Q) Canceled matter as Prior Art (4.03.48p)

by admin on April 7, 2010 · 15 comments

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Recent test takers report question #48 from the October 2003 (pm) exam is in the Patent Bar database of tested questions.

48. In accordance with the USPTO rules and the procedures set forth in the MPEP, 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 USC 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.

ANSWER: (D) is the most correct answer. See 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. Asstated 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.”

{ 15 comments… read them below or add one }

1 rhmNo Gravatar August 15, 2010 at 1:51 pm

I am kind of confused by the statement “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.” MPEP § 901.05. When exactly does a (E) foreign patents become available as prior art based on this?

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2 AngelaNo Gravatar February 16, 2011 at 2:15 pm

I think the foreign patents or publications are available as of their date of patenting or publication. Didn’t find support in MPEP though.

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3 ELSNo Gravatar March 5, 2011 at 3:07 pm

2127 Domestic and Foreign Patent Applications as Prior Art
III. FOREIGN APPLICATIONS OPEN FOR PUBLIC INSPECTION (LAID OPEN APPLICATIONS)

When the specification is not issued in printed form but is announced in an official journal and anyone can inspect or obtain copies, it is sufficiently accessible to the public to constitute a “publication” within the meaning of 35 U.S.C. 102(a) and (b). …

Older cases have held that laid open patent applications are not “published” and cannot constitute prior art. Ex parte Haller, 103 USPQ 332 (Bd. App. 1953). However, whether or not a document is “published” for the purposes of 35 U.S.C. 102 and 103 depends on how accessible the document is to the public. …

The contents of a foreign patent application should not be relied upon as prior art until the date of publication (i.e., the insertion into the laid open application) can be confirmed by an examiner’s review of a copy of the document. See MPEP § 901.05.

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4 BobNo Gravatar August 3, 2011 at 2:19 am

Variant on 8/2/11

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5 RemandedNo Gravatar September 18, 2011 at 8:35 pm

Got a variant of this today, 18 September 2011.

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6 sgwNo Gravatar October 17, 2011 at 3:57 pm

Got a variant of this 10/15/2011.

The question asked when canceled matter becomes prior art under 102(a) and 102(e). (At the time of filing or after publication.)

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7 maggieNo Gravatar October 19, 2011 at 3:13 pm

1. Abandon app disclosed to public can used as 102(e) its filing date if incorporated by reference in another patent that published
2. Cannot use 102(e) if info never published to public
3. Can use 102(b) = use date it became accessible by public
4. Cancelled matter from the application file wrapper of a U.S. patent may be used as prior art as of the patent or publication date under 102(a) but not as 102(e)
4. Laid-open to public = published

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8 maggieNo Gravatar November 15, 2011 at 9:07 pm

901.01 Canceled Matter in U.S. Patent Files [R-3]

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 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.

9 maggieNo Gravatar November 15, 2011 at 9:08 pm

! think 1 and 2 are wrong see below from mpep

10 maggieNo Gravatar November 15, 2011 at 9:08 pm

901.01 Canceled Matter in U.S. Patent Files [R-3]

Canceled matter in the application file of a U.S. patent or U.S. application publication is not a proper reference as of the filing date under 35 U.S.C. 102(e). However, matter canceled from the application file wrapper of a U.S. patent or U.S. application publication< may be used as prior art as of the patent or publication date, respectively,< in that it then constitutes prior public knowledge under 35 U.S.C. 102(a).

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11 KFNo Gravatar March 11, 2012 at 11:53 pm

Does anyone know what the variants of this question are looking like?

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12 Mom in DCNo Gravatar March 12, 2012 at 8:55 am

I think I had the exact question on my March 8 reexam … no variant.

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13 ZNo Gravatar March 31, 2013 at 1:49 pm

Got this 3/30/13.

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14 RLNo Gravatar September 13, 2013 at 1:38 am

Does file wrapper = application file?

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15 Am_I_OverStudying?No Gravatar September 28, 2013 at 5:10 am

@RL file wrapper is the written record in the patent office of negotiations between an applicant and that office preceding the issuance or rejection of a patent. Credit to merriam webster dictionary.

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