Appendix II: 35 U.S.C. 102 Rejections
This appendix covers the 35 U.S.C. 102 Rejections, both pre-AIA and AIA versions. 35 U.S.C. 102 deals with rejections based on the prior art. There are several sections within this statute and this appendix covers them all.
*Note, you will see several very complex AIA 35 U.S.C. 102 exam questions when you take the Patent Bar exam. Make sure you pass the quizzes from this chapter. You may even want to take these quizzes multiple times.
|
| Workbook Quiz » |   This is the 10.2019 version of the quiz. |
| Short Answer Quiz » |
|
|
The Executive Summaries from the main chapter sections have been copied here for your convenience (subsections are not included here). They will help you remember what each main section of the Guidebook (MPEP) covers as you answer the questions from the quizzes above.
This section covers prior art exceptions under AIA 35 U.S.C. 102(b)(1) and (2). The full text of these statutes is as follows:
(b) Exceptions.—
(1) Disclosures made 1 year or less before the effective filing date of the claimed invention.— A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—
(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
(2) Disclosures appearing in applications and patents.— A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—
(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
Summaries and further details of these statutes are covered in this and subsequent sections.
This section covers the availability of a document as a patent for purposes of rejection under 35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(a), (b), and (d).
For instance, the name "patent" does not alone make a document available as a prior art patent under 35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(a) or (b). In addition, a secret patent is not available as a reference under 35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(a) or (b) until it is available to the public, but it may be available under pre-AIA 35 U.S.C. 102(d) as of its grant date. Both these points are discussed in more detail in this section.
This section discusses domestic and foreign patent applications as prior art. It covers abandoned applications, including provisional applications. Essentially, abandoned applications disclosed to the public can be used as prior art.
In addition, it covers applications which have issued as patents and foreign applications open for public inspection. Lastly, it covers pending U.S. applications.
This section outlines the details of printed publications as prior art. A reference is a printed publication if it is accessible to the public. It also covers electronic publications as prior art. Essentially, electronic publications are considered printed publications provided the publication was accessible to individuals concerned with the art to which the document relates. Regarding printed publications, one need not prove someone actually looked at a publication when that publication is accessible to the public through a library or patent office.
Admissions as prior art are covered in this section. Admissions by the applicant constitute as prior art.
In addition, if the application contains reference in the specification that identifies work done by another as 'prior art', then that subject matter will be treated as admitted prior art. Drafting a claim in Jepson format is taken as an implied admission that the subject matter of the preamble is the prior art work of another.
The mere listing of a reference in an information disclosure statement is not taken as an admission that the reference is prior art against the claims.
This section covers anticipation regarding 35 U.S.C. 102. Essentially, to anticipate a claim, the disclosure must teach every element of the claim.
This section covers pre-AIA 35 U.S.C. 102(a) in detail. It explains that 'known or used' means publicly known or used, that 'in this country' only applies to knowledge or use in the U.S., and that 'by others' means any combination of authors or inventors different than the inventive entity.
This section discusses pre-AIA 35 U.S.C. 102(b). Publications, patents, public uses and sales must occur “more than one year prior to the date of application for patent in the United States” in order to bar a patent under pre-AIA 35 U.S.C. 102(b). The 1-year grace period is extended to the next working day if it would otherwise end on a holiday or weekend. In addition the 1-year time bar is measured from the U.S. filing date.
This section discusses pre-AIA 35 U.S.C. 102(c) which states that a person shall be entitled to a patent unless he has abandoned the invention. Under 35 U.S.C. 102(c), an abandonment must be intentional.
This section also discusses considerations in a delay in making the first application, a delay in reapplying for patent after abandonment of previous patent application, and disclosure without claiming in a prior issued patent. Lastly, the mere lapse of time will not bar a patent.
This section discusses pre-AIA 35 U.S.C. 102(d) which covers how a person shall be entitled to a patent unless the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than twelve months before the filing of the application in the United States.
This section covers pre-AIA 35 U.S.C. 102(e). Pre-AIA 35 U.S.C. 102(e) allows the use of certain international application publications and U.S. patent application publications, and certain U.S. patents as prior art under pre-AIA 35 U.S.C. 102(e) as of their respective U.S. filing dates, including certain international filing dates.
This section includes a discussion on how statutory invention registrations are eligible as prior art under 35 U.S.C. 102 and pre-AIA 35 U.S.C. 102(e). In addition, defensive publications are not prior art as of their filing date. It is only prior art as of its publication date.
This section discusses pre-AIA 35 U.S.C. 102(f) which states that a person shall be entitled to a patent unless he did not himself invent the subject matter sought to be patented. A rejection under 35 U.S.C. 102(f) is proper where it can be shown that an applicant derived an invention from another. Derivation requires complete conception by another and communication to the alleged deriver. The party alleging derivation does not have to prove an actual reduction to practice, derivation of public knowledge, or derivation in this country. In addition, there is a discussion that pre-AIA 35 U.S.C. 102(f) may apply where pre-AIA 35 U.S.C. 102(a) and pre-AIA 35 U.S.C. 102(e) are not available statutory grounds for rejection.
This section covers pre-AIA 35 U.S.C. 102(g). Pre-AIA 35 U.S.C. 102(g) issues such as conception, reduction to practice and diligence, while more commonly applied to interference matters, also arise in other contexts.
This section provides explicit details on AIA 35 U.S.C. 102(a) and (b). It includes a definition of each along with similarities and differences to pre-AIA 35 U.S.C. 102(a), (b), and (e).
This section discusses prior art exceptions under 35 U.S.C. 102(b)(1) to AIA 35 U.S.C. 102(a)(1).
AIA 35 U.S.C. 102(a)(2) sets forth three types of U.S. patent documents that are available as prior art as of the date they were effectively filed with respect to the subject matter relied upon in the document if they name another inventor.
This section covers joint research agreements. AIA 35 U.S.C. 102(c) discusses common ownership under joint research agreements. This portion of the statute provides three conditions that must be satisfied in order for subject matter disclosed which might otherwise qualify as prior art, and a claimed invention, to be treated as having been owned by the same person or subject to an obligation of assignment to the same person in applying common ownership provisions of AIA 35 U.S.C. 102(b)(2)(C) in the context of a joint research agreement. The three conditions are covered in this section.
This section covers the improper naming of inventors in the patent application. Although the AIA eliminated pre-AIA 35 U.S.C. 102(f), the patent laws still require the naming of the actual inventor or joint inventors of the claimed subject matter.
|
| Score Keeper » |  |
All your scores will be reported in the Score Keeper for your convenience. |
