¶ 7.21.01.fti    Provisional Rejection, Pre-AIA 35 U.S.C. 103(a), Common Assignee, Common Applicant, or at Least One Common Joint Inventor

Claim [1] is/are provisionally rejected under pre-AIA 35 U.S.C. 103(a)  as being obvious over 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 or patented. This provisional rejection under pre-AIA 35 U.S.C. 103(a)  is based upon a presumption of future publication or patenting of the copending application. [4]

This provisional rejection 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 or joint inventors (i.e., the inventive entity) of this application and is thus not the invention "by another," or by a showing of a date of invention for the instant application prior to the effective U.S. filing date of the copending application under 37 CFR 1.131(a). This rejection might also be overcome by showing that the copending application is disqualified under pre-AIA 35 U.S.C. 103(c)  as prior art in a rejection under pre-AIA 35 U.S.C. 103(a). See MPEP § 2146 et seq.

Examiner Note:

1. This paragraph is used to provisionally reject claims not patentably distinct from the disclosure in a copending application having an earlier U.S. filing date and also having either a common assignee, a common applicant (35 U.S.C. 118 ), or at least one common joint inventor. This form paragraph should not be used when the copending application is disqualified under pre-AIA 35 U.S.C. 103(c)  as prior art in a pre-AIA 35 U.S.C. 103(a)  rejection. See MPEP § 2146.03(a).

2. Use pre-AIA 35 U.S.C. 102(e)  as amended by the American Inventors Protection Act (AIPA) 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)  to determine the copending application’s prior art date. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s pre-AIA and pre-AIPA 35 U.S.C. 102(e) dates, respectively.

3. If the claimed invention is fully disclosed in the copending application, use paragraph 7.15.01.fti.

4. In bracket 1, insert the claim number(s) which is/are under rejection.

5. In bracket 2, insert the application number.

6. In bracket 3, insert --assignee--, --applicant--, or --joint inventor--.

7. In bracket 4, insert an explanation of obviousness. See MPEP § 2144.

8. If the claimed invention is not patentably distinct from the invention claimed in the copending application, a provisional obviousness double patenting rejection should additionally be made using form paragraphs 8.33 and 8.37.

9. A rejection should additionally be made under pre-AIA 35 U.S.C. 103(a)  using form paragraph 7.21.fti if:

a. evidence indicates that the copending application is also prior art under pre-AIA 35 U.S.C. 102(f)  or (g)  (e.g., applicant has named the prior inventor in response to a requirement made using form paragraph 8.28.fti); and

b. the copending application has not been disqualified as prior art in a pre-AIA 35 U.S.C. 103(a)  rejection pursuant to pre-AIA 35 U.S.C. 103(c).