2146.03    Examination Procedure With Respect to Pre-AIA 35 U.S.C. 103(c) [R-10.2019]

[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 §§ 717.02 et seq., 2154.02(c) and 2156 for the examination of applications subject to the first inventor to file provisions of the AIA involving, inter alia, commonly owned subject matter or a joint research agreement.]

Examiners are reminded that a reference used in an anticipatory rejection under pre-AIA 35 U.S.C. 102(e), (f), or (g)  is not disqualified as prior art if the reference is disqualified under pre-AIA 35 U.S.C. 103(c). Generally, such a reference is only disqualified when

Applications and patents will be considered to be owned by, or subject to an obligation of assignment to, the same person, at the time the invention was made, if the applicant(s) or patent owner(s) make(s) a statement to the effect that the application and the reference were, at the time the invention was made, owned by, or subject to an obligation of assignment to, the same person(s) or organization(s). In order to overcome a rejection under pre-AIA 35 U.S.C. 103(a)  based upon a reference which qualifies as prior art under only one or more of pre-AIA 35 U.S.C. 102(e), (f), or (g), via the CREATE Act, the applicant must comply with the statute and the rules of practice in effect.

See MPEP § 2146.02 for additional information pertaining to establishing common ownership.

I.    EXAMINATION OF APPLICATIONS OF DIFFERENT INVENTIVE ENTITIES WHERE COMMON OWNERSHIP OR A JOINT RESEARCH AGREEMENT HAS NOT BEEN ESTABLISHED

If the application file being examined has not established that the reference is disqualified as prior art under pre-AIA 35 U.S.C. 103(c), the examiner will:

II.    EXAMINATION OF APPLICATIONS OF DIFFERENT INVENTIVE ENTITIES WHERE COMMON OWNERSHIP OR A JOINT RESEARCH AGREEMENT HAS BEEN ESTABLISHED

If the application being examined has established that the reference is disqualified as prior art under pre-AIA 35 U.S.C. 103(c)  the examiner will:

  • (A) examine the applications as to all grounds, except pre-AIA 35 U.S.C. 102(e), (f) and (g)  including provisional rejections based on provisional prior art under pre-AIA 35 U.S.C. 102(e), as they apply through 35 U.S.C. 103;
  • (B) examine the applications for double patenting, including statutory and nonstatutory double patenting, and make a provisional rejection, if appropriate; and
  • (C) invite the applicant to file a terminal disclaimer to overcome any provisional or actual nonstatutory double patenting rejection, if appropriate (see 37 CFR 1.321 ).

III.    DOUBLE PATENTING REJECTIONS

Commonly owned applications of different inventive entities may be rejected on the ground of double patenting, even if the later filed application claims 35 U.S.C. 120  benefit to the earlier application, subject to the conditions discussed in MPEP § 804 et seq. In addition, double patenting rejection may arise as a result of the amendment to pre-AIA 35 U.S.C. 103(c)  by the CREATE Act (Public Law 108-453, 118 Stat. 3596 (2004)). Congress recognized that this amendment to 35 U.S.C. 103(c)  would result in situations in which there would be double patenting rejections between applications not owned by the same party (see H.R. Rep. No. 108-425, at 5-6 (2003). For purposes of double patenting analysis, the application or patent and the subject matter disqualified under pre-AIA 35 U.S.C. 103(c)  as amended by the CREATE Act will be treated as if commonly owned.

A rejection based on a pending application would be a provisional rejection. The practice of rejecting claims on the ground of double patenting in commonly owned applications of different inventive entities is in accordance with existing case law and prevents an organization from obtaining two or more patents with different expiration dates covering nearly identical subject matter. See MPEP § 804 for guidance on double patenting issues. In accordance with established patent law doctrines, double patenting rejections can be overcome in certain circumstances by disclaiming, pursuant to the existing provisions of 37 CFR 1.321, the terminal portion of the term of the later patent and including in the disclaimer a provision that the patent shall be enforceable only for and during the period the patent is commonly owned with the application or patent which formed the basis for the rejection, thereby eliminating the problem of extending patent life. For a double patenting rejection based on a non-commonly owned patent (treated as if commonly owned pursuant to the CREATE Act), the double patenting rejection may be obviated by filing a terminal disclaimer in accordance with 37 CFR 1.321(d). See MPEP §§ 804, 804.02 and 1490, subsection VI.

2146.03(a)    Provisional Rejection (Obviousness) Under 35 U.S.C. 103 Using Provisional Prior Art Under Pre-AIA 35 U.S.C. 102(e) [R-10.2019]

[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.]

Where two applications of different inventive entities are copending, not published under 35 U.S.C. 122(b), and the filing dates differ, a provisional rejection under pre-AIA 35 U.S.C. 103(a)  based on provisional prior art under pre-AIA 35 U.S.C. 102(e)  should be made in the later filed application unless the application has been excluded under pre-AIA 35 U.S.C. 103(c). See MPEP § 2146.03 for examination procedure with respect to pre-AIA 35 U.S.C. 103(c). See also MPEP § 2136.01 for examination procedure in determining when provisional rejections are appropriate. Otherwise the confidential status of unpublished application, or any part thereof, under 35 U.S.C. 122  must be maintained. Such a rejection alerts the applicant that the applicant can expect an actual rejection on the same ground if one of the applications issues and also lets applicant know that action must be taken to avoid the rejection.

This gives applicant the opportunity to analyze the propriety of the rejection and possibly avoid the loss of rights to desired subject matter. Provisional rejections of the obviousness type under pre-AIA 35 U.S.C. 103(a)  based on provisional prior art under pre-AIA 35 U.S.C. 102(e)  are rejections applied to copending applications having different effective filing dates wherein each application has a common assignee or a common inventor. The earlier filed application, if patented or published, would constitute prior art under pre-AIA 35 U.S.C. 102(e). The rejection can be overcome by:

  • (A) Arguing patentability over the earlier filed application;
  • (B) Combining the subject matter of the copending applications into a single application claiming benefit under 35 U.S.C. 120  of the prior applications and abandoning the copending applications (Note that a claim in a subsequently filed application that relies on a combination of prior applications may not be entitled to the benefit of an earlier filing date under 35 U.S.C. 120  if the earlier filed application does not contain a disclosure which complies with 35 U.S.C. 112  for the claim in the subsequently filed application. Studiengesellschaft Kohle m.b.H. v. Shell Oil Co., 112 F.3d 1561, 42 USPQ2d 1674 (Fed. Cir. 1997).);
  • (C) Filing an affidavit or declaration under 37 CFR 1.132  showing that any unclaimed invention disclosed in the copending application was derived from the inventor of the other application and is thus not invention "by another" (see MPEP §§ 715.01(a), 715.01(c), and 716.10);
  • (D) Filing an affidavit or declaration under 37 CFR 1.131(a)  showing a date of invention prior to the effective U.S. filing date of the copending application. See MPEP § 715; or
  • (E) For an application that is pending on or after December 10, 2004, a showing that (1) the prior art 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, or (2) the subject matter is disqualified under pre-AIA 35 U.S.C. 103(c)  (i.e., joint research agreement disqualification).

Where the applications are claiming interfering subject matter as defined in 37 CFR 41.203(a), a terminal disclaimer and an affidavit or declaration under 37 CFR 1.131(c)  may be used to overcome a rejection under 35 U.S.C. 103  in a common ownership situation if the earlier filed application has been published or matured into a patent. See MPEP § 718.

If a provisional rejection is made and the copending applications are combined into a single application and the resulting single application is subject to a restriction requirement, the divisional application would not be subject to a provisional or actual rejection under 35 U.S.C. 103  since the provisions of 35 U.S.C. 121  preclude the use of a patent issuing therefrom as a reference against the other application. Additionally, the resulting continuation-in-part is entitled to 35 U.S.C. 120  benefit of each of the prior applications. This is illustrated in Example 2, below.

The following examples are illustrative of the application of 35 U.S.C. 103 in applications filed prior to November 29, 1999 for which a patent was granted prior to December 10, 2004:

Example 1. Assumption: Employees A and B work for C, each with knowledge of the other’s work, and with obligation to assign inventions to C while employed.

SITUATIONS RESULTS
1. A invents X and later files application.   This is permissible. 
2. B modifies X to XY. B files application before A’s filing.   No 35 U.S.C. 103  rejection based on prior art under pre-AIA 35 U.S.C. 102(f)  or 102(g); provisional 35 U.S.C. 103  rejection made in A’s later-filed application based on B’s application as provisional prior art under pre-AIA 35 U.S.C. 102(e). Provisional double patenting rejection made.  
3. B’s patent issues.  A’s claims rejected over B’s patent under 35 U.S.C. 103  based on prior art under pre-AIA 35 U.S.C. 102(e)  and double patenting. 
4. A files 37 CFR 1.131(c)  affidavit to disqualify B’s patent as prior art where interfering subject matter as defined in 37 CFR 41.203(a)  is being claimed. Terminal disclaimer filed under 37 CFR 1.321(c).   Rejection under 35 U.S.C.103  based on prior art under pre-AIA 35 U.S.C. 102(e)  may be overcome and double patenting rejection may be overcome if inventions X and XY are commonly owned and all requirements of 37 CFR 1.131(c)  and 1.321  are met. 

In situation (2.) above, the result is a provisional rejection under 35 U.S.C. 103  made in the later-filed application based on provisional prior art under pre-AIA 35 U.S.C. 102(e). The rejection is provisional since the subject matter and the prior art are pending applications.

Example 2. Assumption: Employees A and B work for C, each with knowledge of the other’s work, and with obligation to assign inventions to C while employed.

SITUATIONS RESULTS
1. A invents X and files application.   This is permissible. 
2. B modifies X to XY after A’s application is filed. B files application establishing that A and B were both under obligation to assign inventions to C at the time the inventions were made.   Provisional 35 U.S.C. 103  rejection made in B’s later-filed application based on A’s application as provisional prior art under pre-AIA 35 U.S.C. 102(e)  made; provisional double patenting rejection made; no 35 U.S.C. 103  rejection based on prior art under pre-AIA 35 U.S.C. 102(f)  or 102(g)  made.  
3. A and B jointly file continuing application claiming priority to both their earlier applications and abandon the earlier applications.  Assume it is proper that restriction be required between X and XY. 
4. X is elected, a patent issues on X, and a divisional application is timely filed on XY.   No rejection of divisional application under 35 U.S.C. 103  based on prior art under pre-AIA 35 U.S.C. 102(e)  in view of 35 U.S.C. 121. 

The following examples are illustrative of rejections under 35 U.S.C. 103  based on prior art under pre-AIA 35 U.S.C. 102(e)  in applications that are pending on or after December 10, 2004:

Example 3. Assumption: Employees A and B work for C, each with knowledge of the other’s work, and with obligation to assign inventions to C while employed. Employee A’s application, which is pending on or after December 10, 2004, is being examined.

SITUATIONS RESULTS
1. A invents X and later files application.  This is permissible. 
2. B modifies X to XY. B files application before A’s filing. A files an application on invention X.  Provisional 35 U.S.C. 103  rejection of A’s later-filed application based on B’s application as provisional prior art under pre-AIA 35 U.S.C. 102(e)  and a provisional double patenting rejection are made. 
3. B’s patent issues.  A’s claims are rejected under 35 U.S.C. 103  based on B’s patent under pre-AIA 35 U.S.C. 102(e)  and double patenting. 
4. A files evidence of common ownership of inventions X and XY at the time invention XY was made to disqualify B’s patent as prior art. In addition, A files a terminal disclaimer under 37 CFR 1.321(c).  Rejection of A’s claims under 35 U.S.C. 103  based on prior art under pre-AIA 35 U.S.C. 102(e)  will be withdrawn and double patenting rejection will be obviated if inventions X and XY are commonly owned at the time invention XY was made and all requirements of 37 CFR 1.321  are met. 

In situation (2.) above, the result is a provisional rejection under 35 U.S.C. 103  made in the later-filed application based on provisional prior art under pre-AIA 35 U.S.C. 102(e)  (the earlier-filed application). The rejection is provisional since the subject matter and the prior art are pending applications.

Example 4. Assumption: Employees A and B work for C, each with knowledge of the other’s work, and with obligation to assign inventions to C while employed. Employee B’s application, which is pending on or after December 10, 2004, is being examined.

SITUATIONS RESULTS
1. A invents X and files application.   This is permissible. 
2. B modifies X to XY after A’s application is filed. B files evidence in B’s application establishing that A and B were both under obligation to assign inventions to C at the time the invention XY was made.  Provisional 35 U.S.C. 103  rejection of B’s claims based on A’s application as provisional prior art under pre-AIA 35 U.S.C. 102(e)  cannot be made; provisional double patenting rejection is made; no 35 U.S.C. 103  rejection based on prior art under pre-AIA 35 U.S.C. 102(f)  or 102(g)  is made. 
3. B files a terminal disclaimer under 37 CFR 1.321(c).  The provisional double patenting rejection made in B’s application would be obviated if all requirements of 37 CFR 1.321  are met. 

Example 5. Assumption: Employee A works for assignee I and Employee B works for assignee J. There is a joint research agreement, pursuant to pre-AIA 35 U.S.C. 103(c), between assignees I and J. Employees A and B each filed an application as set forth below. Employee B’s invention claimed in his application was made after the joint research agreement was entered into, and it was made as a result of activities undertaken within the scope of the joint agreement. Employee B’s application discloses assignees I and J as the parties to the joint research agreement. Employee B’s application, which is pending on or after December 10, 2004, is being examined.

SITUATIONS RESULTS
1. A invents X and files application.   This is permissible. 
2. B modifies X to XY after A’s application is filed. B files evidence in B’s application establishing a joint research agreement in compliance with pre-AIA 35 U.S.C. 103(c).  Provisional 35 U.S.C. 103  rejection of B’s claims based on A’s application as provisional prior art under pre-AIA 35 U.S.C. 102(e)  cannot be made; provisional double patenting rejection is made; no 35 U.S.C. 103  rejection based on prior art under pre-AIA 35 U.S.C. 102(f)  or 35 U.S.C. 102(g)  made.  
3. B files a terminal disclaimer under 37 CFR 1.321.  The provisional double patenting rejection made in B’s application would be obviated if all requirements of 37 CFR 1.321  are met.