2141.01 Scope and Content of the Prior Art
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This MPEP section is applicable to applications subject to the first inventor to file (FITF) provisions of the AIA except that the relevant date is the "effective filing date" of the claimed invention instead of the "time the invention was made," which is only applicable to applications subject to pre-AIA 35 U.S.C. 102.
I. PRIOR ART AVAILABLE UNDER 35 U.S.C. 102 IS AVAILABLE UNDER 35 U.S.C. 103
“Before answering Graham’s ‘content’ inquiry, it must be known whether a patent or publication is in the prior art under 35 U.S.C. § 102.”
Subject matter that is prior art under 35 U.S.C. 102 can be used to support a rejection under section 103.
- Furthermore, admitted prior art can be relied upon for both anticipation and obviousness determinations, regardless of whether the admitted prior art would otherwise qualify as prior art under the statutory categories of 35 U.S.C. 102.
A 35 U.S.C. 103 rejection is based on 35 U.S.C. 102(a)(1) or (a)(2) or pre-AIA 35 U.S.C. 102(a), 102(b), 102(e), etc. depending on the type of prior art reference used and its publication or issue date.
- For instance, an obviousness rejection over a U.S. patent which was issued more than 1 year before the filing date of the application subject to pre-AIA 35 U.S.C. 102 is said to be a statutory bar just as if it anticipated the claims under pre-AIA 35 U.S.C. 102(b).
- Analogously, an obviousness rejection based on a publication which would be applied under pre-AIA 35 U.S.C. 102(a) if it anticipated the claims can be overcome by swearing behind the publication date of the reference..
III. CONTENT OF THE PRIOR ART IS DETERMINED AT THE TIME THE INVENTION WAS MADE TO AVOID HINDSIGHT
The requirement “at the time the invention was made” is to avoid impermissible hindsight.
IV. Pre-AIA 35 U.S.C. 103(c) — EVIDENCE REQUIRED TO SHOW CONDITIONS OF Pre-AIA 35 U.S.C. 103(c) APPLY
An applicant subject to pre-AIA 35 U.S.C. 102 who wants to avail himself or herself of the benefits of pre-AIA 35 U.S.C. 103(c) has the burden of establishing that subject matter which only qualifies as prior art under subsection (e), (f) or (g) of pre-AIA 35 U.S.C. 102 used in a rejection under pre-AIA 35 U.S.C. 103(a) and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.
Likewise, an applicant who wants to avail himself or herself of the benefits of the joint research provisions of pre-AIA 35 U.S.C. 103(c) (for applications pending on or after December 10, 2004) has the burden of establishing that:
- the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made;
- the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
- the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
This prior art disqualification is only applicable for subject matter which only qualifies as prior art under subsection (e), (f) or (g) of pre-AIA 35 U.S.C. 102 used in a rejection under pre-AIA 35 U.S.C. 103(a).
Note that for applications filed prior to November 29, 1999, and granted as patents prior to December 10, 2004, pre-AIA 35 U.S.C. 103(c) is limited on its face to subject matter developed by another person which qualifies as prior art only under subsection (f) or (g) of pre-AIA 35 U.S.C. 102.
