26. Where a reference relied upon in a 35 U.S.C. § 103 rejection qualifies as prior art only
under 35 U.S.C. § 102(f), or (g), which of the following represents the most comprehensive
answer in accord with proper USPTO practice and procedure as to the action an applicant should
take to overcome the rejection?
(A) Present proof that the subject matter relied upon and the claimed invention are
currently commonly owned.
(B) Present proof that the subject matter relied upon and the claimed invention were
commonly owned at the time the later invention was made.
(C) Present proof that the subject matter relied upon and the claimed invention were
subject to an obligation to assign to the same person at the time the later invention
was made.
(D) (A) and (B).
(E) (C) and (D).
26. All answers accepted.
Appears that B and C would be right. Any thoughts?
I completely agree, based on:
706.02(l)(1) Rejections Under 35 U.S.C. 103(a) Using Prior Art Under 35 U.S.C. 102(e), (f), or (g); Prior Art Disqualification Under 35 U.S.C. 103(c) [R-6]
35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.
*****
(c)
(1) Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.
This appears to be a mistake on the exam. I agree the correct answer is clearly B & C. If this was on the actual exam I would be pretty annoyed because you could spend a long time staring at the MPEP trying to figure out what you’re missing.
I also immediately wanted (B) and (C), so I’m guessing we’re on the right track here.
As long as “proof” covers statement, and the “proof” came from the inventors
B yes, why C? An OBLIGATION to asssign is not an assignment or common ownership.
Strike that, first sentence of 706.02(l) (2) includes obligations to assign in definition of common ownership
Some people reported they got this repeat in their current test. I wonder how the answer options are, both (B) and (C) should be included in one of the answer options.
I think A could be an answer in this Q, as the comprehensive answer asked.
Isn’t it possible if both inventors are currently identical by amendment of inventorship?
my brain is not working, incorrect?
No, the current ownership must exist at the time that the later invention is made. An assignment of the invention after it was made cannot remove a 103(a) prior art under the exceptions of 103(c).