¶ 7.20.01.aia    103 Rejection Using Prior Art Excepted Under 102(b)(2)(C) Because Reference is Prior Art Under 102(a)(1)

Applicant has provided a submission in this file that the claimed invention and the subject matter disclosed in the prior art reference were owned by, or subject to an obligation of assignment to, the same entity as [1] not later than the effective filing date of the claimed invention, or the subject matter disclosed in the prior art reference was developed and the claimed invention was made by, or on behalf of one or more parties to a joint research agreement not later than the effective filing date of the claimed invention. However, although subject matter disclosed in the reference [2] has been excepted as prior art under 35 U.S.C. 102(a)(2), it is still applicable as prior art under 35 U.S.C. 102(a)(1)  that cannot be excepted under 35 U.S.C. 102(b)(2)(C).

Applicant may overcome this rejection under 35 U.S.C. 102(a)(1)  by a showing under 37 CFR 1.130(a)  that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application, and is therefore, not prior art as set forth in 35 U.S.C. 102(b)(1)(A). Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(1)(B)  by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b).

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 must be included following form paragraph 7.20.aia or 7.15.aia where the 103  rejection is based on subject matter disclosed in a reference that has since been excepted under 102(b)(2)(C), but still qualifies as prior art under 35 U.S.C. 102(a)(1).

3. In bracket 1, identify the common assignee.

4. In bracket 2, identify the reference which discloses the subject matter that has been excepted.