE,

Did you have many KSR questions?

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4 maggieNo Gravatar November 10, 2011 at 1:45 pm

Lisa, read 103 section in chapter 2100 2X. That is what was mainly tested on KSR obviousness on my exam

5 Lisa O.No Gravatar November 10, 2011 at 8:22 pm

Thanks, Maggie!

Reply

6 KillianRedNo Gravatar March 17, 2012 at 5:28 pm

Got this one 3/17/12

Reply

7 MnGirlNo Gravatar March 21, 2012 at 12:07 am

Got this or a very similar one on 3/19/12. It definately had answer choices A and D in my question..

Reply

8 PaulNo Gravatar September 14, 2012 at 5:07 pm

Does “Canceled matter from the application file wrapper” mean “canceled from the application” ?
MPEP 2127 says “Canceled matter in the application file of a U.S. patent cannot be relied upon in a rejection under 35 U.S.C.102(e). Ex Parte Stalego, 154 USPQ 52, 53 (Bd. App.1966). The canceled matter only becomes available as prior art as of the date the application issues into a patent since this is the date the application file history becomes available to the public. In re Lund, 376 F.2d 982, 153USPQ 625 (CCPA 1967). ”
Why the cancelled matter can be a prior art as of patent date, not the publication date ? becuase in case of a published patent application including applications issued later, it should be the publication date as a prior art date.
Am I right ?

Reply

9 PaulNo Gravatar September 14, 2012 at 5:13 pm

MPEP 901.01 also says “Canceled matter in the application file of a U.S. patent >or U.S. application publicationor U.S. application
publicationor publication date, respectively,< in that it then constitutes prior public knowledge under 901.02 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 5, Aug. 2006 900-2 35  U.S.C. 102(a). In re Lund, 376 F.2d 982,"

it seems that the questions separate a patent and a patent application even thought the patent has a publication date before issuance.

Reply

10 PaulNo Gravatar September 14, 2012 at 5:14 pm

MPEP 901.01 also says “Canceled matter in the application file of a U.S. patent >or U.S. application publicationor U.S. application publicationor publication date, respectively,< in that it then constitutes prior public knowledge under 901.02 MANUAL OF PATENT EXAMINING PROCEDURE Rev. 5, Aug. 2006 900-2 35 U.S.C. 102(a). In re Lund, 376 F.2d 982,"

it seems that the questions separate a patent and a patent application even thought the patent has a publication date before issuance.

Reply

11 ZNo Gravatar March 31, 2013 at 1:07 pm

Got this 3/30/13.

Reply

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