An Examiner can make both 102/103 rejections. When shouldn’t he make both?
Q) 102 and 103 Rejections
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An Examiner can make both 102/103 rejections. When shouldn’t he make both?
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ANSWER: When cumulative (see 700). Does anyone have the section or can anyone clarify? This answer is from the forum.
Know that an Examiner can make both 102/103 rejections. When shouldn’t he make both? ANSWER – when cumulative (see 700)
FROM MPEP 706.02
Prior art rejections should ordinarily be confined strictly to the best available art. Exceptions may properly be made, for example, where:
(A) the propriety of a 35 U.S.C. 102 or 103 rejection depends on a particular interpretation of a claim;
(B) a claim is met only in terms by a reference which does not disclose the inventive concept involved; or
(C) the most pertinent reference seems likely to be antedated by a 37 CFR 1.131 affidavit or declaration.
Such rejections should be backed up by the best other art rejections available. Merely cumulative rejections, i.e., those which would clearly fall if the primary rejection were not sustained, should be avoided.
See also MPEP § 707.05.
12/30/10: Had one where answers asked if examiner should reject under 102, 103, 102/103, 112, none. Claimed percent of ingredients A and B were close to, but not directly in, the ranges disclosed in the patent. The language used in the Q is directly in the MPEP saying in this case, the examiner should not issue a 102 rejection but rather should reject under 103, which is what I answered.
I think this is covered in chapter 2100 under 103
Boating Bob:
Where do you find the answer in the MPEP which says the examiner should reject under 103?
Justin:
I think Boating Bob’s question is a repeat. Look at April 15, 2003 AM exam. The rejection could not be a 102 since the reference did not anticipate the claim (have all the same elements)
In chapter 2100 is says something to the effect that although the range is not anticipated (because not identical, overlapping ect) if it out of the range, the range is but likely to work the same (there is an example ~0.5 out side), then examiner should reject on 103 as obvious.
Sorry.. I forgot to include Question number
correction:
think Boating Bob’s question is a repeat. Look at April 15, 2003 AM exam Q44. The rejection could not be a 102 since the reference did not anticipate the claim (have all the same elements)
The difference between 102 and 103 PA references is that 102 PA must meet the so called 4 corner rule that is the reference has to contain all elements of the invention in question. By contrast, under 103, examiner can combine PA references, so no need to meet the 4 corner rule. 103 is much higher bar than 102 in that sense. I guess 102/103 reject would be cumulative if the PA is an on point (describing the exact invention) anticipation of the invention in question, then there is no need for 103.
Saw this question or a variant on 07/25/11.
DISTINCTION BETWEEN 35 U.S.C. 102 AND 103
The distinction between rejections based on 35 U.S.C. 102 and those based on 35 U.S.C. 103 should be kept in mind. Under the former, the claim is anticipated by the reference. No question of obviousness is present. In other words, for anticipation under 35 U.S.C. 102, the reference must teach every aspect of the claimed invention either explicitly or impliedly. Any feature not directly taught must be inherently present. Whereas, in a rejection based on 35 U.S.C. 103, the reference teachings must somehow be modified in order to meet the claims. The modification must be one which would have been obvious to one of ordinary skill in the art at the time the invention was made. See MPEP § 2131 – § 2146 for guidance on patentability determinations under 35 U.S.C. 102 and 103.
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This is when he/she should make 102/103 rejections
2183 IF NONEQUIVALENCE SHOWN, EXAMINER MUST CONSIDER OBVIOUSNESS
However, even where the applicant has met that burden of proof and has shown that the prior art element is not equivalent to the structure, material or acts described in the applicant’s specification, the examiner must still make a 35 U.S.C. 103 analysis to determine if the claimed means or step plus function is obvious from the prior art to one of ordinary skill in the art. Thus, while a finding of nonequivalence prevents a prior art element from anticipating a means or step plus function limitation in a claim, it does not prevent the prior art element from rendering the claim limitation obvious to one of ordinary skill in the art. Because the exact scope of an “equivalent” may be uncertain, it would be appropriate to apply a 35 U.S.C. 102/103 rejection where the balance of the claim limitations are anticipated by the prior art relied on.
A similar approach is authorized in the case of product-by-process claims because the exact identity of the claimed product or the prior art product cannot be determined by the examiner.
III.A REJECTION UNDER 35 U.S.C. 102/103 CAN BE MADE WHEN THE PRIOR ART PRODUCT SEEMS TO BE IDENTICAL EXCEPT THAT THE PRIOR ART IS SILENT AS TO AN INHERENT CHARACTERISTIC
MPEP 2112
When appropriate to apply a 35 U.S.C. 102/103 rejection?
(1) 112 6p equlivence claims (In order to rely on equivalence as a rationale supporting an obviousness rejection, the equivalency must be recognized in the prior art, and cannot be based on applicant’s disclosure)
(2) Product by process claims (silent to an inherent aspect)
Can anyone give more/better examples of questions they have seen that are on point for this concept?
A few 103(a) rejections based on 102(e) only on 5/22/12. Make sure to know when you can use statement of “commonly owned or assigned” to rebut rejection, and know what situation makes 103(a)/102(e) instead of 102(a).
can you expand a little on this?
what situation makes 103(a)/102(e) instead of 102(a)
Thank you!
Do you mean this?
718 Affidavit or Declaration to Disqualify Commonly Owned Patent as Prior Art, 37 CFR 1.130 [R-6]
See MPEP § 804.03 and § 706.02(l) through § 706.02(l)(3) for subject matter disqualified as prior art under 35 U.S.C. 103(c) where the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.
37 CFR 1.130(a) addresses those situations in which the rejection in an application or patent under reexamination to be overcome is a rejection under 35 U.S.C. 103 in view of a U.S. patent or U.S. patent application publication due to the requirement in 37 CFR 1.131 that any U.S. patent or U.S. patent application publication to be antedated not claim the same patentable invention (as defined in 37 CFR 41.203(a)) as the application or patent under reexamination. The applicant or patent owner is also prevented from proceeding in an interference due to the provision in 37 CFR 41.206 that an interference will not normally be declared or continued between applications that are commonly owned, or an application and an unexpired patent that are commonly owned.
As 37 CFR 1.130(a) addresses those situations in which the inventions defined by the claims in the application or patent under reexamination and by the claims in the U.S. patent or patent application publication are not patentably distinct, 37 CFR 1.130(a)(1) requires a terminal disclaimer in accordance with 37 CFR 1.321(c), and 37 CFR 1.130(a)(2) requires an oath or declaration stating, inter alia, that the inventor named in the application or patent under reexamination is the prior inventor under 35 U.S.C. 104.
I see how it can be 102e but not 102b since there’s a grace period associated with 102b, but I can’t remember how it could be 102e but not 102a. I know I’ve seen this, but I can’t remember.
706.02(f)Rejection Under 35 U.S.C. 102(e) [R-3]
35 U.S.C. 102(e), in part, allows for certain prior art (i.e., U.S. patents, U.S. patent application publications and WIPO publications of international applications) to be applied against the claims as of its effective U.S. filing date. This provision of 35 U.S.C. 102 is mostly utilized when the publication or issue date is too recent for the reference to be applied under 35 U.S.C. 102(a) or (b).
Never mind, I remember. 102(a) requires that the reference issue or publish before the applicant’s invention date whereas 102(e) just requires that the reference was invented before the applicant’s invention date and then publish or issue before the applicant’s filing date. For 102(e), issue/publication could be after the applicant’s invention date. Right?