¶ 7.21.01    Provisional Rejection, 35 U.S.C. 103(a), Common Assignee or at Least One Common Inventor

Claim [1] provisionally rejected under 35 U.S.C. 103(a)  as being obvious over copending Application No. [2] which has a common [3] with the instant application. Based upon 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 or patented. This provisional rejection under 35 U.S.C. 103(a)  is based upon a presumption of future publication or patenting of the conflicting application. [4]

This provisional rejection might be overcome either by a showing under 37 CFR 1.132  that any invention disclosed but not claimed in the copending application was derived from the inventor of this application and is thus not the invention "by another," or by a showing of a date of invention for the instant application prior to the effective U.S. filing date of the copending application under 37 CFR 1.131. This rejection might also be overcome by showing that the copending application is disqualified under 35 U.S.C. 103(c) as prior art in a rejection under 35 U.S.C. 103(a). See MPEP § 706.02(l)(1) and § 706.02(l)(2).

Examiner Note:

1. This paragraph is used to provisionally reject claims not patentably distinct from the disclosure in a copending application having an earlier U.S. filing date and also having either a common assignee or at least one common inventor. This form paragraph should not be used in applications pending on or after December 10, 2004 when the copending application is disqualified under 35 U.S.C. 103 (c) as prior art in a 35 U.S.C. 103 (a) rejection. See MPEP § 706.02(l)(3).

2. Use 35 U.S.C. 102(e ) as amended by the American Inventors Protection Act (AIPA) to determine the copending application reference’s prior art date, unless the copending application reference is based directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. If the copending application reference is 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, use pre-AIPA 35 U.S.C. 102(e)  to determine the copending application reference’s prior art date. 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. If the claimed invention is fully disclosed in the copending application, use paragraph 7.15.01.

4. In bracket 3, insert either --assignee-- or --inventor--.

5. In bracket 4, insert explanation of obviousness.

6. If the claimed invention is also claimed in the copending application, a provisional obviousness double patenting rejection should additionally be made using paragraph 8.33 and 8.37.

7. If evidence indicates that the copending application is also prior art under 35 U.S.C. 102(f) or (g)  and the copending application has not been disqualified as prior art in a 35 U.S.C. 103(a)  rejection pursuant to 35 U.S.C. 103 (c), a rejection should additionally be made under 35 U.S.C. 103(a)  using paragraph 7.21 (e.g., applicant has named the prior inventor in response to a requirement made using paragraph 8.28).