Q) Rejection, 35 USC 102(e) (4.03.42a)

by admin on April 10, 2010 · 5 comments

in Exam Questions

Question #42 from the April 2003 (AM) patent bar exam is reported by exam takers as a question in the current exam database.

42. Which of the following practices or procedures may be employed in accordance with the USPTO rules and the procedures set forth in the MPEP to overcome a rejection properly based on 35 USC 102(e)?
(A) Persuasively arguing that the claims are patentably distinguishable from the prior art.
(B) Filing an affidavit or declaration under 37 CFR 1.132 showing that the reference invention is not by “another.”
(C) Filing an affidavit or declaration under 37 CFR 1.131 showing prior invention, if the reference is not a U.S. patent that either claims the same invention or claims an obvious variation of the subject matter in the rejected claim(s).
(D) (A) and (C).
(E) (A), (B) and (C).


ANSWER: (E) is the most correct answer. See MPEP § 706.02(b), under the heading “Overcoming A 35 U.S.C. § 102 Rejection Based On A Printed Publication Or Patent.” (A), (B), and (C) alone, as well as (D) are not correct because they are not the most inclusive.

{ 5 comments… read them below or add one }

1 KFNo Gravatar March 11, 2012 at 4:18 pm

FYI-2136.05 also provides the basis for this correct answer.

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2 PeggyNo Gravatar October 24, 2012 at 12:55 am

For C, why won’t the affidavit overcome the rejection if the reference is a U.S. patent that either claims the same invention or claims an obvious variation of the subject matter in the rejected claim?

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3 PeggyNo Gravatar October 24, 2012 at 12:59 am

I answered my own question:

1.131 CFR Declaration

2. Only used for A/E

3. Not used for:
a. Statutory bar
b. Double patenting
c. Applicant admitted something is prior art
d. Disclosure by same party in non-co-pending application
e. Something PATENTED/PUBLISHED before you FILED

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4 RLNo Gravatar September 14, 2013 at 10:45 pm

The answer key is wrong in citing MPEP 706.02(b). The correct citing should be MPEP 706.02(k), which deals with overcoming 102(e) rejections:

The earlier filed application, if patented or published,would constitute prior art under 35 U.S.C. 102(e). Therejection can be overcome by:
(A) Arguing patentability over the earlier filedapplication;
(B) Combining the subject matter of the copendingapplications into a single application claiming benefitunder 35 U.S.C. 120 of the prior applications andabandoning the copending applications (Note that a claimin a subsequently filed application that relies on acombination of prior applications may not be entitled tothe benefit of an earlier filing date under 35 U.S.C. 120since 35 U.S.C. 120 requires that the earlier filedapplication contain a disclosure which complies with 35U.S.C. 112, first paragraph for each claim in thesubsequently filed application. Studiengesellschaft Kohlem.b.H. v. Shell Oil Co., 112 F.3d 1561, 42 USPQ2d 1674(Fed. Cir. 1997).);
(C) Filing an affidavit or declaration under 37 CFR1.132 showing that any unclaimed invention disclosed inthe copending application was derived from the inventorof the other application and is thus not invention “byanother” (see MPEP § 715.01(a), § 715.01(c), and §716.10);
(D) Filing an affidavit or declaration under 37 CFR1.131 showing a date of invention prior to the effectiveU.S. filing date of the copending application. See MPEP§ 715; or
(E) For an application that is pending on or afterDecember 10, 2004, a showing that (1) the prior art andthe claimed invention were, at the time the invention wasmade, owned by the same person or subject to anobligation of assignment to the same person, or (2) thesubject matter is disqualified under the amendment to 35U.S.C. 103(c) made by the CREATE Act (i.e., jointresearch agreement disqualification).

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5 HarryNo Gravatar March 7, 2016 at 3:57 pm

MPEP 9th Edition 706.02(b)(2)

A rejection based on pre-AIA 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(a) showing prior invention, if the reference is not a U.S. patent or a U.S. patent application publication claiming interfering subject matter as defined in 37 CFR 41.203(a) (subject matter of a claim of one party would, if prior art, have anticipated or rendered obvious the subject matter of a claim of the opposing party and vice versa). See MPEP § 715 for more information on 37 CFR 1.131(a) 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(a) 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) Submitting a claim to priority under 35 U.S.C. 119(a) – (d) within the time period set in 37 CFR 1.55:
(1)
(a) for applications filed on or after September 16, 2012, by filing a corrected application data sheet under 37 CFR 1.76 which identifies a prior foreign application in accordance with 37 CFR 1.55, or
(b) for applications filed prior to September 16, 2012, by filing a corrected application data sheet under 37 CFR 1.76 which identifies a prior foreign application in accordance with 37 CFR 1.55 or by identifying the prior foreign application in the oath or declaration under pre-AIA 37 CFR 1.63,
and
(2) by establishing that the prior foreign application satisfies the enablement and written description requirements of 35 U.S.C. 112(a) (for applications filed on or after September 16, 2012), or 35 U.S.C. 112, first paragraph (for applications filed prior to September 16, 2012); or filing a grantable petition to accept an unintentionally delayed priority claim under 37 CFR 1.55. See MPEP §§ 213 – 216. 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 ).
(F) Submitting a benefit claim under 35 U.S.C. 119(e) or 120, within the time periods set in 37 CFR 1.78:
(1)
(a) for applications filed on or after September 16, 2012, 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, or
(b) for applications filed prior to September 16, 2012, 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,
and
(2) establishing that the prior application satisfies the enablement and written description requirements of 35 U.S.C. 112(a) (for applications filed on or after September 16, 2012), or 35 U.S.C. 112, first paragraph (for applications filed prior to September 16, 2012) or filing a grantable petition to accept an unintentionally delayed claim under 37 CFR 1.78.

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