Q) Foreign Priority (4.03.22p)

by admin on April 8, 2010 · 31 comments

in Uncategorized

Recent test takers report question #22 from the October 2003 (pm) exam is in the Patent Bar database of tested questions.

22. The Potter patent application was filed on June 6, 2002, claiming subject matter invented by Potter. The Potter application properly claims priority to a German application filed on June 6, 2001. In a first Office action all the claims of the Potter application are rejected under 35 USC 102(e) based on a U.S. patent application publication to Smith et al (“Smith”). A registered practitioner prosecuting the Potter application ascertains that the relevant subject matter in Smith’s published application and Potter’s claimed invention were, at the time Potter’s invention was made, owned by ABC Company or subject to an obligation of assignment to ABC Company. The practitioner ascertains that the Smith application was filed on April 10, 2001 and that the Smith application was published on December 5, 2002. Smith and Potter do not claim the same patentable invention. To overcome the rejection without amending the claims which of the following replies would not comply with the USPTO rules and the procedures set forth in the MPEP to be an effective reply for overcoming the rejection?
(A) A reply that only contains arguments that Smith fails to teach all the elements in the only independent claim, and which specifically points out the claimed element that Smith lacks.
(B) A reply that consists of an affidavit or declaration under 37 CFR 1.131 properly proving invention of the claimed subject matter of the Potter application prior to April 10, 2001.
(C) A reply that consists of an affidavit or declaration under 37 CFR 1.132 properly showing that Smith’s invention is not by “another.”
(D) A reply that properly states that the invention of the Potter application and the Smith application were commonly owned by ABC Company at the time of the invention of the Potter application.
(E) All of the above.



ANSWER: (D) is the most correct answer. See 35 USC §§ 102(e) and 103(c); MPEP § 706.02(l)(1). 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), and that are applied in a rejection under 35 U.S.C. § 103(a). In this situation, the Smith reference was applied in a rejection under 35 U.S.C. § 102(e) and not under 35 U.S.C. § 103(a). See MPEP § 706.02(l)(1). Therefore, the reply in answer (D) would not overcome the rejection. 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. See MPEP § 706.02(b). (B) is incorrect inasmuch as it is a proper reply. See MPEP § 706.02(b). Answer (C) is incorrect inasmuch as it is a proper reply. See MPEP 706.02(b). Answer (E) is not a correct answer because answers (A), (B) and (C) all are replies that are in accordance with the USPTO rules and procedures set forth in the MPEP.

{ 31 comments… read them below or add one }

1 Chemist62No Gravatar April 9, 2010 at 2:29 pm

I do not get this question. MPEP clearly says that:

706.02(b) Overcoming a 35 U.S.C. 102
Rejection Based on a Printed
Publication or Patent [R-3]

When the claims of the reference U.S. patent or U.S. patent application publication and the application are directed to the same invention or are obvious variants, an affidavit or declaration under 37 CFR 1.131 is not an acceptable method of overcoming the rejection.

So the reference is a US patent or patent application, and (B) would be incorrect. Yes/no?

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2 SolNo Gravatar March 31, 2012 at 10:53 pm

NO. Look at the third word in your referenced sentence

When the “claims” of the reference …

Here Simith discloses but does NOT claim Potter’s subject matter; thus 131 can be used.

Basically pay attention to the difference of “claiming something” and “disclosing something”.

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3 SNo Gravatar April 9, 2010 at 2:49 pm

I agree that B would be incorrect too…

37 CFR 1.131 is not an acceptable method of overcoming the rejection.

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4 Chemist62No Gravatar April 9, 2010 at 4:27 pm

I got it, they do not claim the same patentable invention, so 1.131 is ok

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5 BigbadvoododaddyNo Gravatar July 11, 2011 at 1:20 pm

Thats correct they do not claim the same patentable invention so an affidavit under 1.131 is ok.
HOWEVER

THE SMITH PATENT WAS FILED EARLIER

So given the facts, I dont believe one could antedate the prior art.

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6 TJLNo Gravatar August 14, 2011 at 11:31 am

Despite the Smith patent having an earlier filing date, I believe Potter could antedate the prior art by establishing prior conception using 1.131 (and diligence), given that Potter and Smith don’t claim the same patentable invention.

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7 HSNo Gravatar November 29, 2011 at 6:13 pm

Question is..which would NOT comply with USPTO rules. IMO, answer D is wrong.
The above situation is a provisional 102(e) rejection and can be overcomed by choices B, C,D, hence wrong answer. Choice A is would not comply with rules and hence the right answer.

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8 RockyvxiiNo Gravatar January 6, 2012 at 10:50 pm

HS, I don’t think A is the right answer.

There are 6 ways to overcome a 102(e) rejection, according to the mypatentbar.com outline:

1. Persuasively argue that the claims are patently distinguishable from the prior art
2. Amending the claims to make them patently distinguishable.
3. Filing an affidavit under 37 CFR 1.132 to show the earlier app is not by “another.”
4. File an Affidavit under 37 CFR 1.131 showing that this applicant actually invented the invention before the other prior applicant. The applicant needs to have some pretty good evidence (that would stand up in court) to show that he actually made the invention before the other competing app. was filed.
5. See C above, amending to claim the benefit of a valid earlier.
6. See D. above, amending to claim priority over a valid PA.

Choice D is not in compliance w/ MPEP because simply replying that the two inventions were commonly owned at the time of invention is not an effective response in this scenario. That response only works if a 103(a) rejection was being made. Here, it was a 102(e) rejection.

[MPEP 706.02(l)(3) states: “Examiners are reminded that a reference used in an anticipatory rejection under 102(e), (f), or (g) is not disqualified as prior art if evidence is provided to show that the reference is disqualified under 103(c). Generally, such a reference is only disqualified when
(A)proper evidence is filed,
(B)the reference only qualifies as prior art under 102(e), (f) or (g) (e.g., not 102(a)or (b)), and
(C)the reference was used in an obviousness rejection under 103(a).”

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9 JenNo Gravatar January 11, 2012 at 5:02 pm

D is the answer. The question is disguising itself to sound like a 103(a) rejection but it’s indeed a 102(e) question.

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10 Mambo5No Gravatar January 12, 2012 at 10:03 am

Murky question. None of the above rationales make sense to me.
Here is my alternative explanation to why D is the answer:

103(c) (2) and (3) create a SPECIAL NARROWED QUALIFICATION of the phrase “owned by the same person, or subject to an obligation of assignment to the same person.”

As 103 (c) (1) says, this SPECIAL NARROWED QUALIFICATION only applies where there is an attempted rejection under 102 (e), 102 (f), or 102 (g) ONLY. It would NOT apply in the case of, say, a 102 (a) (b) (c) or (d) rejection.

The SPECIAL NARROWED QUALIFICATION of “owned by the same person, or subject to an obligation of assignment to the same person,” is (as 103 (c) (2) and 103 (c) (3) go on to explain), is:

There is a WRITTEN CONTRACT, termed a “JOINT RESEARCH AGREEMENT,” between the prior invention party and the claimed invention party.

Therefore, MERE OWNERSHIP by the same person or company (here, ABC), or even being subject to an obligation of assignment to the same person or company, is INSUFFICIENT to overcome rejection. There must also exist a written “JOINT RESEARCH AGREEMENT.”

In this question, there is no evidence of a written JOINT RESEARCH AGREEMENT in the problem or in answer D. D alleges only common ownership. Therefore it will NOT overcome the 102(e) rejection, so D is the right answer.

Tell me if you agree or disagree with this reasoning.

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11 SolNo Gravatar March 31, 2012 at 10:59 pm

Totally disagree, sorry.

Common ownership, obligation to make common ownership, and joint research agreement are three equal criterio of 103(c)

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12 JenNo Gravatar January 12, 2012 at 3:50 pm

You can tell that it’s a 102(e) question instead of a 103 (a) because there is only one reference they are using to reject Potter with. With a 103(a) rejection, the examiner uses 2 references. (on the exam that is). In real life, I’m not sure. At least that’s how I see it.

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13 KerstinNo Gravatar February 1, 2012 at 12:37 am

Jen-what to you mean by under a 103(a) rejection the examienr uses 2 references (on the exam that is)? Do you mean using both the Potter and Smith references when looking at the German reference? And how does this help you distinguish between 103(a) and 102(e)?

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14 justpassedNo Gravatar February 1, 2012 at 2:42 pm

this was on the test a week ago

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15 justpassedNo Gravatar February 1, 2012 at 2:46 pm

the answer explains it well. You cannot use common ownership on a 102(e) rejection, you can only use it in 103(a) rejections when the Examiner relies on the reference under 102(e,f or g). The rejection here is a straight 102(e) (prior filing date, Potter cannot use common ownership to avoid Smith, it just is what it is… however in an obviousness rejection (as stated above), you can.

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16 justpassedNo Gravatar February 1, 2012 at 2:48 pm

Jen, it has nothing to do with there being one or two refs since smith alone could’ve been used in an obviousness rejection (in real life AND on the test)…just FYI.

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17 SolNo Gravatar March 31, 2012 at 11:04 pm

That is not quite right. Obviouness rejection does not require more than one reference. There are plenty of single reference 103 rejections in real life. For example, your App claims a drug containing 1g of compound X,and a singlereference disclosed the a drug containing 2g of compound X.the Exmainer can make a prima facie case of obviouness based on the single refernce and saying that it is obvious for a skilled artisan to use 2g X after learning 1g X is good.

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18 KFNo Gravatar March 11, 2012 at 8:55 pm

So, just to be clear, a common ownership argument CANNOT be used to overcome a 102(e) rejection.

However, a common ownership argument CAN be used to overcome a
103(a) obviousness rejection where the examiner relies on a reference that would fit under 102(e)-(application filed, published, or patented before the invention of another); -or- 102(f) (fraud); -OR- 102(g)—(interference or before other’s invention and no abandonment, supress, or conealment).

Yes?

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19 SolNo Gravatar March 31, 2012 at 11:05 pm

Yes, you are almost right, but pay attention to ONLY under 102(e), (f), and (g). If the refernce is any 102(a), (b), (c) or (d), you cannot then apply 103(c) exception.

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20 MigNo Gravatar March 22, 2012 at 7:36 pm

I don’t understand how you can rely on 102(e) when the inventions are “patentably distinct.” 102(e) rejections require the claims to be substantially identical right? Then how are the inventions patentably distinct? It makes no sense.

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21 MigNo Gravatar March 22, 2012 at 7:38 pm

I guess if it’s described in the disclosure in the earlier app.

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22 MirandaNo Gravatar March 23, 2012 at 10:01 pm

Correct. John White says double patenting and 102(e) rejections are usually made together since the same patentable invention will also likely contain an anticipating disclosure.

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23 MirandaNo Gravatar March 23, 2012 at 10:06 pm

Oops, misread your question. i meant to say that a PROVISIONAL double patenting and PROVISIONAL 102(e) rejection are usually made together since you need a common inventor/assignee.

24 SolNo Gravatar March 31, 2012 at 11:15 pm

Several concepts need to be clearly understood.

First, A 102a, b, c, d, e, f, g Reference, (i.e., prior art) is something qualifed under 102a, b, c, d, e, f, g

Second, A 102 reference does not necessarily support a 102 rejection

Third, “to support a 102 rejection” is not the criteria for something to be qualified as a 102 reference. A qualified reference can be well qualified but could not support any 102 rejection

Fourth, a 103 rejecton needs to be supported by one or more 102 reference (i.e, prior art). If any 102 reference that is used to support the 103 rejection is only 102e, f, g reference, then 103(c) can be used where application to disqualify it limitedly in rebutting the 103 rejection (not any other rejectoin such as 101, 102, double…)

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25 MirandaNo Gravatar April 1, 2012 at 4:33 pm

those are great points, Sol.

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26 RTNo Gravatar April 9, 2012 at 2:59 pm

It took me a while recognize that the questions was which of the following would NOT support a rejection. A-C DO properly overcome the rejection.

(D) would NOT properly overcome the 102(e) rejection because common ownership does not overcome 102(e).

This was probably already stated above somewhere, but I just noticed it.

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27 kingNo Gravatar September 17, 2012 at 3:55 pm

Most of you missed it. Answer (D) from the choices is the only one note from MPEP’s rules for how to overcome a 102(e) rejection.

Quote from 706.02(b)

A rejection based on 35 U.S.C. 102(e) can be overcome by:
(A)Persuasively arguing that the claims are patentably distinguishable from the prior art;
(B)Amending the claims to patentably distinguish over the prior art;
(C)Filing an affidavit or declaration under 37 CFR 1.132 showing that the reference invention is not by “another.” See MPEP § 715.01(a), § 715.01(c), and § 716.10;
(D)Filing an affidavit or declaration under 37 CFR 1.131 showing prior invention, if the reference is not a U.S. patent or a U.S. patent application publication claiming the same patentable invention as defined in 37 CFR 41.203(a). See MPEP § 715 for more information on 37 CFR 1.131 affidavits. When the claims of the reference U.S. patent or U.S. patent application publication and the application are directed to the same invention or are obvious variants, an affidavit or declaration under 37 CFR 1.131 is not an acceptable method of overcoming the rejection. Under these circumstances, the examiner must determine whether a double patenting rejection or interference is appropriate. If there is a common assignee or inventor between the application and patent, a double patenting rejection must be made. See MPEP § 804. If there is no common assignee or inventor and the rejection under 35 U.S.C. 102(e) is the only possible rejection, the examiner must determine whether an interference should be declared. See MPEP Chapter 2300 for more information regarding interferences;
(E)Perfecting a claim to priority under 35 U.S.C. 119(a)-(d) within the time period set in 37 CFR 1.55(a)(1) or filing a grantable petition under 37 CFR 1.55(c). See MPEP § 201.13. The foreign priority filing date must antedate the reference and be perfected. The filing date of the priority document is not perfected unless applicant has filed a certified priority document in the application (and an English language translation, if the document is not in English) (see 37 CFR 1.55(a)(3)) and the examiner has established that the priority document satisfies the enablement and description requirements of 35 U.S.C. 112, first paragraph; or
(F)Perfecting benefit under 35 U.S.C. 119(e) or 120, within the time periods set in 37 CFR 1.78(a) or filing a grantable petition under 37 CFR 1.78(a), by amending the specification of the application to contain a specific reference to a prior application or by filing an application data sheet under 37 CFR 1.76 which contains a specific reference to a prior application in accordance with 37 CFR 1.78(a), and by establishing that the prior application satisfies the enablement and written description requirements of 35 U.S.C. 112, first paragraph. See MPEP § 201.11 and § 706.02.

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28 DeaterNo Gravatar November 21, 2014 at 1:42 pm

Be careful of the other variation of this question. There is a version, as noted above, where the rejection is 102(e) and the answer is D. The variant question is a rejection under 103(a) based on Smith in view of Jones, and the answer to that one is B, where the reply states common ownership. Most of the circumstances are the same, except for the 102(e) vs. the 103(a), so pay close attention to the difference.

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29 AnonNo Gravatar August 17, 2015 at 3:39 pm
30 ClorisNo Gravatar January 19, 2016 at 6:21 pm

my question is, how can Answer C) be achieved: properly showing that Smith’s invention is not by “another.”? Since the call of the question already clearly states the inventors are Potter and Smith respectively.

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31 mayteaNo Gravatar January 20, 2016 at 10:34 am

“Smith and Potter do not claim the same patentable invention.” so each patent has a different inventive entity. The claims determine who is named as the inventor.

1.132 properly overcomes this by showing that Smith’s invention is not by “another.”

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