Q) Prior Art Exclusion of 35 USC 103(c) (10.03.11a)

by admin on April 8, 2010 · 13 comments

Test takers report a variation of question #11 from the October 2003 (AM) patent bar exam is in the Prometric database.

11. Application A was filed after November 29, 2000. Reference X and application A were commonly owned at the time the invention of application A was made. In accordance with the patent laws, rules and procedures as related in the MPEP the prior art exclusion of 35 USC 103(c) can be properly invoked to obviate which of the following rejections?

(A) A rejection under 35 USC 102(e) based on reference X, if reference X is prior art only under 35 USC 102(e).

(B) A double patenting rejection based on reference X, if reference X is available as prior art only under 35 USC 102(e).

(C) A rejection under 35 USC 103(a) based on reference X, if references X is available as prior art only under 35 USC 102(e).

(D) (B) and (C).

(E) All of the above.

ANSWER: The correct answer is (C). See MPEP § 706.02(l) et seq. In accordance with proper USPTO policy and procedure, the prior art exclusion of 35 U.S.C. § 103(c) can only be invoked when the reference only qualifies as prior art under 35 U.S.C. § 102(f), 35 U.S.C. § 102(g), or 35 USC 102(e) for applications filed on or after November 29, 1999, the application and the reference were commonly owned, or subject to an assignment to the same person, at the time the invention was made, and the reference was used in an obviousness rejection under 35 U.S.C. § 103(a). Answer (A) is incorrect. The prior art exclusion in 35 U.S.C. § 103(c) cannot obviate rejections made under 35 U.S.C. § 102(e). See MPEP 706.02(l)(1). Answer (B) is incorrect. The prior art exclusion in 35 U.S.C. § 103(c) cannot obviate double patenting rejections. See MPEP §§ 706.02(l)(1) and (l)(3).

1 Soonrealsoon February 6, 2011 at 12:32 am

How is (a) not available under 103(c)?

a rejectoin of (a) is based on a PA under 102(e)..

or is it that 103(c) can only be used to overcome obviousness rejections?

2 YesUCan February 18, 2011 at 3:18 am

103(c) can only overcome 103 obviousness rejection using 102(e), (f),(g) prior arts

3 patenttips March 19, 2011 at 7:18 pm

you have to swear back to get over 102a or 102e. you can’t say hey it’s commonly owned

4 Jun July 12, 2011 at 6:10 pm: “It is important to recognize that 35 U.S.C. 103(c) applies only to consideration of prior art for purposes of obviousness under 35 U.S.C. 103. It does not apply to or affect subject matter which is applied in a rejection under 35 U.S.C. 102 or a double patenting rejection.”

5 LM March 20, 2011 at 2:59 am

what is the difference between 103(a) and 103(c)?
When it is rejected u/103(a) and 103(c)?
Little confused – could anyone please explain?
Thanks.

6 Austin March 24, 2011 at 3:03 pm

103(a) is the rejection and 103(c) is the exception to the 103(a) rejection. i.e. 103(a) says no patents that are obvious over prior art and 103(c) says that references and the current application that are commonly owned or subject to assignment to the same assignee are not available for the examiner to explain why your invention is obvious. look in the back of the MPEP appendix L under 35 U.S.C. 103(a) and (c).

7 Austin March 24, 2011 at 3:05 pm: sorry, if that sounded crass. I meant look in the back of the MPEP if you need more detail.
8 LM March 24, 2011 at 3:16 pm: Thanks – it is very clear for me now.

9 Becker May 17, 2011 at 3:32 pm