Question #12 from the April 2003 (AM) patent bar exam is reported by exam takers as a question in the current exam database.
12. 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. A first Office action contains a rejection of all the claims of the application under 35 USC 103(a) based on a U.S. patent application publication to Smith in view of a U.S. patent to Jones. 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 also observes that the Smith patent application was filed on April 10, 2001 and that the patent 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 timely replies would 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 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.
(C) A reply that consists of an affidavit or declaration under 37 CFR 1.132 stating that the affiant has never seen the invention in the Potter application before.
(D) A reply that consists of an affidavit or declaration under 37 CFR 1.131 properly proving invention of the claimed subject matter of Potter application only prior to June 6, 2001.
(E) A reply that consists of a proper terminal disclaimer and affidavit or declaration under 37 CFR 1.130.
ANSWER: (B) is the most correct answer. See 35 U.S.C. § 103(a); MPEP §§ 706.02(l)(1) and 2145. The prior art exception in 35 U.S.C. § 103(c) is applicable because the Smith reference is only prior art under 35 U.S.C. § 102(e), (f), or (g), was applied in a rejection under 35 U.S.C. § 103(a), and was commonly owned at the time Potter made the invention claimed by Potter. See MPEP § 706.02(l)(1). Answer (A) is not a correct answer in that one cannot show nonobviousness by attacking the references individually where the rejections are based on a combination of references. See MPEP § 2145. Answer (C) is not a correct answer. An affirmation that the affiant has never seen the invention before is not relevant to the issue of nonobviousness of the claimed subject matter. See MPEP 716. Answer (D) is not a correct answer. Invention must be proved prior to the effective filing date of Smith, which is April 10, 2001. See MPEP § 715. Answer (E) is not a correct answer. A terminal disclaimer and affidavit or declaration under 37 CFR § 1.130 are not proper because the Potter application and the Smith reference are not claiming the same patentable invention. See MPEP § 706.02(k).
To quote the answer
“A terminal disclaimer and affidavit or declaration under 37 CFR § 1.130 are not proper because the Potter application and the Smith reference are not claiming the same patentable invention. See MPEP § 706.02(k).”
I do not think that terminal disclaimers are appropriate if the two references ARE claiming the same invention. Right? Doesn’t that make this last part wrong…or at least confusing. Any thoughts or guidance?
Thanks
I think this is a better reason why E is rejected as per the terminal disclaimer. Because there are three applications a terminal disclaimer would be required in two of them and assignment of all three would have to be demonstrated…
Or am I just missing something obvious, I have way overstudied!
Patfield I agree that this one is confusing and it took me like 30 minutes to get it straight after looking things up, but if you look at 706.02(k) on page 700-49 of the MPEP, it says:
“Where the applications are claiming the same patentable invention, a terminal disclaimer and an affidavit or declaration under 37 CFR 1.130 may be used to overcome a rejection under 35 U.S.C. 103 in a common ownership situation if the earlier filed application has been published or matured into a patent. See MPEP § 718.”
In this question it says “Smith and Potter do not claim the same patentable invention.” I think this is why the terminal disclaimer cannot be used. Also, in chapter 800 in section 804.02 regarding Nonstatutory double patenting rejections, it says “It should be emphasized that a terminal disclaimer cannot be used to overcome a rejection under 35 U.S.C. 102(e)/103(a).” In this question, the rejection is a 103(a) rejection with the Smith reference being prior art under 102(e). That took a lot of lookup!!!!!!
I agree with Patfield. Terminal disclaimers are used to prevent prolonging of patent term due to claiming obvious variants of an invention. Statutory disclaimers, on the other hand, are used to disclaim exact same inventions.
The reasoning of incorrect answer (E) is wrong. Terminal disclaimers can only be used against obvious-type rejections (103):
MPEP 718:
When any claim of an application or a patentunder reexamination is rejected under 35 U.S.C. 103 ona U.S. patent or U.S. patent application publication whichis not prior art under 35 U.S.C. 102(b), and the inventionsdefined by the claims in the application or patent underreexamination and by the claims in the patent or publishedapplication are not identical but are not patentably distinct,and the inventions are owned by the same party, theapplicant or owner of the patent under reexamination maydisqualify the patent or patent application publication asprior art. The patent or patent application publication canbe disqualified as prior art by submission of:(1) Aterminal disclaimer in accordance with § 1.321(c).
But, it cannot be used for 103/102(e),(f),(g) rejections:
MPEP 804.02:
It should be emphasized that a terminal disclaimer cannot be used to overcome a rejection under 35 U.S.C. 102(e)/103(a).
1. Obviousness-Type
>A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); and In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985).anticipated by, or is,< an invention claimed in the patent? If the answer is yes, then an "obviousness-type" nonstatutory double patenting rejection may be appropriate. Obviousness-type double patenting requires rejection of an application claim when the claimed subject matter is not patentably distinct from the subject matter claimed in a commonly owned patent, or a non-commonly owned patent but subject to a joint research agreement as set forth in 35 U.S.C. 103(c)(2) and (3), when the issuance of a second patent would provide unjustified extension of the term of the right to exclude granted by a patent. See Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 58 USPQ2d 1869 (Fed. Cir. 2001); Ex parte Davis, 56 USPQ2d 1434, 1435-36 (Bd. Pat. App. & Inter. 2000).
Got this one verbatim today, 18 September 2011.
Verbatim on 2/4/12
Also got this on 2/2, as well as the Potter 102(e) variant
Does anyone have an example of the Potter 102(e) variant as mentioned by PC TearsofJoy above?
here ya go
http://mypatentbar.com/2010/04/08/q-foreign-priority-4-03-22p/
Ok so just to make the answer clear here:
The Potter patent and the Smith patent are patentably distinct. 37 CFR 1.130 only applies if the inventions are not patentably distinct. So a terminal disclaimer is required if the invention is the same invention, even if the claims are not identical, because patent protection has to end on the same date, since it’s the same invention.
Here the invention is different, but still obvious. Since the inventions are still owned by the same inventive entity, however, 103(c) allows you to get rid of the 102(e) reference, and since that is the only reference here that can bar patentability, you are effectively allowed to extend the protection of the obvious improvement with the newer Potter patent. Weird.
So essentially you can gain the time the first patent spent unpublished in prosecution for the obvious improvement by Potter.
But if the above is right, and I think it is, then it’s important to note that if Smith’s invention was invented in the US, there would be still be prior art under 102(a), known or used by others in the US before the date of invention by Potter. And the same owner exception in 103(c) wouldn’t apply. So Potter’s invention could be rejected under 103(a).
The problem doesn’t mention that, however, so if Smith invented his invention somewhere else, 102(a) wouldn’t come into play, and neither would 102(b).
Anyone want to verify that?
The critical point is that the Smith patent was not published prior to the filing date of the Potter patent. If it was, then it would also be available as prior art under 102(a) (and thus making the 103(c) exception unavailable). Does that answer your question?
No, because 102(a) also covers knowledge and use by others in the US. It could still be rejected under 102(a) without publication.
I’m not sure how this really pertains to the question above, but I was under the assumption that these were commonly owned and it would fall under 102 (e) (f) and (g). I didn’t think 102 (a) would be in play here, but if they were different owners then I could see how 102 (a) would come into play. File a terminal disclaimer and they are good to go.
No, I think you are mistaken. Under 2132 subheading III. “by another” means any entity other than the inventive entity. Here Potter and Smith are clearly different inventive entities. 102(a) cannot be overcome by claiming that the inventions are owned by the same person.
As my analysis above indicates, if Smith knew/invented his patentable invention in the United States, his patent application would still be prior art under 102(a) leading to a possible rejection of Potter’s invention as obvious in light of Smith and Jones. If Smith knew/invented his invention in another country, 102(a) would not come into play, which is probably the assumption the question is operating under. Or maybe not, and the examiner just thought the 102(e)/103(a) rejection was sufficient to reject the claims.
Not only that, but you can’t even file a terminal disclaimer here, under a 102(e)/103(a) because, as stated in 804.02, you cannot overcome a 102(e)/103(a) obviousness type invention of patentably distinct inventions with an affidavit and terminal disclosure under 1.130. So you wouldn’t be good to go even if 102(a) didn’t come into play.
Rather, once you file a statement of common ownership in response to a 102(e)/103(a) rejection, you remove the reference as prior art, AND since they are patentably distinct, you don’t have to file a terminal disclaimer. So you get to keep the “bonus” time that your second Potter invention affords you in terms of patent term.
“Not only that, but you can’t even file a terminal disclaimer here, under a 102(e)/103(a) because, as stated in 804.02, you cannot overcome a 102(e)/103(a) obviousness type rejection* of patentably distinct inventions with an affidavit and terminal disclosure under 1.130.”
Both inventions (Potter and Smith) were invented by different people (entities) but the assignments were made to ABC Company, therefore there is common ownership. A works for C and invents X. B works for C and invents X’. A and B assign rights to C. C owns their inventions (X and X’) It all boils down to the common ownership.
I know there is common ownership, but are you even reading what I am writing? Common ownership DOES NOT MATTER for 102(a) rejections. You CANNOT get rid of prior art under 102(a) by claiming common ownership.
I know why the answer to the question is what it is. I am merely remarking that 102(a) COULD play a role in the question as written, because there is an ambiguity as to the place of invention/knowledge by Smith as per 102(a).
2136.04 Different Inventive Entity; Meaning of “By Another” in reference to 102(e) rejection.
2136.05 Overcoming a Rejection Under 35 USC 102(e).
Directs to other portions in MPEP 700 for further clarification.
You are correct that 102(a) could possibly play a role, but at the end of the day this section of the MPEP removes it as a possible selection. In other words, 102(a) is necessarily not the only part of 102 that is deemed “by another” but also exists in 102(e).
Smith PATENT can only be used as a 102(e) reference, not a 102(a) reference.
I understand you are trying to use Smith PATENT as evidence of “known by others” 102(a) on its filing date, April 2001, which is earlier than Potter’s priority date June 2001.
However, think about it again, isn’t this 102(e) use of Smith PATENT?
So USPTO is going to use Simith PATENT under 102(e) only. Then 103(c) comes into play to help Potter. Why not as 102(a) “known by others”? I really don’t know. But this seems the way USPTO is doing business.
So, I think this is correct (albeit oversimplified), right?
There are two Potter questions with almost identical fact patterns that are still being tested:
4.03.12a: In this question, the rejection is based on obviousness under 103(a) using a 102(e) reference, which triggers the 103(c) exception; and therefore, common ownership is proper to overcome the rejection.
4.03.22p: In that question, the rejection is based on anticipation under 102(e); and therefore, common ownership is not a way to overcome the rejection.
Thank you for clearing this up. The discussion was getting confusing because there are two variants running around.
Sabrina, you are right.
Mig – Smith is not 102(a) prior art because 102(a) requires PUBLIC knowledge or use in the US by another. The filing of a patent application is confidential and so the mere fact that Smith was filed prior to Potter does not mean that it was known publicly. It also wasn’t “used” on these facts because there is no indication of actual reduction to practice, only constructive reduction to practice (i.e. filing of the application).
Got both variations 5-10-12
Got both variants. 06.30.2012
I had it 9/22/2012.
Got this 3/30/13.
I am missing something with the Potter question. This is the one that showed up on 4-03 Q12AM
So the issue is the 103(c) exception to a 103(a) rejection based on prior art under 102(e),(f) or (g). My concern in reading MPEP 8r9 102(e) says that “the invention was described in — (1) an application for patent, published under section 122(b) by another filed in the United States before the invention by the applicant for patent,…” is in regards to “the invention” language. It seems to me that the invention they are talking about would be Smith’s invention in relation to the Potter invention. But the fact pattern states Potter and Smith do not claim the same invention so how is the Smith’s US patent App (4/11/01) a prior art per 102(e)…? Because 102(e) presumes the prior another inventor and the subsequent inventor are claiming the same invention. This is not the case here, so what am I missing?
Had this verbatim.
Re mr jazz.
The key is you can disclose without claiming.
That is if you have written enablement in the application it would be a bar regardless if you make claims…