Q) Ex Parte Rejection (10.03.50p)

by admin on April 19, 2010 · 12 comments

in Exam Questions

Recent test takers report that question #50 from the October 2003 (PM) test is in the patent bar exam database.

50. In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following facts are required for 35 USC 102(g) to form the basis for an ex parte rejection:
(1) The subject matter at issue has been actually reduced to practice by another before the applicant’s invention.
(2) There has been no abandonment, suppression or concealment.
(3) A U.S. patent application for the subject matter at issue has been filed by another prior to the filing of the applicant’s application.
(4) A U.S. patent has been granted for the subject matter at issue prior to the filing of the applicant’s application.
(A) Fact (1) only
(B) Fact (2) only
(C) Facts (1) and (2)
(D) Facts (1), (2) and (3)
(E) Facts (1), (2), (3) and (4)

ANSWER: (C) is the most correct, as a 35 U.S.C. § 102(g) rejection requires actual reduction to practice by another, and lack of abandonment, suppression, or concealment. MPEP § 2138 states “35 U.S.C. 102(g) may form the basis for an ex parte rejection if: (1) the subject matter at issue has been actually reduced to practice by another before the applicant’s invention; and (2) there has been no abandonment, suppression or concealment. See, e.g., Amgen, Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 1205, 18 USPQ2d 1016, 1020 (Fed. Cir. 1991); New Idea Farm Equipment Corp. v. Sperry Corp., 916 F.2d 1561, 1566, 16 USPQ2d 1424, 1428 (Fed. Cir. 1990); E.I. DuPont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1434, 7 USPQ2d 1129, 1132 (Fed. Cir. 1988); Kimberly-Clark v. Johnson & Johnson, 745 F.2d 1437, 1444-46, 223 USPQ 603, 606-08 (Fed. Cir. 1984).” (A) is incorrect, as actual reduction to practice is not sufficient to establish a 35 U.S.C. § 102(g) rejection where the subject matter has been abandoned, suppressed, or concealed. MPEP § 2138. (B) is incorrect, as abandonment, suppression, or concealment is not sufficient to establish a 35 U.S.C. § 102(g) rejection where the subject matter has been reduced to practice in that conception alone is not sufficient. See Kimberly-Clark v. Johnson & Johnson, 745 F.2d 1437, 1445, 223 USPQ 603, 607 (Fed. Cir. 1984). MPEP § 2138. (D) is incorrect because no prior patent application is required for a § 102(g) rejection. MPEP § 2138. Similarly, (E) is incorrect, because no prior patent application nor issued patent is required for a rejection under 35 U.S.C. § 102(g).

{ 12 comments… read them below or add one }

1 XNo Gravatar June 16, 2010 at 8:16 pm

But if an inventor A had conception before the applicant, but RTPed after applicant’s filing date, and showed the required diligence, doesn’t A get priority??

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2 XNo Gravatar June 17, 2010 at 5:47 pm

I think I found the answer in the MPEP: according to 2138, this is a difference between an ex parte vs inter partes 102(g) rejection: as it says above, 102(g) may form the basis for an ex parte rejection if the subject matter at issue has been actually RTP’ed by another before the applicant’s invention AND no a/s/c. For the inter partes 102(g) rejection, the party who was first to conceive and “couple a later-in-time reduction to practice with diligence . . .” would win. See 2138.01.

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3 AlexNo Gravatar June 17, 2010 at 5:49 pm

X,
Yes A would get priority under those circumstances, but this question is asking about a proper ex parte 102 (g) rejection. (Im assuming you confused with answer choice C vs D)

To qualify as prior art under 102(g), however, there must be evidence that the subject matter was actually reduced to practice, in that conception alone is not sufficient. See Kimberly-Clark, 745 F.2d at 1445, 223 USPQ at 607.

While the filing of an application for patent is a constructive reduction to practice, the filing of an application does not in itself provide the evidence necessary to show an actual reduction to practice of any of the subject matter disclosed in the application as is necessary to provide the basis for an ex parte rejection under 102(g).

Thus, absent evidence showing an actual reduction to practice (which is generally not available during ex parte examination), the disclosure of a United States patent application publication or patent falls under 102(e) and not under 102(g)

Hope this helps

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4 BigbadvoododaddyNo Gravatar July 13, 2011 at 11:54 pm

Showed up again July 12,2011

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5 BobNo Gravatar August 3, 2011 at 2:16 am

Got this on 8/2/11

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6 maggieNo Gravatar August 26, 2011 at 11:42 pm

8/24/11

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7 patentgeekchickNo Gravatar September 22, 2011 at 8:23 pm

verbatim 9.22.11

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8 DavidNo Gravatar February 19, 2012 at 1:35 am

Had this Q on 2/10/2012

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9 KillianRedNo Gravatar March 17, 2012 at 5:23 pm

Got this one 3/17/12

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10 KNo Gravatar June 3, 2012 at 12:18 am

verbatim 6/2/2012

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11 ZNo Gravatar March 31, 2013 at 2:11 pm

Got this 3/30/13.

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12 Chris RNo Gravatar October 22, 2013 at 1:24 pm

This question isn’t live anymore, right? I don’t see how it could be since 35 U.S.C. 102 changed on March 18, 2013. The new version of section 102 is a first-to-file scheme rather than a first-to-invent one, so reduction to practice is no longer a concern. In fact, the new section 102 doesn’t even have a paragraph (g).

I suppose this question could be made relevant if the fact pattern described a patent application filed before March 18, 2013, which would make the old law applicable, but that is not the case here.

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