Q) Sally, Ted and Spot Remover (4.01.10p)

by patentbar on September 4, 2008 · 43 comments

in Exam Questions

10. Sally, an employee of Ted, conceived of and reduced to practice a spot remover for Ted
on May 1, 1998. Sally’s spot remover was made from water, chlorine, and lemon juice. On June
2, 1998, Sally filed a nonprovisional U.S. patent application for the spot remover, and assigned
the entire rights in the application to Ted. Sally’s assignment was not recorded in the USPTO,
but was referenced in her application. On June 12, 1999, Jane, also an employee of Ted, having
no knowledge of Sally’s spot remover, conceived of and reduced to practice a spot remover for
Ted. Jane’s spot remover was made from carbonated water, chlorine, and lemon juice. On May
25, 1999, the USPTO granted Sally a patent. On November 5, 1998, Jane filed a nonprovisional
U.S. patent application for the spot remover. As noted in Jane’s application, Jane assigned the
entire rights in her application to Ted. Jane’s assignment was duly recorded in the USPTO. The
examiner mailed a non-final Office action rejection under 35 U.S.C. § 103 to Jane in March
2001, citing the patent to Sally as prior art. Which of the following, if timely filed by Jane,
would be effective in disqualifying Sally’s patent?
I. An affidavit by Jane stating that the application files of Sally and Jane both refer to
assignments to Ted.
II. A copy of Sally’s assignment to Ted, clearly indicating that common ownership of Jane’s
and Sally’s inventions existed at the time Jane’s invention was made.
III. An affidavit by Ted stating sufficient facts to show that there is common ownership of
the Sally and Jane inventions and that common ownership existed at the time the Jane
invention was made.
(A) I.
(B) II.
(C) III.
(D) II and III.
(E) None of the above.

10. ANSWER: All answers accepted.

1 SeanNo Gravatar April 16, 2009 at 9:44 pm

How is that possible? Regardless of the what the question is and the answer options are, if A, B, C, and D are acceptable, E cannot be acceptable and vice versa.

2 triedandtestedNo Gravatar May 22, 2009 at 8:29 pm

That’s the highly efficient nature of the USPTO – welcome my friend!

3 triedandtestedNo Gravatar June 10, 2009 at 6:28 pm

I think it is because the correct answer is I, II, AND III. Please correct me if someone thinks otherwise.

4 BelleNo Gravatar June 22, 2009 at 6:39 pm

I think it has to do with the dates being wrong in the question. It says that Jane conceived of and reduced to practice the invention on June 12, 1999. But then it says she filed the application on November 5, 1998. Makes no sense. I think the answer should have been D if the fact pattern had been clear.

5 SolNo Gravatar March 28, 2012 at 2:21 am

I agree, if Jane filed Nov 8, 2000 instead as wrongly stated Nov 8, 1998, the answer should be D (i.e., II and III).

I is wrong because it does not show “at the time the claimed invention was made”.

6 SolNo Gravatar March 28, 2012 at 2:29 am

Sorry, to make it more clear, Jane’s app should be file on or after Nov 29, 1999 so 102(e) exception applies to void sally’s pat as a 102(e) reference.

I believe this what the Question is trying to test. However, to make it work, the issue date of Sally’s pat need to be after Nov 29, 1999 to be after Jane’s filling date. Otherwise, Sally’s is still a 102(a) art. For example, Sally’s pat issued on May 25, 2000 and Jane filed on Jan 1, 2000.

7 aNo Gravatar October 8, 2009 at 4:37 pm

assuming jane conceives and R2P’s on 6/12/98 (the mistake in the question) I bet the answer was E. How can Sally be disqualified for any reason if Jane invented after her??

8 SolNo Gravatar March 28, 2012 at 2:31 am

103(c) exception

9 PbarNo Gravatar October 15, 2012 at 1:21 pm

Sally isn’t being disqualified, Sally’s patent cannot be used as prior art against Jane.

10 RMNo Gravatar October 9, 2009 at 10:53 pm

Sally’s assignment was not recorded while Jane’s assignment was duly recorded in USPTO. Therefore, Jane’s affidavit stating assignment to Ted may invalidate Sally’s claims.

I pick A.

11 SolNo Gravatar March 28, 2012 at 2:37 am

Yes you are right, that can be tested as well. They can test 103(c) does not apply to 102(a)

12 AshNo Gravatar November 2, 2009 at 12:57 pm

This question is a repeat from Oct 2000 PM – #18. The answer would have been ‘E’ if the fact pattern had been right, i.e. if Nov 5, 1999 had been correctly printed when they tried to reproduce the question.
This is because Sally’s patent is prior art under 102(a) and hence cannot be disqualified by showing of common ownership.

I guess they accepted all answers bcos they realized their folly.

13 Number_27No Gravatar November 23, 2010 at 3:22 pm

I agree, the call of the quesiotn is what can disqualify Sally’s patent. Neither I, II, or III can disqualify the patent. All three avenues would at best , if executed according to MPEP, overcome the reference not “disqualify the patent.”

14 SolNo Gravatar March 28, 2012 at 2:34 am

**>Effective November 29, 1999, subject matter which was prior art under former 35 U.S.C. 103 via 35 U.S.C. 102(e) was disqualified as prior art against the claimed invention if that subject matter and the claimed invention “were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.”

15 superman10No Gravatar November 6, 2009 at 5:36 pm

ash – i disagree, because can’t you also overcome a 102(a) reference by showing it is not by another, ie, common ownership?

16 Big TexNo Gravatar November 18, 2009 at 7:55 pm

As stated above, I think the dates are key to solving this problem. 706.02(l) under the heading FOR APPLICATIONS FILED PRIOR TO NOVEMBER 29, 1999 AND GRANTED AS PATENTS PRIOR TO DECEMBER 10, 2004 says:

“Prior to November 29, 1999, 35 U.S.C. 103(c) provided that subject matter developed by another which qualifies as “prior art” only under subsections 35 U.S.C. 102(f) or 35 U.S.C. 102(g) is not to be considered when determining whether an invention sought to be patented is obvious under 35 U.S.C. 103, provided the subject matter and the claimed invention were commonly owned at the time the invention was made.”

Since both applications were filed before Nov. 29, 1999 (even if the Jane’s filing date was supposed to be Nov. 5, 1999, it is still obviously prior to the key Nov. 29, 1999 103(c) date) the 102(e) prior art date of Sally’s filing cannot be overcome regardless of what kind of affidavit is filed. Thus the answer would truly be ‘E’ as Ash stated above (but for different reasons). Be careful because this concept is still tested on the examination according to the Exam Concepts and Questions section.

Now assuming the dates had occurred after Nov. 29, 1999, one would simply have to look at MPEP 718 and 37 CFR 1.130.

The patent or patent application publication can be disqualified as prior art by submission of:
(1) A terminal disclaimer in accordance with § 1.321(c); and
(2) An oath or declaration stating that the application or patent under reexamination and patent or published application are currently *owned by the same party*, and that the inventor named in the application or patent under reexamination is the *prior inventor* under 35 U.S.C. 104.

These requirements cannot be fulfilled because Jane is also not the prior inventor under 35 U.S.C. 104 (she had the conception at a later date). Thus once again, the answer would be ‘E’.

17 Big TexNo Gravatar November 21, 2009 at 12:07 pm

Correction: While the first part of the analysis is correct (e.g. 103(c) cannot be used to disqualify commonly owned patents with dates prior to Nov. 29, 1999), the second part was incomplete. Both an affidavit under CFR 1.130 and a 103(c) analysis must be performed on a prior art reference after Nov. 29, 1999 and refers to the same patentable invention. I did not include this in the previous post. The 103(c) analysis follows:

For learning purposes, this analysis (1) assumes that the Jane’s filing date was November 5, 1999 (instead of the misprinted 1998) and (2) uses the rules in effect after Nov. 29, 1999. In order to disqualify prior art under 103(c), the reference must only be available as prior art under 102(e), 102(f) or 102(g). On May 25, 1999, Sally’s patent is granted and thus becomes prior art under 102(a) for patents filed after that date. Jane’s patent is filed on November 5, 1999, and thus an exclusion under 103(c) is insufficient to overcome the prior art rejection. Jane will have to swear behind the May 25, 1999 issue date of Sally’s patent by using a rule 1.131 declaration.

Moreover, Jane will have to establish that the application and the reference were, at the time the invention was made, owned by, or subject to an obligation of assignment to, the same person (MPEP 706.02(l)). MPEP 706.02(l)(2) under the title EVIDENCE REQUIRED TO ESTABLISH COMMON OWNERSHIP states in relevant part that the statement (1) must show common ownership existed at the time the later invention was made (2) may, but are not required to, submit further evidence, such as assignment records, affidavits or declarations by the common owner, or court decisions, in addition to the above-mentioned statement concerning common ownership and (3) can be signed by applicants or their attorney/agent of record. Assignment records *by themselves* (e.g. without the required statement by applicant) are not sufficient evidence since assignment records do not show the required “at the time the invention was made.” (See the examiner’s checklist at http://www.uspto.gov/web/offices/pac/dapp/opla/documents/exrchecklist.pdf).

An affidavit swearing behind Sally’s patent has not been provided. However, ignoring this fact, (I) is still not sufficient to fulfill the requirements of the statement that must be submitted. (II) is not sufficient by itself to disqualify Sally’s patent and must also include a statement that the application and the reference were, at the time the invention was made, owned by, or subject to an obligation of assignment to, the same person. (III) is not a statement submitted *by the applicant* and is therefore also insufficient by itself to disqualify the Sally’s patent (see however 706.02(l)(2) which states that *in addition* to the statement by the applicant, he or she may also submit “[a]n affidavit or declaration by the common owner […] which states that there is common ownership and states facts which explain why the affiant or declarant believes there is common ownership, which affidavit or declaration may be signed by an official of the corporation or organization empowered to act on behalf of the corporation or organization when the common owner is a corporation or other organization”). Thus the answer would once again be ‘E’.

I apologize in advance for breaking the board’s one post rule on this subject but my first post was in sufficient error as to cause confusion.

18 EmilyNo Gravatar February 11, 2010 at 6:52 pm

Why are you concluding that the inventions of Jane and Sally are not patentably distinct? I would think that the additional element of carbonation is at least arguably patentably distinct. In that case, I would think that if the dates were pre-11/29/99, the 103/102(e) rejection couldn’t be overcome, but if the dates were post-11/29/99, Jane would have to show common ownership at the time of her invention.

19 toomuch23No Gravatar October 31, 2010 at 4:18 pm

The fact patterns says they are “not patentable distinct.”

20 BigBadVoodoDaddyNo Gravatar June 25, 2011 at 10:25 pm

I think some of the assumptions going into the “learning exercise” of this post are unfounded. The rejection is a 103 rejection, not a 102 rejection. The statement of being a 102 a reference is incorrect.
Assuming the dates hold up and all the 102 efg rules apply. The 103 c exception still is valid. The statements are wrong because (see posts below from PCT master etc for a btter feel. I think the answer explanation from the oct 200 test about being a 102 a prior art are incorrect – a typo perhaps, it should have read 102 e if I read the explanation correctly – esp since for the time frame of the question, 102 e exception was not available.

21 AmandaNo Gravatar February 3, 2015 at 12:39 pm
22 Chemist62No Gravatar April 10, 2010 at 2:23 pm

Forget the typo in the dates. This is about 102(f) or 102(g). There was no 102(e) clause in 103 then. Assuming the 103 rejection was proper, the only item which has to be shown is that the pre-existing invention and the “new” invention were commonly owned at the time the new one was made. Assignment document will not show this, as it shows ownership at time of filing at best. So i. and ii. are out. iii. would be it.

But because of the typo this could not be properly answered, hence a concession.

Would it really be 102(e)? I don’t think so.

23 BigBadVoodoDaddyNo Gravatar June 25, 2011 at 10:14 pm

Sure is a question about 102e and if the exception applies.

24 PCTMasterNo Gravatar July 25, 2010 at 1:07 am

regardless of dates, u need to submit the statement that AT TIME OF INVENTION common owner BY INVENTOR(S) or applicant or practitioner representing applicant. Affidavits, copies of assignment records are secondary and MAY BE PROVIDED IN ADDITION TO THE STATEMENT.

(I) is wrong b/c the statement doesn’t say anything about at the time of invention.
(II) is wrong b/c a copy of assignment alone will not suffice without statement
(III) is wrong b/c statement cannot be made by the owner, must be by applicant or practitioner representing applicant.

But yeah, the date typo makes it all screwed up anyways.

25 BigBadVoodoDaddyNo Gravatar June 25, 2011 at 10:12 pm

Yes – this is the correct approach to the answer. In reality it is indeed a question about 102(e) disqualification under 103a. One needs a statement about common ownership from the attorney or applicant – not assignee. The Oct 2000 , q 18 in my opinion has the explanation wrong as well – they explain its a ref under 102a. (presumably since it is a different inventive entity) – however the rejection was a 103 rejection, hence if the 102 (e) rule applies, 103c exception is available.

26 JamesNo Gravatar July 1, 2011 at 4:06 am

it is 102a because Sally’s application was patented before Jane filed her application

27 fengyuwuzuNo Gravatar October 11, 2011 at 11:23 am

it is not 102(a) because these two are not the same invention

28 misspatentNo Gravatar April 2, 2011 at 11:03 am

Has anyone actually seen this Q recently (assuming it would have been in the correct form)? If so, it seems pretty clear that the answer is E because you can’t overcome the reference as 102(a) prior art.

29 DaveNo Gravatar June 13, 2011 at 11:02 pm

I still don’t get it. Why would Sally’s patent be affected by Jane? Sally was a step ahead of Jane in prosecution. Sally got the patent. Jane, although she documented the assignment has no way of derailing Sally’s prosecution. She was behind Sally in every facet of the process. This question seems better suited to test double patenting and terminal disclaimer.

30 DWNo Gravatar August 9, 2011 at 3:44 pm

The answer should be E if the filing date of Jane’s application was in the right form. Jane can not disqualify Sally’s patent, actually, Jane cannot even overcome Sally’s Patent, because Jane’s Date of Invention is later than Sally’s Date of Patent.
Let’s say you want to disqualify Sally’s Patent, you should tell the PTO that sally has not recorded the assignment, but not to show PTO that Sally and Jane’s inventions were belong to a common owner (that’s helping Sally). The answer ABC and D were both trying to help Sally but not disqualifying her, actually, the call of the question is how Jane could disqualify Sally.

31 paulNo Gravatar September 15, 2011 at 10:02 pm

From MPEP 706.02(a) Rejections Under 35 U.S.C. 102(a), (b), or (e); Printed Publication or Patent [R-3]

C.35 U.S.C. 102(a)
Even if the reference is prior art under 35 U.S.C. 102(e), the examiner should still consider 35 U.S.C. 102(a) for two reasons. First, if the reference is a U.S. patent or patent application publication of, or claims benefit of, an international application, the publication of the international application under PCT Article 21(2) may be the earliest prior art date under 35 U.S.C. 102(a) for the disclosure. Second, references that are only prior art under 35 U.S.C. 102(e), (f), or (g) and applied in a rejection under 35 U.S.C. 103(a) are subject to being disqualified under 35 U.S.C. 103(c) if the reference and the application were commonly owned, or subject to an obligation of common assignment, at the time the invention was made. For 35 U.S.C. 102(a) to apply, the reference must have a publication date earlier in time than the effective filing date of the application, and must not be applicant’s own work.

32 MirandaNo Gravatar February 14, 2012 at 3:15 pm

I agree that the 103 rejection in view of the 102(a) reference cannot be overcome since the 103(c) exception is only available for 103 over 102(e).

However, in the scenario that Sally’s patent was still pending at the time of Jane’s DOI, a 103 rejection in view of a 102(e) ref would be the only rejection available to the examiner, correct? and in that case the 103(c) common assignee exception would work? all of this is starting to jumble up in my head.

33 SBNo Gravatar February 14, 2012 at 10:47 pm

How long will it take (USPTO) to process the application (Form PTO-158) to register to patent bar exam? I meant how many weeks to get eligibility to write the exam? Thank you

34 RickyNo Gravatar February 15, 2012 at 1:41 pm

It took me about 3 weeks.

35 SBNo Gravatar February 15, 2012 at 5:03 pm

Thank you Ricky!

36 SolNo Gravatar March 28, 2012 at 3:20 am

Sorry, but I could not delete my replies. Please ignore what I said. Just follow Big Tex and PCT Master. For App filed on or after Nov 29, 1999, facing a 103 rejection, 103(c) common ownership exception helps to disqualify any 102(e)/(f)/(g) prior art. To invoke this rule, a statement from applicant or agent, not from owner/assignee.

37 RBNo Gravatar August 11, 2012 at 1:56 pm

My understanding of 102 & 103 seems incomplete.

My understanding is that 102 references have to anticipate all limitations of the examined claim whereas 103 (a) references render the claim obvious sometimes in view of another reference. Hence, the 103 reference(s) are in some sense weaker than 102 references. MPEP clearly states that a 102 reference can be used as 103 reference, and this is perfectly understandable. However, MPEP does not seem to comment clearly enough (at least for me) on the conditions for the reverse, i.e., a 103(a) reference becoming available as a 102 (e.g., 102 (a)) reference. From the exams it seems that just because a 103 reference is published earlier than the examined application/claim makes it a 102(a) reference. There seem to be no comment about the fact that a 102(a) (or b) reference is required to anticipate all limitations the examined claim rather merely rendering the examined claim obvious (in view of another reference), which is the requirement for a 103 reference.

In one of USPTO versions the answer to (this) Sally Ted question was:
18. ANSWER: (E) is the correct answer because Sally’s patent is prior art under 35 U.S.C. §102(a) and cannot be disqualified by a showing of common ownership, which can be used to disqualify prior art under 35 U.S.C. 102(f) and (g). 37 C.F.R. § 1.104(a)(5); MPEP §§ 706.02(l)
(“If the subject method qualifies as prior art under any other subsection (e.g., subsection 35 U.S.C. 102(a) . . .) it will not be disqualified as prior art under 35 U.S.C. 103.”), and 706.02(l)(2)

The above answer gives no reason other than Sally’s patent (published) published before the examined application. I.e., no clear statement about why Sally’s patent is also anticipating all the limitations of the examiner application (seems not be be the case), and also being a 102(a) reference.

In this Sally & Ted question and in April 2002 AM question 8 (Patsy Practitioner) the assumption seems to be that just because the cited 103 reference is published or patented earlier (than a year?) than the examined application/claim, makes it a 102(a) reference. The question pattern (& answer) in both the questions does not seem to consider the difference (as far as I understand) between anticipating all limitation (102) of the examined claim and merely rendering the the examined claim obvious (103).

The answer given for the Patsy Practitioner is:

8. ANSWER: The correct answer is (D). The prior art exception in 35 U.S.C. § 103(c) only applies to references that are only prior art under 35 U.S.C. § 102(e), (f), or (g). In this situation, the Jones patent qualifies as prior art under § 102(a) because it was issued prior to the filing of the Clark application (IS THIS ENOUGH?). See MPEP § 706.02(l)(3). Also, evidence or common ownership must be, but has not been, presented. Mere argument or a statement alleging common ownership does not suffice to establish common ownership. Answer (A) is a proper reply in that it addresses the examiner’s rejection by specifically pointing out why the examiner failed to make a prima facie showing of obviousness. See 37 C.F.R. § 1.111. Answer (B) is a proper reply. See MPEP § 715. Answer (C) is a proper reply. See MPEP § 716. Answer (E) is a proper reply because perfecting a claim of priority to an earlier filed German application disqualifies the Jones reference as prior art.

Comments on the above from Exam takers and lawyers ( I am an engineer) would be be help for me to get a better understanding of 102 & 103.


38 TeetopNo Gravatar December 12, 2012 at 5:24 pm

First and foremost, 102 defines prior art. Once you’ve established that something is prior art under 102, it can be used to invalidate a claim under either 102 (anticipating) or 103 (rendering obvious). So, if you have a piece of art that qualifies as prior art under, e.g., 102(a), and it discloses every element of a claim, then you have an anticipatory 102(a) reference. You’ll face a 102(a) rejection. But, if you have a piece of art that qualifies as prior art under 102(a), but it does NOT disclose every element of the claim, then it still counts as prior art under 102(a) and can be used in an obviousness rejection under 103.

I’ll agree that some of the language thrown around in this discussion is a little imprecise and can contribute to confusion. It would be clearer if we described Sally’s patent as a “103 reference qualifying under 102(a)” rather than as a “102(a) reference.” I think that would also help some of the folks above who thought the question was asking how we could disqualify Sally’s patent, when the question is really about disqualifying it from consideration as prior art.

39 chemEgirlNo Gravatar August 18, 2012 at 3:34 pm

sally’s patent is a 102 (e) reference because it is filed before jane’s. jane’s is rendered “obvious” under 103 (a) in view of sally. the 103 (a) rejection of Jane as obvious over 102 (e) reference Sally is overcome by showing “common ownership or assignment” of the invention at the time of Jane’s application. the issue here i’m confused with is whether sally’s lack of assignment for Ted as “assignee of record” would still qualify to prove 103 (c) common assignment/ownership. I think e would be the answer because sally’s assignment is not of record and therefore cannot be applied to show 103 (c). Any input is appreciated.

40 chemEgirlNo Gravatar August 18, 2012 at 4:43 pm

ignore comment above. no assignment records are required to show common ownership. statement from applicant or attorney is sufficient per 706.02 (l) (2)

41 RBNo Gravatar December 12, 2012 at 8:45 pm

Teetop, Thanks for your comments. As I said, I do understand a 102 (a) can quite easily be a 103 (a) reference. However, considering the differences between anticipation and obviousness, it is, at least to an engineer like me, it is a bit difficult to understand how a 103 reference becomes a 102 reference, just because it is published. Seems like the impact/strength/rigor of 102 to is ignored. How is this justified in real such cases, it seems, some lawyers would certainly argue the differences between anticipation & obviousness.

BTW, I passed the Exam today. This site is extremely helpful, much better than courses that cost upwards of 2-3K.

42 BradNo Gravatar December 18, 2012 at 12:48 pm

Perhaps it is helpful to think of it as a two-step process.

The first is that the reference must qualify as prior art. This doesn’t necessarily involve a substantive look at what is actually taught in a reference. 102 defines what types of documents and situations can qualify as prior art (i.e. invention dates, publication dates, filing dates, who conceived and when, etc). If the first step is not passed, there is no need to continue to step two.

The second step includes is a substantive examination of what is actually taught by the reference to determine whether it can be used to actually reject a claim. For 102, it must anticipate (i.e. show all of the claim limitations) in order to support a rejection. If not every claim limitation is shown, then it still may be used in a 103 rejection under some circumstances.

43 patentmanNo Gravatar July 30, 2015 at 8:30 pm

All of answers are acceptable since Sally’s patent is under 102a (known by him through his invention before Jane invented; or he got patent before she invented), 102(e)(2) (Sally filed application for patent that was granted before Jane invented), 102(g)(2)(Sally invented before Jane invented). In addition, MPEP 706.02(l)(1) II p. 700-70 ¶1 9th Edition states that 103(c) as enacted applies to applications filed before November 29,1999. Therefore, since prior art can be used as 102(e) and (g), 103(c) as enacted can be applied.

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