¶ 7.20.04.fti Pre-AIA 103(a) Rejection Using Prior Art Under Pre-AIA 102(e), (f), or (g) That Is Attempted To Be Disqualified Under pre-AIA 35 U.S.C. 103(c) Using the Common Ownership or Assignment Provision
Applicant has attempted to disqualify reference [1] under pre-AIA 35 U.S.C. 103(c) by showing that the invention was owned by, or subject to an obligation of assignment to, the same entity as [2] at the time this invention was made. However, applicant has failed to provide a statement that the application and the reference were owned by, or subject to an obligation of assignment to, the same person at the time the invention was made in a conspicuous manner, and therefore, the reference is not disqualified as prior art under pre-AIA 35 U.S.C. 103(a). Applicant must file the required submission in order to properly disqualify the reference under pre-AIA 35 U.S.C. 103(c). See MPEP § 2146.02, subsection II.
In addition, applicant may overcome the applied art either by a showing under 37 CFR 1.132 that the invention disclosed therein was derived from the inventor of this application, and is therefore not the invention "by another," or by antedating the applied art under 37 CFR 1.131(a).
Examiner Note:
1. This form paragraph must be included in all actions containing rejections under pre-AIA 35 U.S.C. 103(a) where an attempt has been made to disqualify the reference under pre-AIA 35 U.S.C. 103(c), but where the applicant has not provided a proper statement indicating common ownership or assignment at the time the invention was made.
2. In brackets 1 and 2, identify the commonly owned applied art (e.g., patent or co-pending application).