¶ 7.20.04.aia    102 or 103 Rejection Using Prior Art Under 102(a)(2) That Is Attempted To Be Excepted Under 35 U.S.C. 102(b)(2)(C) Using the Common Ownership or Assignment Provision

Applicant has attempted to show that subject matter disclosed in the reference [1] is excepted as prior art under 35 U.S.C. 102(b)(2)(C)  by showing that the claimed invention was owned by, or subject to an obligation of assignment to, the same entity as [2] at the time the claimed invention was effectively filed. However, applicant has failed to provide a statement that the claimed invention and the subject matter disclosed were owned by, or subject to an obligation of assignment to, the same person no later than the effective filing date of the claimed invention in a conspicuous manner, and therefore, the subject matter disclosed in the reference is not excepted as prior art under 35 U.S.C. 102(a)(2). Applicant must file the required submission in order to properly except the subject matter under 35 U.S.C. 102(b)(2)(C). See MPEP § 2154.02(c).

In addition, applicant may rely upon the exception under 35 U.S.C. 102(b)(2)(A)  to overcome the rejection under 35 U.S.C. 102(a)(2)  either 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 under 35 U.S.C. 102(a)(2). Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(2)(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 should be included in all actions containing rejections using 35 U.S.C. 102(a)(2)  prior art, whether anticipation or obviousness rejections, where an attempt has been made to except subject matter disclosed in the reference under 35 U.S.C. 102(b)(2)(C), but where the applicant has not provided a proper statement indicating common ownership or assignment not later than the effective filing date of the claimed invention.

3. In bracket 1, identify the commonly owned applied art (e.g., patent or co-pending application).

4. In bracket 2, identify the common assignee.