706.02(f) Rejection Under Pre-AIA 35 U.S.C. 102(e) [R-08.2012]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159. See MPEP § 2154 et seq. for the examination of applications subject to the first inventor to file provisions of the AIA involving, inter alia, rejections based on U.S. patent documents.]
Pre-AIA 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 pre-AIA 35 U.S.C. 102 is mostly utilized when the publication or issue date is too recent for the reference to be applied under pre-AIA 35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(b). In order to apply a reference under pre-AIA 35 U.S.C. 102(e), the inventive entity of the application must be different than that of the reference. Note that, where there are joint inventors, only one inventor needs to be different for the inventive entities to be different and a rejection under pre-AIA 35 U.S.C. 102(e) is applicable even if there are some inventors in common between the application and the reference.
706.02(f)(1) Examination Guidelines for Applying References Under Pre-AIA 35 U.S.C. 102(e) [R-08.2017]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159. See MPEP § 2154 et seq. for the examination of applications subject to the first inventor to file provisions of the AIA involving, inter alia, rejections based on U.S. patent documents.]
I. DETERMINE THE APPROPRIATE PRE-AIA 35 U.S.C. 102(e) DATE FOR EACH POTENTIAL REFERENCE BY FOLLOWING THE GUIDELINES, EXAMPLES, AND FLOW CHARTS SET FORTH BELOW:
- (A) The potential reference must be a U.S. patent, a U.S. application publication (35 U.S.C. 122(b) ) or a WIPO publication of an international application under PCT Article 21(2) in order to apply the reference under pre-AIA 35 U.S.C. 102(e).
- (B) Determine if the potential reference resulted from, or claimed the benefit of, an international application. If the reference does, go to step (C) below. The 35 U.S.C. 102(e) date of a reference that did not result from, nor claimed the benefit of, an international application is its earliest effective U.S. filing date, taking into consideration any proper benefit claims to prior U.S. applications under 35 U.S.C. 119(e) or 120 if the prior application(s) properly supports the subject matter used to make the rejection in compliance with pre-AIA 35 U.S.C. 112, first paragraph. See MPEP § 2136.02. In addition, for benefit claims under 35 U.S.C. 119(e), at least one claim of the reference patent must be supported by the disclosure of the relied upon provisional application in compliance with pre-AIA 35 U.S.C. 112, first paragraph, in order for the patent to be usable as prior art under pre-AIA 35 U.S.C. 102(e) as of a relied upon provisional application’s filing date. See MPEP § 2136.03, subsection III.
- (C) If the potential reference resulted from, or claimed the benefit of, an international application, the following must be determined:
- (1) If the international application meets the following three conditions:
- (a) an international filing date on or after November 29, 2000;
- (b) designated the United States; and
- (c) published under PCT Article 21(2) in English,
- then the international filing date is a U.S. filing date for prior art purposes under pre-AIA 35 U.S.C. 102(e). If such an international application properly claims benefit to an earlier-filed U.S. or international application, or to an earlier-filed U.S. provisional application, apply the reference under pre-AIA 35 U.S.C. 102(e) as of the earlier filing date, assuming all the conditions of pre-AIA 35 U.S.C. 102(e), 119(e), 120, 365(c), or 386(c) are met. The subject matter used in the rejection must be disclosed in the earlier-filed application in compliance with pre-AIA 35 U.S.C. 112, first paragraph, in order for that subject matter to be entitled to the earlier filing date under pre-AIA 35 U.S.C. 102(e). See MPEP § 2136.02. In addition, for benefit claims under 35 U.S.C. 119(e), at least one claim of the reference patent must be supported by the disclosure of the relied upon provisional application in compliance with pre-AIA 35 U.S.C. 112, first paragraph, in order for the patent to be usable as prior art under pre-AIA 35 U.S.C. 102(e) as of a relied upon provisional application’s filing date. See MPEP § 2136.03, subsection III. Note, where the earlier application is an international application, the earlier international application must satisfy the same three conditions (i.e., filed on or after November 29, 2000, designated the U.S., and had been published in English under PCT Article 21(2) ) for the earlier international filing date to be a U.S. filing date for prior art purposes under pre-AIA 35 U.S.C. 102(e).
- (2) If the international application was filed on or after November 29, 2000, but did not designate the United States or was not published in English under PCT Article 21(2), do not treat the international filing date as a U.S. filing date for prior art purposes. In this situation, do not apply the reference as of its international filing date, its date of completion of the 35 U.S.C. 371(c)(1), (2) and (4) requirements, or any earlier filing date to which such an international application claims benefit or priority. The reference may be applied under pre-AIA 35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(b) as of its publication date, or pre-AIA 35 U.S.C. 102(e) as of any later U.S. filing date of an application that properly claimed the benefit of the international application (if applicable).
- (3) If the international application has an international filing date prior to November 29, 2000, apply the reference under the provisions of pre-AIA 35 U.S.C. 102 and 374, prior to the AIPA amendments:
- (a) For U.S. patents, apply the reference under pre-AIA 35 U.S.C. 102(e) as of the earlier of the date of completion of the requirements of 35 U.S.C. 371(c)(1), (2) and (4) or the filing date of the later-filed U.S. application that claimed the benefit of the international application;
- (b) For U.S. application publications and WIPO publications directly resulting from international applications under PCT Article 21(2), never apply these references under pre-AIA 35 U.S.C. 102(e). These references may be applied as of their publication dates under pre-AIA 35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(b);
- (c) For U.S. application publications of applications that claim the benefit under 35 U.S.C. 120 or 365(c) of an international application filed prior to November 29, 2000, apply the reference under pre-AIA 35 U.S.C. 102(e) as of the actual filing date of the later-filed U.S. application that claimed the benefit of the international application.
- (4) Examiners should be aware that although a publication of, or a U.S. Patent issued from, an international application may not have a pre-AIA 35 U.S.C. 102(e) date at all, or may have a pre-AIA 35 U.S.C. 102(e) date that is after the effective filing date of the application being examined (so it is not "prior art"), the corresponding WIPO publication of an international application may have an earlier pre-AIA 35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(b) ) date.
- (1) If the international application meets the following three conditions:
- (D) Foreign applications’ filing dates that are claimed (via 35 U.S.C. 119(a)-(d), (f), or 365(a) or (b)) in applications, which have been published as U.S. or WIPO application publications or patented in the U.S., may not be used as pre-AIA 35 U.S.C. 102(e) dates for prior art purposes. This includes international filing dates claimed as foreign priority dates under 35 U.S.C. 365(a) or (b).
II. EXAMPLES
In order to illustrate the prior art dates of U.S. and WIPO publications of patent applications and U.S. patents under pre-AIA 35 U.S.C. 102(e), nine examples are presented below. The examples only cover the most common factual situations that might be encountered when determining the pre-AIA 35 U.S.C. 102(e) date of a reference. Examples 1 and 2 involve only U.S. application publications and U.S. patents. Example 3 involves a priority claim to a foreign patent application. Examples 4-9 involve international applications. The time lines in the examples below show the history of the prior art references that could be applied against the claims of the application under examination, or the patent under reexamination.
The examples only show the information necessary to determine a prior art date under pre-AIA 35 U.S.C. 102(e). Also, the dates in the examples below are arbitrarily used and are presented for illustrative purposes only. Therefore, correlation of patent grant dates with Tuesdays or application publication dates with Thursdays may not be portrayed in the examples. All references to 35 U.S.C. 102 in the examples and flowcharts below are to the version of 35 U.S.C. 102 in effect on March 15, 2013 (the pre-AIA version).
| Example 1: Reference Publication and Patent of 35 U.S.C. 111(a) Application with no Priority/Benefit Claims. |
| For reference publications and patents of patent applications filed under 35 U.S.C. 111(a) with no claim for the benefit of, or priority to, a prior application, the prior art dates under pre-AIA 35 U.S.C. 102(e) accorded to these references are the earliest effective U.S. filing dates. Thus, a publication and patent of a 35 U.S.C. 111(a) application, which does not claim any benefit under either 35 U.S.C. 119(e), 120, 365(c) or 386(c), would be accorded the application’s actual filing date as its prior art date under pre-AIA 35 U.S.C. 102(e). |
The pre-AIA 35 U.S.C. 102(e)(1) date for the Publication is 08 Dec. 2000. The pre-AIA 35 U.S.C. 102(e)(2) date for the Patent is: 08 Dec. 2000.
| Example 2: Reference Publication and Patent of 35 U.S.C. 111(a) Application with a Benefit Claim to a Prior U.S. Provisional or Nonprovisional Application. |
| For reference publications and patents of patent applications filed under 35 U.S.C. 111(a), the prior art dates under pre-AIA 35 U.S.C. 102(e) accorded to these references are the earliest effective U.S. filing dates. Thus, a publication and patent of a 35 U.S.C. 111(a) application, which claims benefit under 35 U.S.C. 119(e) to a prior U.S. provisional application or claims the benefit under 35 U.S.C. 120 of a prior nonprovisional application, would be accorded the earlier filing date as its prior art date under pre-AIA 35 U.S.C. 102(e), assuming the earlier-filed application has proper support for the subject matter as required by 35 U.S.C. 119(e) or 120. |
The 35 U.S.C. 102(e)(1) date for the Publication is: 01 Jan. 2000. The 35 U.S.C. 102(e)(2) date for the Patent is: 01 Jan. 2000.
| Example 3: Reference Publication and Patent of 35 U.S.C. 111(a) Application with 35 U.S.C. 119(a)-(d) Priority Claim to a Prior Foreign Application. |
| For reference publications and patents of patent applications filed under 35 U.S.C. 111(a), the prior art dates under pre-AIA 35 U.S.C. 102(e) accorded to these references are the earliest effective U.S. filing dates. No benefit of the filing date of the foreign application is given under pre-AIA 35 U.S.C. 102(e) for prior art purposes (In re Hilmer, 149 USPQ 480 (CCPA 1966)). Thus, a publication and patent of a 35 U.S.C. 111(a) application, which claims priority under 35 U.S.C. 119(a)-(d) to a prior foreign-filed application (or under 35 U.S.C. 365(a) to an international application), would be accorded its U.S. filing date as its prior art date under pre-AIA 35 U.S.C. 102(e). In the example below, it is assumed that the earlier-filed U.S. application has proper support for the subject matter of the later-filed U.S. application as required by 35 U.S.C. 120. |
The 35 U.S.C. 102(e)(1) date for the Publication is: 21 June 1999. The 35 U.S.C. 102(e)(2) date for the Patent is: 21 June 1999.
| Example 4: References based on the national stage (35 U.S.C. 371 ) of an International Application filed on or after November 29, 2000 and which was published in English under PCT Article 21(2). |
| All references, whether the WIPO publication, the U.S. patent application publication or the U.S. patent, of an international application (IA) that was filed on or after November 29, 2000, designated the U.S., and was published in English under PCT Article 21(2) by WIPO have the 35 U.S.C. 102(e) prior art date of the international filing date or earlier effective U.S. filing date. No benefit of the international filing date (or of any U.S. filing dates prior to the IA), however, is given for pre-AIA 35 U.S.C. 102(e) prior art purposes if the IA was published under PCT Article 21(2) in a language other than English. |
The 35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: 01 Jan. 2001. The 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: 01 Jan. 2001. The 35 U.S.C. 102(e)(2) date for the Patent is: 01 Jan. 2001.
| Additional Benefit Claims: |
| If a later-filed U.S. nonprovisional (35 U.S.C. 111(a) ) application claimed the benefit of the IA in the example above, the pre-AIA 35 U.S.C. 102(e) date of the patent or publication of the later-filed U.S. application would be the international filing date, assuming the earlier-filed IA has proper support for the subject matter relied upon as required by 35 U.S.C. 120. |
| If the IA properly claimed the benefit of an earlier-filed U.S. provisional (35 U.S.C. 111(b) ) application or the benefit of an earlier-filed U.S. nonprovisional (35 U.S.C. 111(a) ) application, the pre-AIA 35 U.S.C. 102(e) date for all the references would be the filing date of the earlier-filed U.S. application, assuming the earlier-filed application has proper support for the subject matter relied upon as required by 35 U.S.C. 119(e) or 120. |
| Example 5: References based on the national stage (35 U.S.C. 371 ) of an International Application filed on or after November 29, 2000 and which was not published in English under PCT Article 21(2). |
| All references, whether the WIPO publication, the U.S. patent application publication or the U.S. patent, of an international application (IA) that was filed on or after November 29, 2000, but was not published in English under PCT Article 21(2) have no 35 U.S.C. 102(e) prior art date at all. According to pre-AIA 35 U.S.C. 102(e), no benefit of the international filing date (or of any U.S. filing dates prior to the IA) is given for pre-AIA 35 U.S.C. 102(e) prior art purposes if the IA was published under PCT Article 21(2) in a language other than English, regardless of whether the international application entered the national stage. Such references may be applied under pre-AIA 35 U.S.C. 102(a) or (b) as of their publication dates, but never under pre-AIA 35 U.S.C. 102(e). |
The pre-AIA 35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: None. The pre-AIA 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: None. The pre-AIA 35 U.S.C. 102(e)(2) date for the Patent is: None.
| The IA publication by WIPO can be applied under pre-AIA 35 U.S.C. 102(a) or (b) as of its publication date (01 July 2002). |
| Additional Benefit Claims: |
| If the IA properly claimed the benefit of any earlier-filed U.S. application (whether provisional or nonprovisional), there would still be no pre-AIA 35 U.S.C. 102(e) date for all the references. |
| If a later-filed U.S. nonprovisional (35 U.S.C. 111(a) ) application claimed the benefit of the IA in the example above, the pre-AIA 35 U.S.C. 102(e) date of the patent or publication of the later-filed U.S. application would be the actual filing date of the later-filed U.S. application. |
| Example 6: References based on the national stage ( 35 U.S.C. 371 ) of an International Application filed prior to November 29, 2000 (language of the publication under PCT Article 21(2) is not relevant). |
| The reference U.S. patent issued from an international application (IA) that was filed prior to November 29, 2000, has a pre-AIA 35 U.S.C. 102(e) prior art date of the date of fulfillment of the requirements of 35 U.S.C. 371(c)(1), (2) and (4). This is the former pre-AIPA 35 U.S.C. 102(e). The application publications, both the WIPO publication and the U.S. publication, published from an international application that was filed prior to November 29, 2000, do not have any pre-AIA 35 U.S.C. 102(e) prior art date. According to the effective date provisions as amended by Public Law 107-273, the amendments to pre-AIA 35 U.S.C. 102(e) and 374 are not applicable to international applications having international filing dates prior to November 29, 2000. The application publications can be applied under pre-AIA 35 U.S.C. 102(a) or (b) as of their publication dates. |
The pre-AIA 35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: None. The pre-AIA 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: None. The pre-AIA 35 U.S.C. 102(e) date for the Patent is: 01 July 2002.
| The IA publication by WIPO can be applied under pre-AIA 35 U.S.C. 102(a) or (b) as of its publication date (01 July 2001). |
| Additional Benefit Claims: |
| If the IA properly claimed the benefit of any earlier-filed U.S. application (whether provisional or nonprovisional), there would still be no pre-AIA 35 U.S.C. 102(e)(1) date for the U.S. and WIPO application publications, and the pre-AIA 35 U.S.C. 102(e) date for the patent will still be 01 July 2002 (the date of fulfillment of the requirements under 35 U.S.C. 371(c)(1), (2) and (4) ). |
| If a later-filed U.S. nonprovisional (35 U.S.C. 111(a) ) application claimed the benefit of the IA in the example above, the pre-AIA 35 U.S.C. 102(e)(1) date of the application publication of the later-filed U.S. application would be the actual filing date of the later-filed U.S. application, and the pre-AIA 35 U.S.C. 102(e) date of the patent of the later-filed U.S. application would be 01 July 2002 (the date that the earlier-filed IA fulfilled the requirements of 35 U.S.C. 371(c)(1), (2) and (4) ). |
| If the patent was based on a later-filed U.S. application that claimed the benefit of the international application and the later filed U.S. application’s filing date is before the date the requirements of 35 U.S.C. 371(c)(1), (2) and (4) were fulfilled (if fulfilled at all), the pre-AIA 35 U.S.C. 102(e) date of the patent would be the filing date of the later-filed U.S. application that claimed the benefit of the international application. |
| Example 7: References based on a 35 U.S.C. 111(a) Application which is a Continuation of an International Application, which was filed on or after November 29, 2000, designated the U.S. and was published in English under PCT Article 21(2). |
| All references, whether the WIPO publication, the U.S. patent application publication or the U.S. patent, of or claiming the benefit of, an international application (IA) that was filed on or after November 29, 2000, designated the U.S., and was published in English under PCT Article 21(2) have the pre-AIA 35 U.S.C. 102(e) prior art date of the international filing date or earlier effective U.S. filing date. No benefit of the international filing date (or of any U.S. filing dates prior to the IA), however, is given for pre-AIA 35 U.S.C. 102(e) purposes if the IA was published under PCT Article 21(2) by WIPO in a language other than English. In the example below, it is assumed that the earlier-filed IA has proper support for the subject matter of the later-filed U.S. application as required by 35 U.S.C. 120 and 365(c). |
The pre-AIA35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: 01 Mar. 2001. The pre-AIA 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: 01 Mar. 2001. The pre-AIA 35 U.S.C. 102(e)(2) date for the Patent is: 01 Mar. 2001.
| Additional Benefit Claims: |
| If the IA properly claimed the benefit of an earlier-filed U.S. provisional (35 U.S.C. 111(b) ) application or the benefit of an earlier-filed U.S. nonprovisional (35 U.S.C. 111(a) ) application, the pre-AIA 35 U.S.C. 102(e) date for all the references would be the filing date of the earlier-filed U.S. application, assuming the earlier-filed application has proper support for the subject matter relied upon as required by 35 U.S.C. 119(e) or 120. |
| If a second, later-filed U.S. nonprovisional (35 U.S.C. 111(a) ) application claimed the benefit of the 35 U.S.C. 111(a) application in the example above, the pre-AIA 35 U.S.C. 102(e) date of the patent or publication of the second, later-filed U.S. application would still be the international filing date of the IA, assuming the earlier-filed IA has proper support for the subject matter relied upon as required by 35 U.S.C. 120 and 365(c). |
| Example 8: References based on a 35 U.S.C. 111(a) Application which is a Continuation of an International Application, which was filed on or after November 29, 2000 and was not published in English under PCT Article 21(2). |
| Both the U.S. publication and the U.S. patent of the 35 U.S.C. 111(a) continuation of an international application (IA) that was filed on or after November 29, 2000 but not published in English under PCT Article 21(2) have the pre-AIA 35 U.S.C. 102(e) prior art date of the actual U.S. filing date of the 35 U.S.C. 111(a) application. No benefit of the international filing date (or of any U.S. filing dates prior to the IA) is given for pre-AIA 35 U.S.C. 102(e) purposes since the IA was published under PCT Article 21(2) in a language other than English. The IA publication under PCT Article 21(2) does not have a prior art date under pre-AIA 35 U.S.C. 102(e)(1) because the IA was not published in English under PCT Article 21(2). The IA publication under PCT Article 21(2) can be applied under pre-AIA 35 U.S.C. 102(a) or (b) as of its publication date. |
The pre-AIA 35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: None. The pre-AIA 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: 01 May 2003. The pre-AIA 35 U.S.C. 102(e)(2) date for the Patent is: 01 May 2003
| The IA publication by WIPO can be applied under pre-AIA 35 U.S.C. 102(a) or (b) as of its publication date (01 Sept 2002). |
| Additional Benefit Claims: |
| If the IA properly claimed the benefit of any earlier-filed U.S. application (whether provisional or nonprovisional), there would still be no pre-AIA 35 U.S.C. 102(e)(1) date for the IA publication by WIPO, and the U.S. patent application publication and patent would still have a pre-AIA 35 U.S.C. 102(e) date of the actual filing date of the later-filed 35 U.S.C. 111(a) application in the example above (01 May 2003). |
| If a second, later-filed U.S. nonprovisional (35 U.S.C. 111(a) ) application claimed the benefit of the 35 U.S.C. 111(a) application in the example above, the pre-AIA 35 U.S.C. 102(e) date of the patent or publication of the second, later-filed U.S. application would still be the actual filing date of the 35 U.S.C. 111(a) application in the example above (01 May 2003). |
| Example 9: References based on a 35 U.S.C. 111(a) Application which is a Continuation (filed prior to any entry of the national stage) of an International Application, which was filed prior to November 29, 2000 (language of the publication under PCT Article 21(2) is not relevant). |
| Both the U.S. publication and the U.S. patent of the 35 U.S.C. 111(a) continuation (filed prior to any entry of the national stage) of an international application (IA) that was filed prior to November 29, 2000, have the pre-AIA 35 U.S.C. 102(e) prior art date of their actual U.S. filing date under 35 U.S.C. 111(a). No benefit of the international filing date (or of any U.S. filing dates prior to the IA) is given for pre-AIA 35 U.S.C. 102(e) prior art purposes since the IA was filed prior to November 29, 2000. The IA publication under PCT Article 21(2) does not have a prior art date under pre-AIA 35 U.S.C. 102(e)(1) because the IA was filed prior to November 29, 2000. The IA publication under PCT Article 21(2) can be applied under pre-AIA 35 U.S.C. 102(a) or (b) as of its publication date. |
The pre-AIA 35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: None. The pre-AIA 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: 01 Dec. 2000. The pre-AIA 35 U.S.C. 102(e)(2) date for the Patent is: 01 Dec. 2000.
| The IA publication by WIPO can be applied under pre-AIA 35 U.S.C. 102(a) or (b) as of its publication date (01 Sept 2000). |
| Additional Benefit Claims: |
| If the IA properly claimed the benefit of any earlier-filed U.S. application (whether provisional or nonprovisional), there would still be no pre-AIA 35 U.S.C. 102(e)(1) date for the IA publication by WIPO, and the U.S. application publication and patent would still have a pre-AIA 35 U.S.C. 102(e) date of the actual filing date of the later-filed 35 U.S.C. 111(a) application in the example above (01 Dec 2000). |
| If a second, later-filed U.S. nonprovisional (35 U.S.C. 111(a) ) application claimed the benefit of the 35 U.S.C. 111(a) application in the example above, the pre-AIA 35 U.S.C. 102(e) date of the patent or publication of the second, later-filed U.S. application would still be the actual filing date of the 35 U.S.C. 111(a) application in the example above (01 Dec 2000). |
III. FLOWCHARTS
706.02(f)(2) Provisional Rejections Under 35 U.S.C. 102(a)(2) or Pre-AIA 35 U.S.C. 102(e); Reference Is a Copending U.S. Patent Application [R-08.2017]
If an earlier filed, copending, and unpublished U.S. patent application discloses subject matter which would anticipate the claims in a later filed pending U.S. application which has a different inventive entity, the examiner should determine whether a provisional rejection under 35 U.S.C. 102(a)(2) or a pre-AIA 35 U.S.C. 102(e) of the later filed application can be made. In addition, a provisional rejection under 35 U.S.C. 102(a)(2) or a pre-AIA 35 U.S.C. 102(e) may be made, in the circumstances described below, if the earlier filed, pending application has been published as redacted (37 CFR 1.217 ) and the subject matter relied upon in the rejection is not supported in the redacted publication of the patent application.
I. COPENDING U.S. APPLICATIONS HAVING AT LEAST ONE COMMON INVENTOR OR ARE COMMONLY ASSIGNED
If (1) at least one common inventor exists between the applications or the applications are commonly assigned and (2) the effective filing dates are different, then a provisional rejection of the later filed application should be made. The provisional rejection is appropriate in circumstances where if the earlier filed application is published or becomes a patent it would constitute actual prior art under 35 U.S.C. 102. Since the earlier-filed application is not published at the time of the rejection, the rejection must be provisionally made under 35 U.S.C. 102(a)(2) or a pre-AIA 35 U.S.C. 102(e).
A provisional rejection under 35 U.S.C. 102(a)(2) or a pre-AIA 35 U.S.C. 102(e) can be overcome in the same manner that a 35 U.S.C. 102(a)(2) or a pre-AIA 35 U.S.C. 102(e) rejection can be overcome. See MPEP § 706.02(b). The provisional rejection can also be overcome by abandoning the applications and filing a new application containing the subject matter of both.
Form paragraph 7.15.01.aia should be used when making a provisional rejection under 35 U.S.C. 102(a)(2). Form paragraph 7.15.01.fti should be used when making a provisional rejection under pre-AIA 35 U.S.C. 102(e).
¶ 7.15.01.aia Provisional Rejection, 35 U.S.C. 102(a)(2) - Common Assignee, Common Applicant, or At Least One Common Joint Inventor
Claim(s) [1] is/are provisionally rejected under 35 U.S.C. 102(a)(2) as being anticipated by copending Application No. [2] which has a common [3] with the instant application.
Based upon the earlier effective filing date of the copending application, it would constitute prior art under 35 U.S.C. 102(a)(2), if published under 35 U.S.C. 122(b) or patented under 35 U.S.C. 151. This provisional rejection under 35 U.S.C. 102(a)(2) is based upon a presumption of future publication or patenting of the copending application. [4].
This provisional rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the copending application was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the copending application and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
This rejection may not be overcome by the filing of a terminal disclaimer. See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991).
Examiner Note:
1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102 /103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia.
2. This form paragraph is used to provisionally reject over a copending application with an earlier effective filing date that discloses the claimed invention and has not been published under 35 U.S.C. 122. The copending application must have either a common assignee, common applicant (35 U.S.C. 118 ) or at least one common joint inventor.
3. 35 U.S.C. 102(a)(2) may be applied if the reference names another inventor (i.e., a different inventive entity) and is one of the following:
a. a U.S. patent granted under 35 U.S.C. 151 that has an effectively filed date earlier than the application;
b. a U.S. Patent Application Publication published under 35 U.S.C. 122(b) that has an effectively filed date earlier than the effective filing date of the application; or
c. a WIPO publication of an international application (PCT) or international design application that designates the United States where the WIPO publication has an effectively filed date earlier than the effective filing date of the application.
If any of the three types of prior art documents under 35 U.S.C. 102(a)(2) issued or was published before the effective filing date of the application under examination, then the prior art document is also applicable under 35 U.S.C. 102(a)(1).
4. If the claims would have been obvious over the invention disclosed in the other copending application, use form paragraph 7.21.01.aia.
5. In bracket 1, insert claim number(s) under rejection.
6. In bracket 2, insert the application number.
7. In bracket 3, insert --assignee--, --applicant--, or --joint inventor--.
8. In bracket 4, provide an appropriate explanation of the examiner’s position on anticipation.
9. Under 35 U.S.C. 101, two patents are not permitted to issue on identical subject matter. Any claims in the instant application directed to the same invention claimed in the reference should be provisionally rejected using form paragraphs 8.30 and 8.32. Additionally, the applicant should be required to amend or cancel claims such that the applied reference and the instant application no longer contain claims directed to the same invention using form paragraph 8.27.aia.
10. Any claims in the instant application that are directed to subject matter that is not patentably distinct from an invention claimed in the reference should be rejected (or provisionally rejected if the reference has not yet issued as a patent) on the grounds of nonstatutory double patenting using form paragraph 8.33 and at least one of form paragraphs 8.34 - 8.39.
11. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
¶ 7.15.01.fti Provisional Rejection, Pre-AIA 35 U.S.C. 102(e) - Common Assignee, Common Applicant, or At Least One Common Joint Inventor
Claim(s) [1] is/are provisionally rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by copending Application No. [2] which has a common [3] with the instant application.
Based upon the earlier effective U.S. filing date of the copending application, it would constitute prior art under pre-AIA 35 U.S.C. 102(e), if published under 35 U.S.C. 122(b) or patented. This provisional rejection under pre-AIA 35 U.S.C. 102(e) is based upon a presumption of future publication or patenting of the copending application. [4].
This provisional rejection under pre-AIA 35 U.S.C. 102(e) might be overcome either by a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the copending application was derived from the inventor of this application and is thus not the invention "by another," or by an appropriate showing under 37 CFR 1.131(a).
This rejection may not be overcome by the filing of a terminal disclaimer. See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991).
Examiner Note:
1. This form paragraph is used to provisionally reject over a copending application with an earlier filing date that discloses the claimed invention which has not been published under 35 U.S.C. 122. The copending application must have either a common assignee, a common applicant (35 U.S.C. 118 ), or at least one common joint inventor.
2. Use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002 (form paragraph 7.12.fti) to determine the copending application’s prior art date, unless the copending application is based directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. If the copending application is either a national stage of an international application (application under 35 U.S.C. 371 ) which has an international filing date prior to November 29, 2000, or a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000, use pre-AIPA 35 U.S.C. 102(e) (form paragraph 7.12.01.fti). See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s 35 U.S.C. 102(e) date.
3. If the claims would have been obvious over the invention disclosed in the other copending application, use form paragraph 7.21.01.fti.
4. In bracket 3, insert --assignee--, --applicant--, or --joint inventor--.
5. In bracket 4, an appropriate explanation may be provided in support of the examiner’s position on anticipation, if necessary.
6. Under 35 U.S.C. 101, two patents are not permitted to issue on identical subject matter. Any claims in the instant application directed to the same invention claimed in the reference should be provisionally rejected using form paragraphs 8.30 and 8.32. Additionally, the applicant should be required to amend or cancel claims such that the applied reference and the instant application no longer contain claims directed to the same invention using form paragraph 8.27.fti.
7. Any claims in the instant application that are directed to subject matter that is not patentably distinct from an invention claimed in the reference should be rejected (or provisionally rejected if the reference has not yet issued as a patent) on the grounds of nonstatutory double patenting using form paragraph 8.33 and at least one of form paragraphs 8.34 - 8.39.
8. If evidence is additionally of record to show that either invention is prior art to the other under pre-AIA 35 U.S.C. 102(f) or (g), a rejection using form paragraphs 7.13.fti and/or 7.14.fti should also be made.
9. For applications with an actual filing date on or after March 16, 2013 that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
II. COPENDING APPLICATIONS HAVING NO COMMON INVENTOR OR ASSIGNEE
If there is no common assignee or common inventor and the application was not published pursuant to 35 U.S.C. 122(b), the confidential status of applications under 35 U.S.C. 122(a) must be maintained and no rejection can be made relying on the earlier filed, unpublished application, or subject matter not supported in a redacted application publication, as prior art under 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e). For applications subject to pre-AIA 35 U.S.C. 102(g), if the filing dates of the applications are within 6 months of each other (3 months for simple subject matter) then interference may be proper. See MPEP Chapter 2300. If the application with the earliest effective U.S. filing date will not be published pursuant to 35 U.S.C. 122(b), it must be allowed to issue once all the statutory requirements are met. After the patent is published, it may be used as a reference in a rejection under 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e) in the still pending application as appropriate. See MPEP §§ 706.02(a), 2136 et seq. and 2154.