Q) Overcoming a Rejection based on 102(e) (10.03.39a)

by admin on April 9, 2010 · 15 comments

in Exam Questions

Test takers report a variation of question #39  from the October 2003 (AM) patent bar exam is in the Prometric database.

39. On May 1, 2001, a complete patent application was filed with the USPTO naming H as the sole inventor. A primary examiner rejected all the claims in the application under 35 USC 102(e) as being anticipated by a U.S. Patent granted to inventors H and S. The patent was granted on September 25, 2001 on an application filed on December 7, 2000. The claims of the patent application and U.S. patent define the same patentable invention as defined in 37 CFR 1.601(n). The U.S. patent and the application have common ownership. Which of the following, if properly submitted by applicant, would overcome the rejection in accordance with the patent laws, rules and procedures as related in the MPEP?
(A) File a terminal disclaimer in accordance with 37 CFR 1.321(c).
(B) File a declaration under 37 CFR 1.131 to establish the inventor invented the subject matter of the rejected claim prior to the effective date of the reference X.
(C) File a declaration stating that the application and patent are currently owned by the same party, and that the inventor named in the application is the prior inventor under 35 USC 104.
(D) (A) and (C).
(E) All of the above.

CREDIT GIVEN FOR ALL ANSWERS.

{ 15 comments… read them below or add one }

1 PeterNo Gravatar April 10, 2010 at 4:41 pm

706.02(b) states:
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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2 adminNo Gravatar April 10, 2010 at 5:38 pm

Peter,
Thanks for posting this!

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3 JonathanNo Gravatar August 9, 2010 at 12:51 pm

How does “A” (filing a terminal disclaimer) get around a 102(e) anticipation? I feel like I’m forgetting something, but a) it’s not a 103(c) exception because the rejection is 102, b) it’s not a provisional rejection because the prior art is not pending, and c) 37 CFR 1.321, as cited in the A answer, calls out applicability to judicially created double patenting or reexam.

What am I missing? Thanks!

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4 SusanNo Gravatar August 9, 2010 at 9:15 pm

In reviewing the question, is it possible that Answer E as provided on the exam was meant to state “none of the above”? That’s why credit was given for all answers, all of which are all incorrect based on the facts, dates, and a “same invention” type of situation? Comments?

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5 StephenNo Gravatar August 12, 2010 at 11:56 pm

Susan is right. E should have read “none of the above.” D is the closest answer but it is wrong because it states “currently owned” when it should be the invention was commonly owned at the time the rejected application was filed.

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6 SusanNo Gravatar August 13, 2010 at 12:38 am

This forum is really helpful as I am studying for the exam to be taken on Sept. 7th, so thanks to everybody who posts. I think Answer D is actually wrong because 102e prior art can only be disqualified under the “commonly owned” doctrine if the rejection was under 103c. Now, if this was a 102e/103c rejection, D, as worded would have been still been wrong for the reasons Stephen stated.

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7 Ying JiangNo Gravatar February 27, 2011 at 9:14 pm

I looked at PLI study material, it really says credit given to all of the answers. Thanks again to this website.

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8 OverworkkedNo Gravatar April 26, 2011 at 12:38 pm

This question is rather complex and the reasoning behind it is important to understand for other 102(e) issues. Here’s my 2 cents why each answer is wrong.

ANSWER (A) File a terminal disclaimer in accordance with 37 CFR 1.321(c).

RESPONSE:

A terminal disclaimer is ineffective to overcome the 102(e) rejection because no double patenting rejection is YET pending. A double patenting rejection _may_ result from this situation, but it is not _yet_ applicable to this situation presently. See MPEP E8R8, 706.02(b), Overcoming a 35 U.S.C. 102Rejection Based on a Printed Publication or Patent, 700-26 to 27. And more pointedly, if interference proceedings were necessary, the patent application would still be barred by 102(e)

ANSWER (B) File a declaration under 37 CFR 1.131 to establish the inventor invented the subject matter of the rejected claim prior to the effective date of the reference X.

RESPONSE:

Showing prior inventorship in this situation is not _presently_ effective to overcome a 102(e) rejection because the 102(e) rejection here is based on the same patentable invention as defined in 37 CFR 1.601(n) (removed from MPEP E8R8, see 37 CFR § 41.203(a)).

Thus, if H went down this course to show prior inventorship, an interference would need to be declared or the examiner would issue a double patenting rejection. MPEP E8R8, 706.02(b), 700-27. While this “seems” to overcome the 102(e) rejection, the MPEP makes it clear that such is “is not an acceptable method of overcoming the rejection.”

ANSWER (C) File a declaration stating that the application and patent are currently owned by the same party, and that the inventor named in the application is the prior inventor under 35 USC 104.

RESPONSE:

First, this is not a rejection under 103(a) and thus the common ownership of 103(c) provisions are irrelevant to a 102(e) rejection. See MPEP E8R8 – 706.02(l)(1)(I), MPEP at 700-55 (“35 U.S.C. 103(c) applies only to prior art usable in an obviousness rejection under 35 U.S.C. 103. Subject matter that qualifies as anticipatory prior art under 35 U.S.C. 102 is not affected, and may still be used to reject claims as being anticipated.”); see also 715.01(b) (arguing this more explicitly vis-à-vis 102(e) rejections).

Second, a showing of prior inventorship, even under 35 USC 104, still has the same problems as Answer (B) above. An interference and/or double-patenting rejection will follow and a 102(e) rejection is still not “overcome” by MPEP standards. See A/B above.

[BUT, arguably, you’ve “overcome” the 102(e) rejection by turning it into an interference or double patenting rejection. However, this route still leaves the patent application in an un-allowable state, AND if the interference is held and upheld against the patent application, the 102(e) rejection is essentially sustained!]

FUTURE TEST QUESTIONS:

What WOULD be effective (or a tricky test question)?

MPEP E8R8, 706.02(b) has several answers, the most confusing of which relative to this discussion is:

Filing an affidavit or declaration under 37 CFR 1.132 showing that the reference invention is not by “another.” See MPEP, E8R8, § 715.01(a), § 715.01(c), and § 716.10.

This route requires H and S to argue between themselves as to the scope of their respective contributions to the “same patentable invention.”

Note that MPEP, E8R8, 715.01(a), at 700-276 to 277 makes this answer even MORE confusing, because it requires the examiner to treat 1.131 affidavits as 1.132 affidavits if improperly filed. However, note that in the question, the 1.131 affidavit is just showing the date of inventorship of the application subject matter and not arguing the SCOPE of what H invented versus what S invented in the reference patent X.

My 2 cents. MSCJ

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9 MirandaNo Gravatar March 31, 2012 at 1:08 pm

so would filing an affidavit or declaration under 37 CFR 1.132 showing that the reference invention is not “by another” work?

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10 SolNo Gravatar April 3, 2012 at 3:09 am

I think it is possible but not easy because of the additional inventor S

The claims of the patent application and U.S. patent define the same patentable invention.

In reality, there should be a double patenting rejection.

11 mimiNo Gravatar September 19, 2012 at 9:41 pm

I think that if you file an affidavit 1.132, it would be a double patenting.
Then, you have two cases.
One is that the issued subject matters between them are same, then you cannot overcome the double patenting rejection under U.S.C. 101.
Another is that the issued subject matters between them are obvious(ODP), then you can file a terminal disclaimer.

Anyway, this Q go to a double patenting as Sol’s thought.

Thanks, Overworkked!!

12 PeggyNo Gravatar October 27, 2012 at 10:31 pm

I think 1.131 is swearing back (prior invention argument) and 1.132 is used during a reexam

CFR 1.132

§1.132 Affidavits or declarations traversing rejections or objections.
When any claim of an application or a patent under reexamination is rejected or objected to, any evidence submitted to traverse the rejection or objection on a basis not otherwise provided for must be by way of an oath or declaration under this section.

13 BigbadvoododaddyNo Gravatar July 11, 2011 at 12:01 pm

Good analysis Overworkked.
Only thing I would like to point out is that since they are commonly owned, there will be no possibility of an interference.
Other than than you are spot on with the 1.132 reasoning.
One other learning point is the not so tested concept of 1.130 affidavits, which are used in a 103 rejection to disqualify commonly owned prior art, coupled with a terminal disclaimer (this can use current ownership as opposed to ownership/assignment at time of later invention).
Thx

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14 SolNo Gravatar April 10, 2012 at 11:36 pm

Change the awnwer, E is none of above, then E is correct

Or change the question 102(e) to 103 rejection,

then (A AND C) together is a 130 affidavit to disqualify reference X, so a way to overcome 103 rejection.

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15 GDBNo Gravatar April 13, 2012 at 8:48 pm

Just to reiterate – Overworked’s analysis of answer A is not 100% correct.

A statutory double patenting objection can be advanced on the basis that the application and reference patent are commonly owned. The double patenting objection will be statutory because the application is said to be anticipated by 102(e) [statutory double patenting is where the claims are the same]. A statutory double patenting objection cannot be overcome by a terminal disclaimer.

If the objection had been under 102(e) and 103 then there could be an objection of non-statutory (or obviousness-type) double patenting, In that case a terminal disclaimer would have been appropriate.

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