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MPEP 2129: Difference between revisions

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I. ADMISSIONS BY APPLICANT CONSTI-
'''I. ADMISSIONS BY APPLICANT CONSTITUTE PRIOR ART'''
TUTE PRIOR ART


A statement by an applicant during prosecution  
A statement by an applicant during prosecution  
identifying the work of another as “prior art” is an  
identifying the work of another as "prior art" is an  
admission that that work is available as prior art  
admission that that work is available as prior art  
against the claims, regardless of whether the admitted  
against the claims, regardless of whether the admitted  
prior art would otherwise qualify as prior art under the  
prior art would otherwise qualify as prior art under the  
statutory categories of 35 U.S.C. 102. Riverwood Int’l
statutory categories of 35 U.S.C. 102.  
Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354, 66
 
USPQ2d 1331, 1337 (Fed Cir. 2003). However, even  
However, even if labeled as "prior art," the work of the same inventive  
if labeled as “prior art,” the work of the same inventive  
entity may not be considered prior art against the  
entity may not be considered prior art against the  
claims unless it falls under one of the statutory categories.  
claims unless it falls under one of the statutory categories.  
Id.; see also Reading & Bates Construction
Co. v. Baker Energy Resources Corp., 748 F.2d 645,
650, 223 USPQ 1168, 1172 (Fed. Cir. 1984)
(“[W]here the inventor continues to improve upon his
own work product, his foundational work product
should not, without a statutory basis, be treated as
prior art solely because he admits knowledge of his
own work. It is common sense that an inventor,
regardless of an admission, has knowledge of his own
work.”).


Consequently, the examiner must determine
'''II.DISCUSSION OF PRIOR ART IN SPECIFICATION'''
whether the subject matter identified as “prior art” is
applicant’s own work, or the work of another. In the
absence of another credible explanation, examiners
should treat such subject matter as the work of
another.
 
II.DISCUSSION OF PRIOR ART IN SPECI-
FICATION


Where the specification identifies work done by  
Where the specification identifies work done by  
another as “prior art,” the subject matter so identified  
another as “prior art,” the subject matter so identified  
is treated as admitted prior art. In re Nomiya, 509 F.2d
is treated as admitted prior art.
566, 571, 184 USPQ 607, 611 (CCPA 1975) (holding
applicant’s labeling of two figures in the application
drawings as “prior art” to be an admission that what
was pictured was prior art relative to applicant’s
improvement).


III.JEPSON CLAIMS
'''III.JEPSON CLAIMS'''


Drafting a claim in Jepson format (i.e., the format  
Drafting a claim in Jepson format (i.e., the format  
described in 37 CFR 1.75(e); see MPEP § 608.01(m))  
described in [[37 C.F.R.#§ 1.75 Claim(s).|37 CFR 1.75(e)]]; see [[MPEP 608#608.01(m) Form of Claims|MPEP § 608.01(m)]]) is taken as an implied admission that the subject mater  
is taken as an implied admission that the subject mater  
of the preamble is the prior art work of another.
of the preamble is the prior art work of another. In re
 
Fout, 675 F.2d 297, 301, 213 USPQ 532, 534 (CCPA
However, this implication may be  
1982) (holding preamble of Jepson-type claim to be
admitted prior art where applicant’s specification
credited another as the inventor of the subject matter
of the preamble). However, this implication may be  
overcome where applicant gives another credible reason  
overcome where applicant gives another credible reason  
for drafting the claim in Jepson format. In re Ehrreich,
for drafting the claim in Jepson format.  
590 F.2d 902, 909-910, 200 USPQ 504, 510
 
(CCPA 1979) (holding preamble not to be admitted
prior art where applicant explained that the Jepsonformat was used to avoid a double patenting rejection
in a co-pending application and the examiner cited no
art showing the subject matter of the preamble).
Moreover, where the preamble of a Jepson claim  
Moreover, where the preamble of a Jepson claim  
describes applicant’s own work, such may not be used  
describes applicant’s own work, such may not be used  
against the claims. Reading & Bates Construction Co.
against the claims.
v. Baker Energy Resources Corp., 748 F.2d 645, 650,
223 USPQ 1168, 1172 (Fed. Cir. 1984); Ehrreich, 590
F.2d at 909-910, 200 USPQ at 510.


IV.INFORMATION DISCLOSURE STATEMENT  
'''IV.INFORMATION DISCLOSURE STATEMENT (IDS)'''
(IDS)


Mere listing of a reference in an information disclosure  
Mere listing of a reference in an information disclosure  
statement is not taken as an admission that the  
statement is not taken as an admission that the  
reference is prior art against the claims. Riverwood
reference is prior art against the claims.
Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354-
<noinclude>{{MPEP Section|2128|2100|2131}}</noinclude>
55, 66 USPQ2d 1331, 1337-38 (Fed Cir. 2003) (listing
of applicant’s own prior patent in an IDS does not
make it available as prior art absent a statutory basis);
see also 37 CFR 1.97(h) (“The filing of an information
disclosure statement shall not be construed to be
an admission that the information cited in the statement
is, or is considered to be, material to patentability
as defined in § 1.56(b).”).

Revision as of 14:19, May 25, 2011

← MPEP 2128 ↑ MPEP 2100 MPEP 2131 →


← MPEP 2128 ↑ MPEP 2100 MPEP 2131 →


2129 Admissions as Prior Art

I. ADMISSIONS BY APPLICANT CONSTITUTE PRIOR ART

A statement by an applicant during prosecution identifying the work of another as "prior art" is an admission that that work is available as prior art against the claims, regardless of whether the admitted prior art would otherwise qualify as prior art under the statutory categories of 35 U.S.C. 102.

However, even if labeled as "prior art," the work of the same inventive entity may not be considered prior art against the claims unless it falls under one of the statutory categories.

II.DISCUSSION OF PRIOR ART IN SPECIFICATION

Where the specification identifies work done by another as “prior art,” the subject matter so identified is treated as admitted prior art.

III.JEPSON CLAIMS

Drafting a claim in Jepson format (i.e., the format described in 37 CFR 1.75(e); see MPEP § 608.01(m)) is taken as an implied admission that the subject mater of the preamble is the prior art work of another.

However, this implication may be overcome where applicant gives another credible reason for drafting the claim in Jepson format.

Moreover, where the preamble of a Jepson claim describes applicant’s own work, such may not be used against the claims.

IV.INFORMATION DISCLOSURE STATEMENT (IDS)

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.

← MPEP 2128 ↑ MPEP 2100 MPEP 2131 →
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