16. Which of the following statements regarding a proper prior art reference is true?
(A) Canceled matter in the application file of a U.S. patent is a prior art reference as
of the filing date under 35 U.S.C. 102(e).
(B) Where a patent refers to and relies on the disclosure of a copending subsequently
abandoned application, such disclosure is not available as a reference.
(C) Where the reference patent claims the benefit of an earlier filed, copending but
subsequently abandoned application which discloses subject matter in common
with the patent, and the abandoned application has an enabling disclosure for the
common subject matter and the claimed matter in the reference patent, the
effective date of the reference patent as to the common subject matter is the filing
date of the reference patent.
(D) Matter canceled from the application file wrapper of a U.S. patent may be used as
prior art as of the patent date.
(E) All foreign patents are available as prior art as of the date they are translated into
English.
16. ANSWER: (D). 35 U.S.C. § 102(a). As explained in MPEP § 901.01, the “matter canceled
from the application file wrapper of a U.S. patent may be used as prior art as of the patent date in
that it then constitutes prior public knowledge under 35 U.S.C. 102(a), In re Lund,376 F.2d 982,
153 USPQ 625 (CCPA 1967). See also MPEP § § 2127 and § 2136.02.” (A) is incorrect. 35
U.S.C. § 102(e). As stated in MPEP § 901.01, “Canceled matter in the application file of a U.S.
patent is not a proper reference as of the filing date under 35 U.S.C. 102(e), see Ex parte Stalego,
154 USPQ 52, 53 (Bd. App. 1966).” (B) is incorrect. As stated in MPEP § 901.02, “In re
Heritage, 182 F.2d 639, 86 USPQ 160 (CCPA 1950), holds that where a patent refers to and
relies on the disclosure of a copending abandoned application, such disclosure is available as a
reference. See also In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967).” (C) is incorrect.
As MPEP § 901.02 indicates, where the reference patent claims the benefit of a copending but
abandoned application which discloses subject matter in common with the patent, and the
abandoned application has an enabling disclosure of the common subject matter and claimed
matter in the reference patent, the effective date of the reference as to the common subject matter
is the filing date of the abandoned application. In re Switzer, 77 USPQ 1, 612 O.G. 11 (CCPA
1948); Ex parte Peterson, 63 USPQ 99 (Bd. App. 1944); and Ex parte Clifford,49 USPQ 152
(Bd. App. 1940).” (E) is incorrect. As stated in MPEP § 901.05, “In general, a foreign patent,
the contents of its application, or segments of its content should not be cited as a reference until
its date of patenting or publication can be confirmed by an examiner’s review of a copy of the
document.”
had a question with some of these issues (when canceled matter can be considered prior art and as of what date) on 5/18/11
got variant of this 11/7/11
need to know that this is only available under 102(a) not 102(e)
ChemEEE,
Did you have many KSR questions?
Lisa, read 103 section in chapter 2100 2X. That is what was mainly tested on KSR obviousness on my exam
Thanks, Maggie!
Got this one 3/17/12
Got this or a very similar one on 3/19/12. It definately had answer choices A and D in my question..
Does “Canceled matter from the application file wrapper” mean “canceled from the application” ?
MPEP 2127 says “Canceled matter in the application file of a U.S. patent cannot be relied upon in a rejection under 35 U.S.C.102(e). Ex Parte Stalego, 154 USPQ 52, 53 (Bd. App.1966). The canceled matter only becomes available as prior art as of the date the application issues into a patent since this is the date the application file history becomes available to the public. In re Lund, 376 F.2d 982, 153USPQ 625 (CCPA 1967). ”
Why the cancelled matter can be a prior art as of patent date, not the publication date ? becuase in case of a published patent application including applications issued later, it should be the publication date as a prior art date.
Am I right ?
MPEP 901.01 also says “Canceled matter in the application file of a U.S. patent >or U.S. application publicationor U.S. application
publicationor publication date, respectively,< in that it then constitutes prior public knowledge under 901.02 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 5, Aug. 2006 900-2 35 U.S.C. 102(a). In re Lund, 376 F.2d 982,"
it seems that the questions separate a patent and a patent application even thought the patent has a publication date before issuance.
MPEP 901.01 also says “Canceled matter in the application file of a U.S. patent >or U.S. application publicationor U.S. application publicationor publication date, respectively,< in that it then constitutes prior public knowledge under 901.02 MANUAL OF PATENT EXAMINING PROCEDURE Rev. 5, Aug. 2006 900-2 35 U.S.C. 102(a). In re Lund, 376 F.2d 982,"
it seems that the questions separate a patent and a patent application even thought the patent has a publication date before issuance.
Got this 3/30/13.