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706.02(f)   Rejection Under pre-AIA 35 U.S.C. 102(e)

 This MPEP section is not applicable to applications subject to examination under the first inventor to file provisions of the AIA.

MPEP SECTION SUMMARY This section covers rejections under pre-AIA 35 U.S.C. 102(e). Essentially, pre-AIA 35 U.S.C. 102(e), in part, allows for certain prior art (i.e., U.S. patents, U.S. patent application publications and WIPO publications of international applications) to be applied against the claims as of its effective U.S. filing date.

  Section Frequency Chart

Pre-AIA 35 U.S.C. 102(e), in part, allows for certain prior art (i.e., U.S. patents, U.S. patent application publications and WIPO publications of international applications) to be applied against the claims as of its effective U.S. filing date.

• This provision of pre-AIA 35 U.S.C. 102 is mostly utilized when the publication or issue date is too recent for the reference to be applied under pre-AIA 35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(b).
• In order to apply a reference under pre-AIA 35 U.S.C. 102(e), the inventive entity of the application must be different than that of the reference.

Note that, where there are joint inventors, only one inventor needs to be different for the inventive entities to be different and a rejection under pre-AIA 35 U.S.C. 102(e) is applicable even if there are some inventors in common between the application and the reference.

 This MPEP section is not applicable to applications subject to examination under the first inventor to file provisions of the AIA.

MPEP SECTION SUMMARY This section covers the examination guidelines for applying references under pre-AIA 35 U.S.C. 102(e). The first step is to determine the appropriate pre-AIA 35 U.S.C. 102(e) date for each potential reference. Several examples are provided as this material is very complex and involved.

  Section Frequency Chart

I.   DETERMINE THE APPROPRIATE PRE-AIA 35 U.S.C. 102(e) DATE FOR EACH POTENTIAL REFERENCE BY FOLLOWING THE GUIDELINES, EXAMPLES, AND FLOW CHARTS SET FORTH BELOW:

• (A) The potential reference must be a U.S. patent, a U.S. application publication (35 U.S.C. 122(b)) or a WIPO publication of an international application under PCT Article 21(2) in order to apply the reference under pre-AIA 35 U.S.C. 102(e).
• (B) Determine if the potential reference resulted from, or claimed the benefit of, an international application. If the reference does, go to step (C) below.
  • The 35 U.S.C. 102(e) date of a reference that did not result from, nor claimed the benefit of, an international application is its earliest effective U.S. filing date, taking into consideration any proper benefit claims to prior U.S. applications under 35 U.S.C. 119(e) or 120 if the prior application(s) properly supports the subject matter used to make the rejection in compliance with 35 U.S.C. 112, first paragraph.
  • For benefit claims under 35 U.S.C. 119(e), at least one claim of the reference patent must be supported by the disclosure of the relied upon provisional application in compliance with pre-AIA 35 U.S.C. 112, first paragraph, in order for the patent to be usable as prior art under pre-AIA 35 U.S.C. 102(e) as of a relied upon provisional application's filing date.
• (C) If the potential reference resulted from, or claimed the benefit of, an international application, the following must be determined:
• (1) If the international application meets the following three conditions:
• (a) an international filing date on or after November 29, 2000;
• (b) designated the United States; and
• (c) published under PCT Article 21(2) in English.
• then the international filing date is a U.S. filing date for prior art purposes under pre-AIA 35 U.S.C. 102(e).
  • If such an international application properly claims benefit to an earlier-filed U.S. or international application, or to an earlier-filed U.S. provisional application, apply the reference under pre-AIA 35 U.S.C. 102(e) as of the earlier filing date, assuming all the conditions of pre-AIA 35 U.S.C. 102(e), 119(e), 120, or 365(c) are met.
  • The subject matter used in the rejection must be disclosed in the earlier-filed application in compliance with 35 U.S.C. 112, first paragraph, in order for that subject matter to be entitled to the earlier filing date under pre-AIA 35 U.S.C. 102(e).
  • Note, where the earlier application is an international application, the earlier international application must satisfy the same three conditions (i.e., filed on or after November 29, 2000, designated the U.S., and had been published in English under PCT Article 21(2)) for the earlier international filing date to be a U.S. filing date for prior art purposes under pre-AIA 35 U.S.C. 102(e).
• (2) If the international application was filed on or after November 29, 2000, but did not designate the United States or was not published in English under PCT Article 21(2), do not treat the international filing date as a U.S. filing date for prior art purposes. In this situation, do not apply the reference as of its international filing date, its date of completion of the 35 U.S.C. 371(c)(1), (2) and (4) requirements, or any earlier filing date to which such an international application claims benefit or priority.
  • The reference may be applied under pre-AIA 35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(b) as of its publication date, or pre-AIA 35 U.S.C. 102(e) as of any later U.S. filing date of an application that properly claimed the benefit of the international application (if applicable).
• (3) If the international application has an international filing date prior to November 29, 2000, apply the reference under the provisions of pre-AIA 35 U.S.C. 102 and 374, prior to the AIPA amendments:
• (a) For U.S. patents, apply the reference under pre-AIA 35 U.S.C. 102(e) as of the earlier of the date of completion of the requirements of 35 U.S.C. 371(c)(1), (2) and (4) or the filing date of the later-filed U.S. application that claimed the benefit of the international application;
• (b) For U.S. application publications and WIPO publications directly resulting from international applications under PCT Article 21(2), never apply these references under pre-AIA 35 U.S.C. 102(e). These references may be applied as of their publication dates under pre-AIA 35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(b);
• (c) For U.S. application publications of applications that claim the benefit under 35 U.S.C. 120 or 365(c) of an international application filed prior to November 29, 2000, apply the reference under pre-AIA 35 U.S.C. 102(e) as of the actual filing date of the later-filed U.S. application that claimed the benefit of the international application.
• (4) Examiners should be aware that although a publication of, or a U.S. Patent issued from, an international application may not have a pre-AIA 35 U.S.C. 102(e) date at all, or may have a pre-AIA 35 U.S.C. 102(e) date that is after the effective filing date of the application being examined (so it is not “prior art”), the corresponding WIPO publication of an international application may have an earlier pre-AIA 35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(b)) date.
• (D) Foreign applications’ filing dates that are claimed in applications, which have been published as U.S. or WIPO application publications or patented in the U.S., may not be used as pre-AIA 35 U.S.C. 102(e) dates for prior art purposes. This includes international filing dates claimed as foreign priority dates under 35 U.S.C. 365(a) or (b).

II.   EXAMPLES

Now that you’ve been exposed to the basics, try answering the following questions related to 35 U.S.C. 102(e) filing dates.

The objective is to figure out what the 35 U.S.C. 102(e) filing date is for each of the following scenarios:

• the 102(e)(1) date relates to the date used for any subsequent publications that may arise from the given example
• the 102(e)(2) date relates to the date used for any patents that may issue from the given example
  

 

MPEP SECTION SUMMARY This section covers provisional rejections under 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e) where the reference is a copending U.S. patent application. It covers instances where the copending U.S. applications have at least one common inventor or are commonly assigned and instances where copending applications have no common inventor or assignee.

If an earlier filed, copending, and unpublished U.S. patent application discloses subject matter which would anticipate the claims in a later filed pending U.S. application which has a different inventive entity, the examiner should determine whether a provisional rejection under 35 U.S.C. 102(a)(2) or a pre-AIA 35 U.S.C. 102(e) of the later filed application can be made.

• In addition, a provisional rejection under 35 U.S.C. 102(a)(2) or a pre-AIA 35 U.S.C. 102(e) may be made, in the circumstances described below, if the earlier filed, pending application has been published as redacted and the subject matter relied upon in the rejection is not supported in the redacted publication of the patent application.

I.   COPENDING U.S. APPLICATIONS HAVING AT LEAST ONE COMMON INVENTOR OR ARE COMMONLY ASSIGNED

If (1) at least one common inventor exists between the applications or the applications are commonly assigned and (2) the effective filing dates are different, then a provisional rejection of the later filed application should be made.

• The provisional rejection is appropriate in circumstances where if the earlier filed application is published or becomes a patent it would constitute actual prior art under 35 U.S.C. 102.
• Since the earlier-filed application is not published at the time of the rejection, the rejection must be provisionally made under 35 U.S.C. 102(a)(2) or a pre-AIA 35 U.S.C. 102(e).
  
• A provisional rejection under 35 U.S.C. 102(a)(2) or a pre-AIA 35 U.S.C. 102(e) can be overcome in the same manner that a 35 U.S.C. 102(a)(2) or a pre-AIA 35 U.S.C. 102(e) rejection can be overcome.
• The provisional rejection can also be overcome by abandoning the applications and filing a new application containing the subject matter of both.

II.   COPENDING APPLICATIONS HAVING NO COMMON INVENTOR OR ASSIGNEE

If there is no common assignee or common inventor and the application was not published pursuant to 35 U.S.C. 122(b), the confidential status of applications under 35 U.S.C. 122(a) must be maintained and no rejection can be made relying on the earlier filed, unpublished application, or subject matter not supported in a redacted application publication, as prior art under 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e).

• For applications subject to pre-AIA 35 U.S.C. 102(g), if the filing dates of the applications are within 6 months of each other (3 months for simple subject matter) then interference may be proper.

If the application with the earliest effective U.S. filing date will not be published pursuant to 35 U.S.C. 122(b), it must be allowed to issue once all the statutory requirements are met.

• After the patent is published, it may be used as a reference in a rejection under 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e) in the still pending application as appropriate.

 

» 706.02(g)   Rejections Under Pre-AIA 35 U.S.C. 102(f)