¶ 7.48.aia Failure To Present Claims for Interference
Claim [1] rejected under pre-AIA 35 U.S.C. [2] based upon claim [3] of Patent No. [4].
Failure to present claims and/or take necessary steps for interference purposes after notification that interfering subject matter is claimed constitutes a disclaimer of the subject matter. This amounts to a concession that, as a matter of law, the patentee is the first inventor in this country. See In re Oguie, 517 F.2d 1382, 186 USPQ 227 (CCPA 1975).
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, and the application also contains or contained at any time (1) a claim to an invention having an effective filing date as defined in 35 U.S.C. 100(i) that is before March 16, 2013, or (2) a specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application that contains or contained at any time such a claim.
2. This form paragraph should be used only after applicant has been notified that interference proceedings must be instituted before the claims can be allowed and applicant has refused to copy the claims.
3. In bracket 2, insert --102(g)-- or --102(g)/103(a)--.
4. In bracket 4, insert the patent number, and --in view of _____-- if another reference is also relied upon. When the rejection is under pre-AIA 35 U.S.C. 102(g) /103(a), the examiner’s basis for a finding of obviousness should be included. Note that interferences may include obvious variants, see MPEP Chapter 2300.
5. This form paragraph must be preceded by form paragraph 7.14.aia, or by form paragraph 7.103.