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Editing MPEP 706
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The distinction between rejections based on | The distinction between rejections based on | ||
35 U.S.C. 102 and those based on 35 U.S.C. | 35 U.S.C. 102 and those based on 35 U.S.C. 103should be kept in mind. Under the former, the claim is | ||
anticipated by the reference. No question of obviousness | anticipated by the reference. No question of obviousness | ||
is present. In other words, for anticipation under | is present. In other words, for anticipation under | ||
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of publication falls on a Saturday, Sunday or Federal | of publication falls on a Saturday, Sunday or Federal | ||
holiday, the publication is not a statutory bar under | holiday, the publication is not a statutory bar under | ||
35 U.S.C. 102(b) if the application was filed on the | 35 | ||
next succeeding business day. | U.S.C. 102(b) if the application was filed on the | ||
next succeeding business day. Ex parte Olah, | |||
131 | |||
USPQ 41 (Bd. App. 1960) (The Board in Olahheld that 35 | |||
U.S.C. 21(b) is applicable to the filing of | |||
an original application for patent and that applicant’s | |||
own activity will not bar a patent if the 1-year grace | |||
period expires on a Saturday, Sunday, or Federal holiday | |||
and the application’s U.S. filing date is the next | |||
succeeding business day.) Despite changes to 37 CFR | |||
1.6(a)(2) and 1.10 which permit the USPTO to accord | |||
a filing date to an application as of the date of deposit | |||
as “Express Mail” with the U.S. Postal Service in | |||
accordance with 37 CFR 1.10 (e.g., a Saturday filing | |||
date), the rule changes do not affect applicant’s concurrent | |||
right to defer the filing of an application until | |||
the next business day when the last day for “taking | |||
any action” falls on a Saturday, Sunday, or Federal | |||
holiday (e.g., the last day of the 1-year grace period | |||
falls on a Saturday). | |||
B.35 U.S.C. 102(e) | B.35 U.S.C. 102(e) | ||
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guidelines on the application of 35 U.S.C. 102(e). | guidelines on the application of 35 U.S.C. 102(e). | ||
35 U.S.C. 102. Conditions for patentability; novelty and | |||
loss of right to patent. | |||
(e)the invention was described in — (1) an application for | (e)the invention was described in — (1) an application for | ||
patent, published under section 122(b), by another filed in the | patent, published under section 122(b), by another filed in the | ||
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published under Article 21(2) of such treaty in the English language; | published under Article 21(2) of such treaty in the English language; | ||
or | or | ||
As mentioned above, references based on international | As mentioned above, references based on international | ||
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of 35 U.S.C. 102(e) as set forth below. | of 35 U.S.C. 102(e) as set forth below. | ||
Former 35 U.S.C. 102. Conditions for patentability; | |||
novelty and loss of right to patent. | |||
A person shall be entitled to a patent unless- | A person shall be entitled to a patent unless- | ||
(e)the invention was described in a patent granted on an | (e)the invention was described in a patent granted on an | ||
application for patent by another filed in the United States before | application for patent by another filed in the United States before | ||
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paragraphs (1), (2), and (4) of section 371(c) of this title before the | paragraphs (1), (2), and (4) of section 371(c) of this title before the | ||
invention thereof by the applicant for patent. | invention thereof by the applicant for patent. | ||
Revised 35 U.S.C. 102(e) has two separate clauses, | Revised 35 U.S.C. 102(e) has two separate clauses, | ||
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to fulfillment of the 35 | to fulfillment of the 35 | ||
U.S.C. 371(c)(1), (2) and (4) | U.S.C. 371(c)(1), (2) and (4) | ||
requirements. As a result, United States | requirements. As a result, United States patentsissued directly from international applications filed on | ||
or after November 29, 2000 will no longer be available | or after November 29, 2000 will no longer be available | ||
as prior art under 35 U.S.C. 102(e) as of the date | as prior art under 35 U.S.C. 102(e) as of the date | ||
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may only be used as prior art based on the provisions | may only be used as prior art based on the provisions | ||
of 35 U.S.C. 102(e) in effect before November 29, | of 35 U.S.C. 102(e) in effect before November 29, | ||
2000. Thus, the 35 U.S.C. 102(e) date of such a prior | 2000. Thus, the 35 U.S.C. 102(e) date of such a prior | ||
art patent is the earliest of the date of compliance with | art patent is the earliest of the date of compliance with | ||
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be applicant’s own work. | be applicant’s own work. | ||
706.02(b)Overcoming a 35 U.S.C. 102Rejection Based on a PrintedPublication or Patent [R-5] | |||
A rejection based on 35 U.S.C. 102(b) can be overcome | A rejection based on 35 U.S.C. 102(b) can be overcome | ||
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not by | not by | ||
“another.” See MPEP § 715.01(a), § 715.01(c), | “another.” See MPEP § 715.01(a), § 715.01(c), | ||
and § 716.10; | and § | ||
716.10; | |||
(D)Filing an affidavit or declaration under | (D)Filing an affidavit or declaration under | ||
37 CFR 1.131 showing prior invention, if the reference | 37 | ||
CFR 1.131 showing prior invention, if the reference | |||
is not a U.S. patent or a U.S. patent application | is not a U.S. patent or a U.S. patent application | ||
publication claiming the same patentable invention as | publication claiming the same patentable invention as | ||
defined in 37 | defined in 37 | ||
CFR 41.203(a). See MPEP § 715 for | CFR 41.203(a). See MPEP § | ||
715 for | |||
more information on 37 CFR 1.131 affidavits. When | more information on 37 CFR 1.131 affidavits. When | ||
the claims of the reference U.S. patent or U.S. patent | the claims of the reference U.S. patent or U.S. patent | ||
application publication and the application are | application publication and the application are | ||
directed to the same invention or are obvious variants, | directed to the same invention or are obvious variants, | ||
an affidavit or declaration under 37 | an affidavit or declaration under 37 | ||
CFR 1.131 is not | CFR 1.131 is not | ||
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enablement and written description requirements of | enablement and written description requirements of | ||
35 U.S.C. 112, first paragraph. See MPEP § 201.11 | 35 U.S.C. 112, first paragraph. See MPEP § 201.11 | ||
and § 706.02. | and § | ||
706.02. | |||
A rejection based on 35 U.S.C. 102(a) can be overcome | A rejection based on 35 U.S.C. 102(a) can be overcome | ||
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CFR 1.132 showing that the reference invention is | CFR 1.132 showing that the reference invention is | ||
not by “another.” See MPEP § 715.01(a), § 715.01(c), | not by “another.” See MPEP § 715.01(a), § 715.01(c), | ||
and § 716.10; | and § | ||
716.10; | |||
(E)Perfecting a claim to priority under 35 U.S.C. | (E)Perfecting a claim to priority under 35 U.S.C. | ||
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above. | above. | ||
706.02(c)Rejections Under 35 U.S.C. | |||
102(a) or (b); Knowledge by | |||
Others or Public Use or Sale | |||
An applicant may make an admission, or submit | An applicant may make an admission, or submit | ||
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knowledge that the invention was sold by applicant | knowledge that the invention was sold by applicant | ||
or known by others in this country. The language | or known by others in this country. The language | ||
“in this country” means in the United States only and | |||
does not include other WTO or NAFTA member | does not include other WTO or NAFTA member | ||
countries. In these cases the examiner must determine | countries. In these cases the examiner must determine | ||
if 35 U.S.C. 102(a) or 102(b) applies. See MPEP | if 35 U.S.C. 102(a) or 102(b) applies. See MPEP | ||
§ 2133.03 for a discussion of case law treating the | § | ||
2133.03 for a discussion of case law treating the | |||
“public use” and “on sale” statutory bars. | |||
If the activity is by an entity other than the inventors | If the activity is by an entity other than the inventors | ||
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occurred more than 1 year prior to the effective filing | occurred more than 1 year prior to the effective filing | ||
date of the application. See MPEP § 2133.03 for a dis | date of the application. See MPEP § 2133.03 for a dis | ||
cussion of | |||
35 U.S.C. 102(b). | |||
cussion of “on sale” and “public use” bars under | |||
35 | |||
U.S.C. 102(b). | |||
Note that as an aid to resolving public use or on sale | Note that as an aid to resolving public use or on sale | ||
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necessary for the examiner to render a decision on | necessary for the examiner to render a decision on | ||
patentability. The examiner may consider making a | patentability. The examiner may consider making a | ||
requirement for information under 37 CFR 1. | requirement for information under 37 CFR 1.105where the evidence of record indicates reasonable | ||
necessity. See MPEP § 704.10 et seq. | necessity. See MPEP § 704.10 et seq. | ||