Comments on: Q) Sally, Ted and Spot Remover (4.01.10p)

By: fengyuwuzu

fengyuwuzu — Tue, 11 Oct 2011 15:23:17 +0000

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

By: paul

paul — Fri, 16 Sep 2011 02:02:01 +0000

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.

By: DW

DW — Tue, 09 Aug 2011 19:44:07 +0000

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.

By: James

James — Fri, 01 Jul 2011 08:06:48 +0000

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

By: BigBadVoodoDaddy

BigBadVoodoDaddy — Sun, 26 Jun 2011 02:25:12 +0000

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.

By: BigBadVoodoDaddy

BigBadVoodoDaddy — Sun, 26 Jun 2011 02:14:02 +0000

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

By: BigBadVoodoDaddy

BigBadVoodoDaddy — Sun, 26 Jun 2011 02:12:50 +0000

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.

By: Dave

Dave — Tue, 14 Jun 2011 03:02:18 +0000

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.

By: misspatent

misspatent — Sat, 02 Apr 2011 15:03:07 +0000

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.

By: Number_27

Number_27 — Tue, 23 Nov 2010 20:22:13 +0000

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.”