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

The claim is rejected under 35 U.S.C. 102 (e) 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 35 U.S.C. 102 (e).

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; (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 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.