Q) Prior Art under 35 USC 102(d) (4.03.3p)

by admin on April 7, 2010 · 19 comments

in Exam Questions

Recent test takers report question #3 from the October 2003 (pm) exam is in the Patent Bar database of tested questions.

3. In accordance with the USPTO rules and the procedures in the MPEP, in which of the following instances is the reference properly available as prior art under 35 USC 102(d)?
(A) A U.S. patent application is filed within the one year anniversary date of the filing date of the foreign application. The reference is the foreign application.
(B) The applicant files a foreign application, later timely files a U.S. application claiming priority based on the foreign application, and then files a continuation-in-part (CIP) application, and the claims in the CIP are not entitled to the filing date of the U.S. parent application. The foreign application issues as a patent before the filing date of the CIP application and is used to reject the claims directed to the added subject matter under 35 USC 102(d)/103. The reference is the foreign application.
(C) The applicant files a foreign application, and later timely files a U.S. application claiming priority based on the foreign application. The examined foreign application has been allowed by the examiner and has not been published before the U.S. application was filed. The reference is the foreign application.
(D) The reference is a defensive publication.
(E) All of the above.

ANSWER: (B) is the most correct answer. See 35 U.S.C. § 102(d); MPEP § 2135.01, under the heading “A Continuation – In – Part Breaks The Chain Of Priority As To Foreign As Well As U.S. Parents.” If an applicant files a foreign application, later files a U.S. application claiming priority based on the foreign application, and then files a continuation – in – part (CIP) application whose claims are not entitled to the filing date of the U.S. parent, the effective filing date of the CIP application is the filing date of the CIP. The applicant cannot obtain the benefit of either the U.S. parent or foreign application filing dates. In re van Langenhoven, 173 USPQ 426, 429 (CCPA 1972); Ex parte Appeal No. 242 – 47, 196 USPQ 828 (Bd. App. 1976). (A) is incorrect. 35 U.S.C. § 102(d). (C) is not correct. 35 U.S.C. § 102(d); MPEP § 2135.01, under the heading “An Allowed Application Can Be A ‘Patent’ For Purposes Of 35 U.S.C. 102(d) As Of The Date Published For Opposition Even Though It Has Not Yet Been Granted As A Patent,” citing Ex parte Beik, 161 USPQ 795 (Bd. App. 1968). An application must issue into a patent before it can be applied in a 35 U.S.C. 102(d) rejection. Ex parte Fujishiro, 199 USPQ 36 (Bd. App. 1977). (D) is not correct. 35 U.S.C. § 102(d); MPEP § 2136, under the heading “Defensive Publications Are Not Prior Art As Of Their Filing Date,” citing Ex parte Osmond, 191 USPQ 334 (Bd. App. 1973). (E) is not correct inasmuch as (A), (C) and (D) are not correct.

{ 19 comments… read them below or add one }

1 StephenNo Gravatar August 12, 2010 at 6:44 pm

I understand why B is correct, but I don’t understand why E is necessarily wrong. Yes, Defensive Publications are not prior art as of their filing date, but instead they are prior art as of their publication date. E doesn’t tell you when the defensive publication was filed and it doesn’t tell you when the rejected application was filed. It’s also important to note that Defensive Publications were only allowed from April1968 until May 8, 1985. A defensive publication could be prior art in the above scenario if it was published before the applicant’s patent. The absence of a publish date for the Defensive Publication and the applicant’s patent filing makes E as plausible answer, but I think B is certainly correct.

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2 lanceNo Gravatar August 12, 2010 at 7:39 pm

You mean D…but I see your point. I’d just say that it just isn’t the MOST correct answer.

As for choice B, I’d also say that 2127 supports the answer choice:

“The court reversed a rejection over a patent which was a continuation-in-part of an abandoned application. Applicant’s filing date preceded the issue date of the patent reference.”

It’s the opposite in the question…issue date preceded filing date, thus the foreign patent reference is prior art.

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3 PHOSITANo Gravatar March 3, 2011 at 11:52 am

I think (D) is incorrect because a defensive publication would be a rejection for abandonment under 102(c) not under 102(d).

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4 ELSNo Gravatar March 3, 2011 at 12:23 pm

Put another way, I think (D) is wrong because a defensive publication is not “granted” in the sense of 102(d). As stated in 2135.01 heading as a requirement for 102(d) “To Be “Patented” an Exclusionary Right Must Be Awarded to the Applicant”. In my understanding, no exclusionary right is awarded to the filer of a defensive publication, it merely creates prior art.

5 SolNo Gravatar April 1, 2012 at 6:20 pm

it has nothing to do with 102(c)

a defensive publication, as its name says, is not a patent and thus never a prior under 102(d)

“enforcable right” is the essence of 102(d)

6 jkpatentlawNo Gravatar June 16, 2012 at 5:51 pm

A defense publication is not even an application, so pertaining to the question, it doesn’t qualify as prior art under 102(d) because it’s not an application. It says this in MPEP.

7 ELSNo Gravatar March 1, 2011 at 4:16 pm

I also understand why B would generally be correct, but how do we know there is a 12 month gap between the filing of the foreign application and the filing of the CIP? It seems unlikely, but definitely possible that the foreign application was filed less than 12 months prior to the CIP. Is there something I’m missing?

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8 dbNo Gravatar April 17, 2011 at 9:22 pm

Good point ELS. At first I interpreted that the “not entitled to a priority date” would necessarily mean greater than 1 year, but I guess the claims could just not have been supported in the parent application.

Also, I think it is ambiguous regarding whether the claims were in (either literally or disclosed) the CIP were also in the foreign application.

On the other hand, on the most correct answer theory, this answer is the one that would most qualify for 102(d) out of all of the other answers.

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9 BigBadVoodoDaddyNo Gravatar June 21, 2011 at 5:06 pm

The one point i waill make that a defensive publication such as a SIR is prior art as of its FILING date, not its publication date.

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10 jkpatentlawNo Gravatar June 16, 2012 at 5:53 pm

It says the opposite,….Also, a defense publication isn’t an application. So the only date it gets is as of its publication date. Not its filing date.

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11 RLNo Gravatar September 11, 2013 at 5:48 pm

Defensive publications: not effective as of filing date.
SIR: is effective as of filing date – 102(e).

12 SECNo Gravatar November 24, 2011 at 5:43 am

I cannot understand why (B) can be a appropriate answer. According to my knowledge, the claims in the CIP which are not entitled to the filing date of the U.S. patent application is not in the foreign application too. As a result, the foreign patent cannot be a prior art for the newly added claims in the CIP application because the foreign patent did not disclose and claim the newly added claims.
I appreciate your opinion.

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13 NicolaNo Gravatar April 26, 2013 at 3:06 pm

Focus on Sol’s post below but I also had the same glitch with this as SEC. See, Q15) Spanish Phone (MPEP 1500, Design Patent)

The new material in the CIP kills off anticipation by the now not so 102(d) prior art; the formerly prior art does not anticipate the new material!

But I am going with the best answer analysis out of the available answers.

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14 RLNo Gravatar September 11, 2013 at 5:50 pm

That is why answer (B) also states that it is rejected under 103. Since there is no longer anticipation, there is obviousness.

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15 KerstinNo Gravatar January 23, 2012 at 3:06 pm

I really don’t see how answer B connects to 35 USC 102(d) as prior art. Can anyone shed some light on this for me? For B to be correct the foreign application needs to be prior art under 102(d). 102(d) requires (among other things) that the invention was patented in a foreign country prior to the date of the application for patent in the U.S (this is the case in answer choice B) and the application for patent in the US must have been filed more then 12 months before the filing of the application in the U.S. I guess it’s the last part that doesn’t seem to fit. What in answer B tells us that the foreign patent app was filed more then 12 months before the US patent application? I see ELS and db’s corresopondence above-just wondering if anyone has any other insight. Or if I am missing something else.

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16 Mambo5No Gravatar January 23, 2012 at 4:03 pm

I agree with you. It’s a poor question.

The main distinction between answers (A), (B), and (C) seems to be the effective filing date of the later US application. (A) and (C) get to claim priority to the prior foreign application, but (B) as a CIP with new claims cannot get priority back to the foreign application.

(B) is therefore the closest to being correct, but like you say, (B) is not for sure going to be a 102(d) bar either without that >12 month prior filing.

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17 SolNo Gravatar April 1, 2012 at 6:21 pm

Yes, the answer missed that point. The CIP has to be filed more than 12 months after the foreign filing date.

18 RTNo Gravatar April 12, 2012 at 4:52 pm

If one files a foreign patent, and then files the same patent in the US:

a) before 1 year, he has a foreign priority date, but

b) if after 1 year, he gets a 102(d) rejection due to prior art?

Is this right?

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19 SolNo Gravatar April 12, 2012 at 10:13 pm

what does 102(d) say?

(d)the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, <> by the applicant or his legal representatives or assigns in a foreign country <>> prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than twelve months before the filing of the application in the United States <>

So to answer your questions
b) if after 1 year, he gets a 102(d) rejection due to prior art?

If the foreign patent app has got enforceable rights before US filing, YES bar
If the foreign patent app has got enforceable rights after US filing, NO bar
If the foreign patentapp has NO enforceable rights before US filing, NO bar.

I recommend read EVERY word in 102, every word, literally.

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