The claim is provisionally rejected under 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 35 U.S.C. 102 (e), if published under 35 U.S.C. 122(b) or patented. This provisional rejection under 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; (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, first paragraph; or (D) Perfecting priority under 35 U.S.C. 120 by amending the specification of the application to contain a specific reference to a prior application or 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 (a) and establishing that the prior application satisfies the enablement and description requirements of 35 U.S.C. 112, first paragraph.
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 35 U.S.C. 102(e) as amended by the American Inventor’s Protection Act (form paragraph 7.12) 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 paragraph 7.12.01) 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 and 7.12.01 to assist in the determination of the 35 U.S.C. 102(e) date.
3. In bracket 2, insert inventor or assignee.