¶ 15.19.02 Preface 35 U.S.C. 102 (e)/103 (a) rejection - Different inventors, common assignee, obvious designs, no evidence of common ownership at time later design was made
The claim is directed to a design not patentably distinct from the design of commonly assigned [1]. Specifically, the claimed design is different from the one in [2] in that [3]. These differences are considered obvious and do not patentably distinguish the overall appearance of the claimed design over the design in [4].
The commonly assigned [5], discussed above, has a different inventive entity from the present application. Therefore, it qualifies as prior art under 35 U.S.C. 102 (e), (f) or (g) and forms the basis for a rejection of the claim in the present application under 35 U.S.C. 103 (a) if the conflicting design claims were not commonly owned at the time the design in this application was made. In order to resolve this issue, the applicant, assignee or attorney of record can state that the conflicting designs were commonly owned at the time the design in this application was made, or the assignee can name the prior inventor of the conflicting subject matter.
A showing that the designs were commonly owned at the time the design in this application was made will overcome a rejection under 35 U.S.C. 103 (a) based upon the commonly assigned case as a reference under 35 U.S.C. 102 (f) or (g), or 35 U.S.C. 102 (e) for applications filed on or after November 29, 1999.
Examiner Note:
1. This form paragraph should be used when the application being examined is commonly assigned with a conflicting application or patent, but there is no indication that they were commonly assigned at the time the invention was actually made.
2. If the conflicting claim is in a patent with an earlier U.S. filing date, a rejection under 35 U.S.C. 102 (e)/103 (a) should be made.
3. If the conflicting claim is in a commonly assigned, copending application with an earlier filing date, a provisional rejection under 35 U.S.C. 102 (e)/103 (a) should be made.
4. An obviousness double patenting rejection may also be included in the action.
5. In brackets 1, 2, 4 and 5, insert patent and number, or copending application and serial number.
6. In bracket 3, identify differences between design claimed in present application and that claimed in earlier filed patent or copending application.
7. This form paragraph should only be used ONCE in an Office action.
8. If the rejection relies upon prior art under 35 U.S.C. 102 (e), use 35 U.S.C. 102 (e) as amended by the American Inventor’s Protection Act 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) only if the reference is a U.S. patent issued directly or indirectly form either a national stage of an international application (application under 35 U.S.C. 371 ) which has 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 reference’s 35 U.S.C. 102(e) date.