You are here:  Ed9 10.2019 Guidebook  » Appendix II: 35 U.S.C. 102

2136.04   Different Inventive Entity; Meaning of “By Another”

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

MPEP SECTION SUMMARY This section covers the meaning of 'by another'. Once again there is a discussion that if there is any difference in the inventive entity, the reference is considered 'by another'. When a different inventive entity exists, it is prima facie evidence that the reference is 'by another'.

I.   IF THERE IS ANY DIFFERENCE IN THE INVENTIVE ENTITY, THE REFERENCE IS “BY ANOTHER”

“Another” means other than applicants, in other words, a different inventive entity.

• The inventive entity is different if not all inventors are the same.
• The fact that the application and reference have one or more inventors in common is immaterial.

II.   A DIFFERENT INVENTIVE ENTITY IS PRIMA FACIE EVIDENCE THAT THE REFERENCE IS “BY ANOTHER”

As stated by the House and Senate reports on the bills enacting section pre-AIA 35 U.S.C. 102(e) as part of the 1952 Patent Act, this subsection of 102 codifies the Milburn rule of Milburn v. Davis-Bournonville, The Milburn rule authorized the use of a U.S. patent containing a disclosure of the invention as a reference against a later filed application as of the U.S. patent filing date.

• The existence of an earlier filed U.S. application containing the subject matter claimed in the application being examined indicates that applicant was not the first inventor.
• Therefore, a U.S. patent, a U.S. patent application publication or international application publication, by a different inventive entity, whether or not the application shares some inventors in common with the patent, is prima facie evidence that the invention was made “by another” as set forth in pre-AIA 35 U.S.C. 102(e).

 

» 2136.05 Overcoming a Rejection Under Pre-AIA 35 U.S.C. 102(e)