1504.02   Novelty [R-11.2013]

35 U.S.C. 102  Conditions for patentability; novelty

  • (a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—

    • (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
    • (2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
  • (b) EXCEPTIONS.—

    • (1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—

      • (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
      • (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
    • (2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.—A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—

      • (A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
      • (B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
      • (C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
  • (c) COMMON OWNERSHIP UNDER JOINT RESEARCH AGREEMENTS.—Subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(C) if—

    • (1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;
    • (2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
    • (3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
  • (d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS PRIOR ART.—For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application—

    • (1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or
    • (2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), or 365(b)  or to claim the benefit of an earlier filing date under section 120, 121, or 365(c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.

Pre-AIA 35 U.S.C. 102   Conditions for patentability; novelty and loss of right to patent.

A person shall be entitled to a patent unless —

  • (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
  • (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or
  • (c) he has abandoned the invention, or
  • (d) the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than twelve months before the filing of the application in the United States, or
  • (e) the invention was described in — (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a)  shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2)  of such treaty in the English language; or
  • (f) he did not himself invent the subject matter sought to be patented, or
  • (g)(1) during the course of an interference conducted under section 135  or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

35 U.S.C. 172  Right of priority

The right of priority provided for by subsections (a) through (d) of section 119 shall be six months in the case of designs. The right of priority provided for by section 119(e) shall not apply to designs.

Pre-AIA 35 U.S.C. 172   Right of priority.

The right of priority provided for by subsections (a) through (d) of section 119 of this title and the time specified in section 102(d) shall be six months in the case of designs. The right of priority provided for by section 119(e) of this title shall not apply to designs.

The standard for determining novelty under 35 U.S.C. 102  was set forth by the court in In re Bartlett, 300 F.2d 942, 133 USPQ 204 (CCPA 1962). "The degree of difference [from the prior art] required to establish novelty occurs when the average observer takes the new design for a different, and not a modified, already-existing design." 300 F.2d at 943, 133 USPQ at 205 (quoting Shoemaker, Patents For Designs, page 76). In design patent applications, the factual inquiry in determining anticipation over a prior art reference is the same as in utility patent applications. That is, the reference "must be identical in all material respects." Hupp v. Siroflex of America Inc., 122 F.3d 1456, 43 USPQ2d 1887 (Fed. Cir. 1997).

The "average observer" test does not require that the claimed design and the prior art be from analogous arts when evaluating novelty. In re Glavas, 230 F.2d 447, 450, 109 USPQ 50, 52 (CCPA 1956). Insofar as the "average observer" under 35 U.S.C. 102  is not charged with knowledge of any art, the issue of analogousness of prior art need not be raised. This distinguishes 35 U.S.C. 102  from 35 U.S.C. 103(a)  which requires determination of whether the claimed design would have been obvious to "a person of ordinary skill in the art."

When a claim is rejected under 35 U.S.C. 102  as being unpatentable over prior art, those features of the design which are functional and/or hidden during end use may not be relied upon to support patentability. In re Cornwall, 230 F.2d 447, 109 USPQ 57 (CCPA 1956); Jones v. Progress Ind. Inc., 119 USPQ 92 (D. R.I. 1958). Further, in a rejection of a claim under 35 U.S.C. 102, mere differences in functional considerations do not negate a finding of anticipation when determining design patentability. Black & Decker, Inc. v. Pittway Corp., 636 F.2d 1193, 231 USPQ 252 (N.D. Ill. 1986).

It is not necessary for the examiner to cite or apply prior art to show that functional and/or hidden features are old in the art as long as the examiner has properly relied on evidence to support the prima facie lack of ornamentality of these individual features. If applicant wishes to rely on functional or hidden features as a basis for patentability, the same standard for establishing ornamentality under 35 U.S.C. 171  must be applied before these features can be given any patentable weight. See MPEP § 1504.01(c).

In evaluating a statutory bar based on 35 U.S.C. 102(b), the experimental use exception to a statutory bar for public use or sale (see MPEP § 2133.03(e)) does not usually apply for design patents. See In re Mann, 861 F.2d 1581, 8 USPQ2d 2030 (Fed. Cir. 1988). However, Tone Brothers, Inc. v. Sysco Corp., 28 F.3d 1192, 1200, 31 USPQ2d 1321, 1326 (Fed. Cir. 1994) held that "experimentation directed to functional features of a product also containing an ornamental design may negate what otherwise would be considered a public use within the meaning of section 102(b)." See MPEP § 2133.03(e)(6).

Registration of a design abroad is considered to be equivalent to patenting under 35 U.S.C. 119(a) -(d)  and 35 U.S.C. 102(d), whether or not the foreign grant is published. (See Ex parte Lancaster, 151 USPQ 713 (Bd. App. 1965); Ex parte Marinissen, 155 USPQ 528 (Bd. App. 1966); Appeal No. 239-48, Decided April 30, 1965, 151 USPQ 711, (Bd. App. 1965); Ex parte Appeal decided September 3, 1968, 866 O.G. 16 (Bd. App. 1966). The basis of this practice is that if the foreign applicant has received the protection offered in the foreign country, no matter what the protection is called ("patent," "Design Registration," etc.), if the United States application is timely filed, a claim for priority will vest. If, on the other hand, the U.S. application is not timely filed, a statutory bar arises under 35 U.S.C. 102(d)  as modified by 35 U.S.C. 172. In order for the filing to be timely for priority purposes and to avoid possible statutory bars, the U.S. design patent application must be made within 6 months of the foreign filing. See also MPEP § 1504.10.

The laws of each foreign country vary in one or more respects.

The following table sets forth the dates on which design rights can be enforced in a foreign country (INID Code (24)) and thus, are also useable in a pre-AIA 35 U.S.C. 102(d)  rejection as modified by 35 U.S.C. 172. It should be noted that in many countries the date of registration or grant is the filing date.

Country or Organization Date(s) Which Can Also Be Used for 35 U.S.C. 102(d)  Purposes1 (INID Code (24)) Comment
AT-Austria  Protection starts on the date of publication of the design in the official gazette   
AU-Australia  Date of registration or grant which is the filing date   
BG-Bulgaria  Date of registration or grant which is the filing date   
BX-Benelux (Belgium, Luxembourg, and the Netherlands)  Date on which corresponding application became complete and regular according to the criteria set by the law   
CA-Canada  Date of registration or grant   
CH-Switzerland  Date of registration or grant which is the filing date  Minimum requirements: deposit application, object, and deposit fee 
CL-Chile  Date of registration or grant   
CU-Cuba  Date of registration or grant which is the filing date   
CZ-Czech Republic  Date of registration or grant which is the filing date   
DE-Germany  Date of registration or grant  The industrial design right can be enforced by a court from the date of registration although it is in force earlier (as from the date of filing—as defined by law). 
DK-Denmark  Date of registration or grant which is the filing date   
EG-Egypt  Date of registration or grant which is the filing date   
ES-Spain  Date of registration or grant    
FI-Finland  Date of registration or grant which is the filing date   
FR-France  Date of registration or grant which is the filing date   
GB-United Kingdom  Date of registration or grant which is the filing date  Protection arises automatically under the Design Right provision when the design is created. Proof of the date of the design creation needs to be kept in case the design right is challenged. The protection available to designs can be enforced in the courts following the date of grant of the Certificate of Registration as of the date of registration which stems from the date of first filing of the design in the UK or, if a priority is claimed under the Convention, as another country.  
HU-Hungary  Date of registration or grant  With retroactive effect as from the filing date 
JP-Japan  Date of registration or grant   
KR-Republic of Korea  Date of registration or grant   
MA-Morocco  Date of registration or grant which is the filing date   
MC-Monaco  Date of registration or grant which is the filing date  Date of prior disclosure declared on deposit 
NO-Norway  Date of registration or grant which is the filing date   
OA-African Intellectual Property Organization (OAPI) (Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Congo, Cote d`Ivoire, Gabon, Guinea, Mali, Mauritania, Niger, Senegal, and Togo)  Date of registration or grant which is the filing date   
PT-Portugal  Date of registration or grant   
RO-Romania  Date of registration or grant which is the filing date   
RU-Russian Federation  Date of registration or grant which is the filing date   
SE-Sweden  Date of registration or grant   
TN-Tunisia  Date of registration or grant which is the filing date   
TT-Trinidad and Tobago  Date of registration or grant which is the filing date   
WO-World Intellectual Property Organization (WIPO)    Subject to Rule 14.2 of the Regulations (on defects), the International Bureau enters the international deposit in the International Register on the date on which it has in its possession the application together with the items required. Reproductions, samples, or models pursuant to Rule 12, and the prescribed fees. 
1Based on information taken from the "Survey of Filing Procedures and Filing Requirements, as well as of Examination Methods and Publication Procedures, Relating to Industrial Designs" as adopted by the PCIPI Executive Coordination Committee of the World Intellectual Property Organization (WIPO) at its fifteenth session on November 25, 1994. 

Rejections under pre-AIA 35 U.S.C. 102(d)  as modified by 35 U.S.C. 172  should only be made when the examiner knows that the application for foreign registration/patent has actually issued before the U. S. filing date based on an application filed more than six (6) months prior to filing the application in the United States. If the grant of a registration/patent based on the foreign application is not evident from the record of the U. S. application or from information found within the preceding charts, then the statement below should be included in the first action on the merits of the application:

¶ 15.03.01.fti    Foreign Filing More Than 6 Months Before U.S. Filing, Application Filed Before March 16, 2013

Acknowledgment is made of the [1] application identified in the oath or declaration or application data sheet which was filed more than six months prior to the filing date of the present application. Applicant is reminded that if the [2] application matured into a form of patent protection before the filing date of the present application it would constitute a statutory bar to the issuance of a design patent in the United States under pre-AIA 35 U.S.C. 102(d)  in view of pre-AIA 35 U.S.C. 172.

Examiner Note:

In brackets 1 and 2, insert the name of country where application was filed.

Form paragraphs for use in rejections under 35 U.S.C. 102  and pre-AIA 35 U.S.C. 102 are set forth below.

¶ 15.10.aia    Application Examined Under AIA First Inventor to File Provisions

The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA.

Examiner Note:

This form paragraph should be used in any application subject to the first inventor to file provisions of the AIA.

¶ 15.10.fti    Application Examined Under First Inventor to File Provisions

The present application, filed on or after March 16, 2013, is being examined under the pre-AIA first to invent provisions.

Examiner Note:

This form paragraph should be used in any application filed on or after March 16, 2013, that is subject to the pre-AIA prior art provisions.

¶ 15.10.15    Notice re prior art available under both pre-AIA and AIA

In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.

Examiner Note:

1. This form paragraph must be used in all Office Actions when a prior art rejection is made in an application with an actual filing date on or after March 16, 2013 that claims priority to, or the benefit of, an application filed before March 16, 2013.

2. This form paragraph should only be used ONCE in an Office action.

¶ 15.11.fti    Pre-AIA 35 U.S.C. 102(a)  Rejection

The claim is rejected under pre-AIA 35 U.S.C. 102(a)  as being clearly anticipated by [1] because the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country before the invention thereof by the applicant for patent.

Examiner Note:

1. In bracket 1, identify the reference applied against the claimed design.

2. For applications with an actual filing date on or after March 16, 2013 that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.

3. 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 /35 U.S.C. 103  as amended by the AIA. Appropriate form paragraphs indicating treatment as a first inventor to file application should be included, i.e., form paragraphs 15.10.aia and 15.10.01.aia and any of form paragraphs 15.10.101.aia – 15.10.105.aia.

¶ 15.11.aia    35 U.S.C. 102(a)(1) Rejection

The claim is rejected under 35 U.S.C. 102(a)(1)  as being clearly anticipated by [1] because the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.

Examiner Note:

1. In bracket 1, identify the reference applied against the claimed design.

2. For applications with an actual filing date on or after March 16, 2013 that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraphs 15.10.aia and 15.10.15.

¶ 15.12.fti    Pre-AIA 35 U.S.C. 102(b)  Rejection

The claim is rejected under 35 U.S.C. 102(b)  as being clearly anticipated by [1] because the invention was patented or described in a printed publication in this or a foreign country, or in public use or on sale in this country more than one (1) year prior to the application for patent in the United States.

Examiner Note:

1. In bracket 1, identify the reference applied against the claimed design.

2. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.

¶ 15.13.fti    Pre-AIA 35 U.S.C. 102(c)  Rejection

The claim is rejected under pre-AIA 35 U.S.C. 102(c)  because the invention has been abandoned.

¶ 15.14.fti    Pre-AIA 35 U.S.C. 102(d) /35 U.S.C. 172  Rejection

The claim is rejected under pre-AIA 35 U.S.C. 102(d), as modified by pre-AIA 35 U.S.C. 172, as being clearly anticipated by [1] because the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate by the applicant, or his/her legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than six (6) months before the filing of the application in the United States.

Examiner Note:

In bracket 1, identify the reference applied against the claimed design.

¶ 15.15.fti    Pre-AIA 35 U.S.C. 102(e)  Rejection

The claim is rejected under pre-AIA 35 U.S.C. 102(e)  as being clearly anticipated by [1] because the invention was described in a patented or published application for patent by another filed in the United States before the invention thereof by the applicant for patent.

Examiner Note:

1. In bracket 1, identify the reference applied against the claimed design.

2. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.

¶ 15.15.aia    35 U.S.C. 102(a)(2) Rejection

The claim is rejected under 35 U.S.C. 102(a)(2)  as being clearly anticipated by [1] because the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

Examiner Note:

1. In bracket 1, identify the reference applied against the claimed design.

2. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraphs 15.10.aia and 15.10.15.

3. 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 AIA.

¶ 15.16.fti    Pre-AIA 35 U.S.C. 102(f)  Rejection

The claim is rejected under pre-AIA 35 U.S.C. 102  because applicant did not himself invent the subject matter sought to be patented.

¶ 15.17.fti    Pre-AIA 35 U.S.C. 102(g) Rejection

The claim is rejected under pre-AIA 35 U.S.C. 102(g) because, before the applicant’s invention thereof, the invention was made in this country by another who had not abandoned, suppressed or concealed it.

Examiner Note:

For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraphs 15.10.fti and 15.10.15.

¶ 15.17.aia    Pre-AIA 35 U.S.C. 102(g) Rejection

The claim is rejected under pre-AIA 35 U.S.C. 102  because, before the applicant’s invention thereof, the invention was made in this country by another who had not abandoned, suppressed or concealed it.

A rejection based on this statutory basis can be made in an application or patent that is examined under the first to file provisions of the AIA if it 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, 35 U.S.C. 121, or 35 U.S.C. 365(c)  to any patent or application that contains or contained at any time such a claim.

Examiner Note:

For applications with an actual filing date on or after March 16, 2013 that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraphs 15.10.aia and 15.10.15.

¶ 15.09.02.aia    Statement of Statutory Bases, 35 U.S.C. 171 and 35 U.S.C. 115-Improper Inventorship

The following is a quotation of 35 U.S.C. 171:

Whoever invents any new, original, and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.

The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.

35 U.S.C. 115(a)  reads as follows (in part):

An application for patent that is filed under section 111(a)  or commences the national stage under section 371  shall include, or be amended to include, the name of the inventor for any invention claimed in the application.

The present application sets forth incorrect inventorship because [1].

The claim is rejected under 35 U.S.C. 171  and 35 U.S.C. 115  for failing to set forth the correct inventorship for the reasons stated above.

Examiner Note:

In bracket 1, insert the basis for concluding that the inventorship is incorrect.

¶ 15.09.03.aia    Statement of Statutory Basis, 35 U.S.C. 115-Improper Inventorship

An application for patent that is filed under section 111(a)  or commences the national stage under section section 371  shall include, or be amended to include, the name of the inventor for any invention claimed in the application.

The present application sets forth incorrect inventorship because [1].

The claim is rejected under 35 U.S.C. 171  and 35 U.S.C. 115  for failing to set forth the correct inventorship for the reasons stated above.

Examiner Note:

1. This form paragraph is to be used ONLY when a rejection under 35 U.S.C. 171  on another basis has been made and the statutory text thereof is already present.

2. This form paragraph must be preceded by form paragraph 15.07.01 for a rejection based on improper inventorship.

3. In bracket 1, insert an explanation of the supporting evidence establishing that an improper inventor is named.

¶ 15.24.05.fti    Identical Claim: Common Assignee

The claim is directed to the same invention as that of the claim of commonly assigned copending Application No. [1]. The issue of priority under pre-AIA 35 U.S.C. 102(g)  and possibly pre-AIA 35 U.S.C. 102(f)  of this single invention must be resolved. Since the U.S. Patent and Trademark Office normally will not institute an interference between applications or a patent and an application of common ownership (see MPEP § 2302), the assignee is required to state which entity is the prior inventor of the conflicting subject matter. A terminal disclaimer has no effect in this situation since the basis for refusing more than one patent is priority of invention under pre-AIA 35 U.S.C.102(f) or (g)  and not an extension of monopoly. Failure to comply with this requirement will result in a holding of abandonment of this application.

The following form paragraph should be included after the form paragraph setting forth the rejection under 35 U.S.C. 102  (a), (b)  , (d)  or (e)  to provide an explanation of the applied reference.

¶ 15.15.01.fti    Explanation of rejection under Pre-AIA 35 U.S.C. 102(a), (b), (d), or (e)

The shape and appearance of [1] is identical in all material respects to that of the claimed design, Hupp v. Siroflex of America Inc., 122 F.3d 1456, 43 USPQ2d 1887 (Fed. Cir. 1997).

Examiner Note:

1. This paragraph should be included after paragraph 15.11.fti, 15.12.fti, 15.14.fti or 15.15.fti to explain the basis of the rejection.

2. In bracket [1], identify the reference applied against the claimed design.

3. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.

¶ 15.15.01.aia    Explanation of rejection under 35 U.S.C. 102(a)(1) or 102(a)(2)

The shape and appearance of [1] is identical in all material respects to that of the claimed design, Hupp v. Siroflex of America Inc., 122 F.3d 1456, 43 USPQ2d 1887 (Fed. Cir. 1997).

Examiner Note:

1. This paragraph should be included after paragraph 15.11.aia or 15.15.aia to explain the basis of the rejection.

2. In bracket [1], identify the reference applied against the claimed design.

The following form paragraphs may be used to reject a claim under 37 CFR 1.102(e)  over an application or patent having an earlier effective U.S. filing date with a common inventor and/or assignee, or that discloses but does not claim the design.

¶ 15.15.02.fti    Provisional Pre-AIA 35 U.S.C. 102(e) rejection - design disclosed but not claimed in another application with common inventor and/or assignee

The claim is provisionally rejected under pre-AIA 35 U.S.C. 102(e)  as being anticipated by copending Application No. [1] which has a common [2] with the instant application.

Based upon the different inventive entity and 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 under 35 U.S.C. 122(b)  or patented. This provisional rejection under pre-AIA 35 U.S.C. 102(e)  is based upon a presumption of future publication or patenting of the copending application.

Since the design claimed in the present application is not the same invention claimed in the [3] application, the examiner suggests overcoming this provisional rejection in one of the following ways: (A) a showing under 37 CFR 1.132  that the design in the reference was derived from the designer of this application and is thus not the invention "by another;" (B) a showing of a date of invention for the instant application prior to the effective U.S. filing date of the reference under 37 CFR 1.131(a); (C) perfecting a claim to priority under 35 U.S.C. 119  that antedates the reference by filing a certified priority document in the application that satisfies the enablement and description requirements of 35 U.S.C. 112(a)  or pre-AIA 35 U.S.C. 112  first paragraph; or (D) perfecting the benefit claim under 35 U.S.C. 120  by adding a specific reference to the prior filed application in compliance with 37 CFR 1.78  and establishing that the prior application satisfies the enablement and description requirements of 35 U.S.C. 112(a)  or pre-AIA 35 U.S.C. 112  first paragraph. If the application was filed before September 16, 2012, the specific reference must be included in the first sentence(s) of the specification following the title or in an application data sheet; if the application was filed on or after September 16, 2012, the specific reference must be included in an application data sheet.

This rejection may not be overcome by the filing of a terminal disclaimer. See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991).

Examiner Note:

1. This form paragraph is used to provisionally reject over a copending application (utility or design) with an earlier filing date that discloses (but does not claim) the claimed invention which has not been patented or published under 35 U.S.C. 122. The copending application must have either a common assignee or at least one common inventor.

2. Use pre-AIA 35 U.S.C. 102(e)  as amended by the American Inventor’s Protection Act (AIPA) (form paragraph 7.12.fti) to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. Use pre-AIPA 35 U.S.C. 102(e)  (form paragraph7.12.01.fti) only if the reference is a U.S. patent issued directly or indirectly from 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, or 365 (c)  to an international application having an international filing date prior to November 29, 2000. 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 or pre-AIPA 35 U.S.C. 102(e)  date.

3. In bracket 2, insert inventor or assignee.

4. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.

¶ 15.15.02.aia    35 U.S.C. 102(a)(2) Provisional rejection - design disclosed in another application with common inventor and/or assignee

The claim is provisionally rejected under 35 U.S.C. 102(a)(2) as being anticipated by copending Application No. [1] which has a common [2] with the instant application.

Because the copending application names another inventor and has an earlier effective filing date, it would constitute prior art under 35 U.S.C. 102(a)(2), if published under 35 U.S.C. 122(b)  or patented. This provisional rejection under 35 U.S.C. 102(a)(2)  is based upon a presumption of future publication or patenting of the copending application.

This provisional rejection under 35 U.S.C. 102(a)(2)  might be overcome by: (1) a showing under 37 CFR 1.130(a)  that the design in the reference was obtained directly or indirectly from the inventor of this application and is thus not prior art under 35 U.S.C. 102(b)(2)(A); (2) perfecting a claim to priority under 35 U.S.C. 119  that antedates the reference by filing a certified priority document in the application that satisfies the enablement and description requirements of 35 U.S.C. 112(a); (3) perfecting the benefit claim under 35 U.S.C. 120  by filing an application data sheet under 37 CFR 1.76  which contains a specific reference to a prior application in accordance with 37 CFR 1.78  and establishing that the prior application satisfies the enablement and description requirements of 35 U.S.C. 112(a); (4) a showing under 37 CFR 1.130(b)  of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (5) providing a statement pursuant to 35 U.S.C. 102(b)(2)(C)  that the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.

This rejection may not be overcome by the filing of a terminal disclaimer. See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991).

Examiner Note:

1. This form paragraph is used to provisionally reject over a copending application (utility or design) with an earlier filing date that discloses the claimed invention which has not been patented or published under 35 U.S.C. 122. The copending application must have either a common assignee or at least one common inventor.

2. In bracket 2, insert inventor or assignee.

3. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraphs 15.10.aia and 15.10.15.

4. 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 AIA.

¶ 15.15.03.fti    Pre-AIA 35 U.S.C. 102(e) provisional rejection - design claimed in an earlier filed design patent application with common inventor and/or assignee

The claim is provisionally rejected under pre-AIA 35 U.S.C. 102(e)  as being anticipated by the claim in copending Design Patent Application No. [1] which has a common [2] with the instant application.

Based upon the different inventive entity and 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 patented. This provisional rejection under pre-AIA 35 U.S.C. 102(e)  is based upon a presumption of future patenting of the copending application. The rejection may be overcome by abandoning the earlier filed copending application.

Examiner Note:

1. In bracket 2, insert inventor or assignee.

2. This form paragraph must be preceded by form paragraph 15.24.05.fti to notify the applicant that the question of patentability under pre-AIA 35 U.S.C. 102(f) /(g)  also exists.

3. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.

¶ 15.15.04.fti    Pre-AIA 35 U.S.C. 102(e) rejection - design disclosed but not claimed in a patent

The claim is rejected under pre-AIA 35 U.S.C. 102  as being anticipated by patent [1].

Based upon the different inventive entity and the earlier effective U.S. filing date of the reference, it constitutes prior art under pre-AIA 35 U.S.C. 102.

Since the design claimed in the present application is not the same invention claimed in patent [2], the examiner suggests overcoming this rejection in one of the following ways: (A) a showing under 37 CFR 1.132  that the design in the reference was derived from the designer of this application and is thus not the invention "by another;" (B) a showing of a date of invention for the instant application prior to the effective U.S. filing date of the reference under 37 CFR 1.131(a); (C) perfecting a claim to priority under 35 U.S.C. 119  that antedates the reference by filing a certified priority document in the application that satisfies the enablement and description requirements of 35 U.S.C. 112(a)  or pre-AIA 35 U.S.C. 112  first paragraph; or (D) perfecting the benefit claim 35 U.S.C. 120  by adding a specific reference to the prior filed application in compliance with 37 CFR 1.78  and establishing that the prior application satisfies the enablement and description requirements of 35 U.S.C. 112(a)  or 35 U.S.C. 112  first paragraph. If the application was filed before September 16, 2012, the specific reference must be included in the first sentence(s) of the specification following the title or in an application data sheet; if the application was filed on or after September 16, 2012, the specific reference must be included in an application data sheet.

This rejection may not be overcome by the filing of a terminal disclaimer. See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991).

Examiner Note:

1. This form paragraph should be used when the claimed design in the application being examined is disclosed in the drawings of an earlier filed design or utility patent but is not claimed therein. When the design claimed in the application being examined is disclosed in the drawings of an earlier filed design patent, it would most often be in the form of subcombination subject matter, (part or portion of an article), that is patentably distinct from the claim for the design embodied by the combination or whole article. It may also be unclaimed subject matter depicted in broken lines in the earlier filed application.

2. In brackets 1 and 2, insert number of patent.

3. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.

¶ 15.15.04.aia    35 U.S.C. 102(a)(2) rejection - design disclosed in a patent

The claim is rejected under 35 U.S.C. 102(a)(2)  as being anticipated by patent [1].

Because the patent names another inventor and has an earlier effective filing date, it constitutes prior art under 35 U.S.C. 102(a)(2).

This rejection under 35 U.S.C. 102(a)(2)  might be overcome by: (1) a showing under 37 CFR 1.130(a)  that the disclosure in the reference was obtained directly or indirectly from the inventor of this application and is thus not prior art under 35 U.S.C. 102(b)(2)(A); (2) perfecting a claim to priority under 35 U.S.C. 119  that antedates the reference by filing a certified priority document in the application that satisfies the enablement and description requirements of 35 U.S.C. 112(a); (3) perfecting the benefit claim under 35 U.S.C. 120  by filing an application data sheet under 37 CFR 1.76  which contains a specific reference to a prior application in accordance with 37 CFR 1.78  and establishing that the prior application satisfies the enablement and description requirements of 35 U.S.C. 112(a); (4) a showing under 37 CFR 1.130(b)  of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (5) providing a statement pursuant to35 U.S.C. 102(b)(2)(C)  that the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.

This rejection may not be overcome by the filing of a terminal disclaimer. See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991).

Examiner Note:

1. This form paragraph should be used when the claimed design in the application being examined is disclosed in the drawings of an earlier filed design or utility patent. When the design claimed in the application being examined is disclosed in the drawings of an earlier filed design patent, it would most often be in the form of subcombination subject matter, (part or portion of an article), that is patentably distinct from the claim for the design embodied by the combination or whole article. It may also be unclaimed subject matter depicted in broken lines in the earlier filed application.

2. In bracket 1, insert number of patent.

3. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraphs 15.10.aia and 15.10.15.

The following form paragraphs may be used in a second or subsequent action, where appropriate.

¶ 15.38    Rejection Maintained

The arguments presented have been carefully considered, but are not persuasive that the rejection of the claim under [1] should be withdrawn.

Examiner Note:

In bracket 1, insert basis of rejection.

¶ 15.40.01    Final Rejection Under Other Statutory Provisions

The claim is again and FINALLY REJECTED under [1] as [2].

Examiner Note:

1. In bracket 1, insert statutory basis.

2. In bracket 2, insert reasons for rejection.

3. See paragraphs in MPEP Chapter 700, for "Action is Final" and "Advisory after Final" paragraphs.