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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

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I.    STATUTORY INVENTION REGISTRATIONS (SIRs) ARE ELIGIBLE AS PRIOR ART UNDER 35 U.S.C. 102 and Pre-AIA 35 U.S.C. 102(e)

In accordance with former 35 U.S.C. 157(c), a published SIR will be treated the same as a U.S. patent for all defensive purposes, usable as a reference as of its filing date in the same manner as a U.S. patent.

• A SIR is prior art under all applicable sections of 35 U.S.C. 102 including pre-AIA 35 U.S.C. 102(e).

II.    DEFENSIVE PUBLICATIONS ARE NOT PRIOR ART AS OF THEIR FILING DATE

The Defensive Publication Program, available between April 1968 and May 1985, provided for the voluntary publication of the abstract of the technical disclosure of a pending application under certain conditions.

• A defensive publication is not a patent or an application publication under 35 U.S.C. 122(b); it is a publication. Therefore, it is prior art only as of its publication date.

 

 

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.

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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.

 

 

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