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).
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??
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.
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
Showed up again July 12,2011
Got this on 8/2/11
8/24/11
verbatim 9.22.11
Had this Q on 2/10/2012
Got this one 3/17/12
verbatim 6/2/2012
Got this 3/30/13.
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.
@ChrisR – the AIA did not eliminate ex parte reexamination (MPEP 2200), and the old law will still be relevant for another 19 years (est.), so this question remains very relevant.
@Alex – because we are talking about 102(g) in the context of an ex part reexamination, the evidence you speak of must be in the form of a patent or printed publication. See MPEP 2258 (“Rejections made under 35 U.S.C. 102(g) based on the prior invention of another must be disclosed in a patent or printed publication.”).
There is nothing to suggest that this question refers to an ex parte reexam. It’s an ex parte rejection under pre-AIA 102(g).
MPEP 2138 states that Pre-AIA 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 …. In addition, subject matter qualifying as prior art only under pre-AIA 35 U.S.C. 102(g) may also be the basis for an ex parte rejection under pre-AIA 35 U.S.C. 103.
Therefore, facts (1) and (2) are straight from the 2 prong test for an ex parte rejection under Pre-AIA 102(g).
I believe this answer should now be D due to AIA if I am not mistaken. The MPEP now reads:
“(g)(1) during the course of an interference conducted
under section 135 or section 291, another inventor
involved therein establishes, to the extent permitted in
section 104, that before such person’s invention thereof
the invention was made by such other inventor and not
abandoned, suppressed, or concealed, or (2) before such
person’s invention thereof, the invention was made in this
country by another inventor who had not abandoned, suppressed,
or concealed it. In determining priority of invention
under this subsection, there shall be considered not
only the respective dates of conception and reduction to
practice of the invention, but also the reasonable diligence
of one who was first to conceive and last to reduce to
practice, from a time prior to conception by the other.”
Answer is not going to be anything since 102(g) is eliminated under AIA.
Comments are fixed.