MPEP 2136: Difference between revisions

2136 35 U.S.C. 102(e)[edit | edit source]

35 U.S.C. 102(e) applies in the examination of all applications, and the reexamination of, or other proceedings to contest, all patents, with only one exception: when the potential reference is based on an international application filed prior to November 29, 2000.

The prior art date of a reference under 35 U.S.C. 102(e) may be the international filing date if the international filing date was on or after November 29, 2000, the international application designated the United States, and the international application was published by the World Intellectual Property Organization (WIPO) under the Patent Cooperation Treaty (PCT) Article 21(2) in the English language. See MPEP § 706.02(f)(1) for examination guidelines on the application of 35 U.S.C. 102(e).

As mentioned above, references based on international applications that were filed prior to November 29, 2000 are subject to the former (pre-AIPA) version of 35 U.S.C. 102(e) as set forth below.

I. STATUTORY INVENTION REGISTRATIONS (SIRs) ARE ELIGIBLE AS PRIOR ART UNDER 35 U.S.C. 102(e)[edit | edit source]

In accordance with 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 35 U.S.C. 102(e). See MPEP § 1111.

II. DEFENSIVE PUBLICATIONS ARE NOT PRIOR ART AS OF THEIR FILING DATE[edit | edit source]

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. Ex parte Osmond, 191 USPQ 334 (Bd. App. 1973). See MPEP § 711.06(a) for more information on Defensive Publications.

2136.01 Status of U.S. Application as aReference[edit | edit source]

I. WHEN THERE IS NO COMMON ASSIGNEE OR INVENTOR, A U.S. APPLICATION MUST ISSUE AS A PATENT OR BE PUBLISHED AS A SIR OR AS AN APPLICATION PUBLICATION BEFORE IT IS AVAILABLE AS PRIOR ART UNDER 35 U.S.C. 102(e)[edit | edit source]

In addition to U.S. patents and SIRs, certain U.S. application publications and certain international application publications are also available as prior art under 35 U.S.C. 102(e) as of their effective U.S. filing dates (which will include certain international filing dates). See MPEP § 706.02(a).

II. WHEN THERE IS A COMMON ASSIGNEE OR INVENTOR, A PROVISIONAL 35 U.S.C. 102(e) REJECTION OVER AN EARLIER FILED UNPUBLISHED APPLICATION CAN BE MADE[edit | edit source]

Based on the assumption that an application will ripen into a U.S. patent (or into an application publication), it is permissible to provisionally reject a later application over an earlier filed, and unpublished, application under 35 U.S.C. 102(e) when there is a common assignee or inventor. In addition, a provisional 35 U.S.C. 102(e) rejection may be made if the earlier filed copending U.S. application has been published as redacted (37 CFR 1.217) and the subject matter relied upon in the rejection is not supported in the redacted publication of the patent application.

Such a provisional rejection “serves to put applicant on notice at the earliest possible time of the possible prior art relationship between copending applications” and gives applicant the fullest opportunity to overcome the rejection by amendment or submission of evidence. In addition, since both applications are pending and usually have the same assignee, more options are available to applicant for overcoming the provisional rejection than if the other application were already issued.

Note that provisional rejections over 35 U.S.C. 102(e) are only authorized when there is a common inventor or assignee, otherwise the copending application prior to publication must remain confidential.

For applications filed on or after November 29, 1999 or pending on or after December 10, 2004, a provisional rejection under 35 U.S.C. 103(a) using prior art under 35 U.S.C. 102(e) is not proper if the application contains evidence that the application and the prior art reference were owned by the same person, or subject to an obligation of assignment to the same person, at the time the invention was made.

In addition, certain non-commonly owned references may be disqualified from being applied in a rejection under 35 U.S.C. 103(a) due to the Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act). The CREATE Act amended 35 U.S.C. 103(c) to provide that subject matter developed by another person shall be treated as owned by the same person or subject to an obligation of assignment to the same person for purposes of determining obviousness if certain conditions are met.

35 U.S.C. 103(c), as amended by the CREATE Act, continues to apply only to subject matter which qualifies as prior art under 35 U.S.C. 102(e), (f) or (g), and which is being relied upon in a rejection under 35 U.S.C. 103. It does not apply to or affect subject matter which is applied in a rejection under 35 U.S.C. 102 or a double patenting rejection (see MPEP 804). In addition, if the subject matter qualifies as prior art under any other subsection of 35 U.S.C. 102 (e.g., 35 U.S.C. 102(a) or (b)) it will not be disqualified as prior art under 35 U.S.C. 103(c).

2136.02 Content of the Prior Art Available Against the Claims[edit | edit source]

I. A 35 U.S.C. 102(e) REJECTION MAY RELY ON ANY PART OF THE PATENT OR APPLICATION PUBLICATION DISCLOSURE[edit | edit source]

Under 35 U.S.C. 102(e), the entire disclosure of a U.S. patent, a U.S. patent application publication, or an international application publication having an earlier effective U.S. filing date (which will include certain international filing dates) can be relied on to reject the claims.

II. REFERENCE MUST ITSELF CONTAIN THE SUBJECT MATTER RELIED ON IN THE REJECTION[edit | edit source]

When a U.S. patent, a U.S. patent application publication, or an international application publication is used to reject claims under 35 U.S.C. 102(e), the disclosure relied on in the rejection must be present in the issued patent or application publication. It is the earliest effective U.S. filing date (which will include certain international filing dates) of the U.S. patent or application publication being relied on as the critical reference date and subject matter not included in the patent or application publication itself can only be used when that subject matter becomes public. Portions of the patent application which were canceled are not part of the patent or application publication and thus cannot be relied on in a 35 U.S.C. 102(e) rejection over the issued patent or application publication.

Likewise, subject matter which is disclosed in a parent application, but not included in the child continuation- in-part (CIP) cannot be relied on in a 35 U.S.C. 102(e) rejection over the issued or published CIP.

III. THE SUPREME COURT HAS AUTHORIZED 35 U.S.C. 103 REJECTIONS BASED ON 35 U.S.C. 102(e)[edit | edit source]

U.S. patents may be used as of their filing dates to show that the claimed subject matter is anticipated or obvious. Obviousness can be shown by combining other prior art with the U.S. patent reference in a 35 U.S.C. 103 rejection.

Similarly, certain U.S. application publications and certain international application publications may also be used as of their earliest effective U.S. filing dates (which will include certain international filing dates) to show that the claimed subject matter would have been anticipated or obvious.

See MPEP § 706.02(l)(1) - § 706.02(l)(3) for additional information on rejections under 35 U.S.C. 103 and evidence of common ownership or a joint research agreement.

2136.03 Critical Reference Date[edit | edit source]

I. FOREIGN PRIORITY DATE[edit | edit source]

Reference’s Foreign Priority Date Under 35 U.S.C. 119(a)-(d) and (f) Cannot Be Used as the 35 U.S.C. 102(e) Reference Date

35 U.S.C. 102(e) is explicitly limited to certain references “filed in the United States before the invention thereof by the applicant” (emphasis added). Foreign applications’ filing dates that are claimed (via 35 U.S.C. 119(a) – (d), (f) or 365(a)) in applications, which have been published as U.S. or WIPO application publications or patented in the U.S., may not be used as 35 U.S.C. 102(e) dates for prior art purposes. This includes international filing dates claimed as foreign priority dates under 35 U.S.C. 365(a).Therefore, the foreign priority date of the reference under 35 U.S.C. 119(a)-(d) (f), and 365(a) cannot be used to antedate the application filing date. In contrast, applicant may be able to overcome the 35 U.S.C. 102(e) rejection by proving he or she is entitled to his or her own 35 U.S.C. 119 priority date which is earlier than the reference’s U.S. filing date. In re Hilmer, 359 F.2d 859, 149 USPQ 480 (CCPA 1966) (Hilmer I) (Applicant filed an application with a right of priority to a German application. The examiner rejected the claims over a U.S. patent to Habicht based on its Swiss priority date. The U.S. filing date of Habicht was later than the application’s German priority date. The court held that the reference’s Swiss priority date could not be relied on in a 35 U.S.C. 102(e) rejection. Because the U.S. filing date of Habicht was later than the earliest effective filing date (German priority date) of the application, the rejection was reversed.). See MPEP § 201.15 for information on procedures to be followed in considering applicant's right of priority.

Note that certain international application (PCT) filings are considered to be “filings in the United States” for purposes of applying an application publication as prior art. See MPEP § 706.02(a).

II. INTERNATIONAL (PCT) APPLICATIONS; INTERNATIONAL APPLICATION PUBLICATIONS[edit | edit source]

If the potential reference resulted from, or claimed the benefit of, an international application, the following must be determined:

(A) If the international application meets the following three conditions:

(1) an international filing date on or after November 29, 2000;

(2) designated the United States; and

(3) published under PCT Article 21(2) in English,

the international filing date is a U.S. filing date for prior art purposes under 35 U.S.C. 102(e). If such an international application properly claims benefit to an earlier-filed U.S. or international application, or priority to an earlier-filed U.S. provisional application, apply the reference under 35 U.S.C. 102(e) as of the earlier filing date, assuming all the conditions of 35 U.S.C. 102(e) and 35 U.S.C. 119(e), 120, or 365(c) are met. In addition, the subject matter relied upon in the rejection must be disclosed in the earlier-filed application in compliance with 35 U.S.C. 112, first paragraph, in order to give that subject matter the benefit of the earlier filing date under 35 U.S.C. 102(e). Note, where the earlier application is an international application, the earlier international application must satisfy the same three conditions (i.e., filed on or after November 29, 2000, designated the U.S., and had been published in English under PCT Article 21(2)) for the earlier international filing date to be a U.S. filing date for prior art purposes under 35 U.S.C.102(e).

(B)If the international application was filed on or after November 29, 2000, but did not designate the United States or was not published in English under PCT Article 21(2), do not treat the international filing date as a U.S. filing date. In this situation, do notapply the reference as of its international filing date, its date of completion of the 35 U.S.C. 371(c)(1), (2) and (4) requirements, or any earlier filing date to which such an international application claims benefit or priority. The reference may be applied under 35 U.S.C. 102(a) or (b) as of its publication date, or 35 U.S.C. 102(e) as of any later U.S. filing date of an application that properly claimed the benefit of the international application (if applicable).

(C) If the international application has an international filing date prior to November 29, 2000, apply the reference under the provisions of 35 U.S.C. 102and 374, prior to the AIPA amendments:

(1) For U.S. patents, apply the reference under 35 U.S.C. 102(e) as of the earlier of the date of completion of the requirements of 35 U.S.C. 371(c)(1), (2) and (4) or the filing date of the later-filed U.S. application that claimed the benefit of the international application;

(2) For U.S. application publications and WIPO publications directly resulting from international applications under PCT Article 21(2), never apply these references under 35 U.S.C. 102(e). These references may be applied as of their publication dates under 35 U.S.C. 102(a) or (b);

(3) For U.S. application publications of applications that claim the benefit under 35 U.S.C. 120 or 365(c) of an international application filed prior to November 29, 2000, apply the reference under 35 U.S.C. 102(e) as of the actual filing date of the later-filed U.S. application that claimed the benefit of the international application.

Examiners should be aware that although a publication of, or a U.S. patent issued from, an international application may not have a 35 U.S.C. 102(e) date at all, or may have a 35 U.S.C. 102(e) date that is after the effective filing date of the application being examined (so it is not “prior art”), the corresponding WIPO publication of an international application may have an earlier 35 U.S.C. 102(a) or (b) date.

See MPEP 706.02(f) for examination guidelines and examples.

III. PRIORITY FROM PROVISIONAL APPLICATION UNDER 35 U.S.C. 119(e)[edit | edit source]

The 35 U.S.C. 102(e) critical reference date of a U.S. patent or U.S. application publications and certain international application publications entitled to the benefit of the filing date of a provisional application under 35 U.S.C. 119(e) is the filing date of the provisional application with certain exceptions if the provisional application(s) properly supports the subject matter relied upon to make the rejection in compliance with 35 U.S.C. 112, first paragraph. See MPEP § 706.02(f)(1), examples 5 to 9. Note that international applications which (1) were filed prior to November 29, 2000, or (2) did not designate the U.S., or (3) were not published in English under PCT Article 21(2) by WIPO, may not be used to reach back (bridge) to an earlier filing date through a priority or benefit claim for prior art purposes under 35 U.S.C. 102(e).

IV.PARENT’S FILING DATE WHEN REFERENCE IS A CONTINUATION-IN-PART OF THE PARENT[edit | edit source]

Filing Date of U.S. Parent Application Can Only Be Used as the 35 U.S.C. 102(e) Date If It Supports the Claims of the Issued Child

In order to carry back the 35 U.S.C. 102(e) critical date of the U.S. patent reference to the filing date of a parent application, the U.S. patent reference must have a right of priority to the earlier date under 35 U.S.C. 120 or 365(c) and the parent application must support the invention claimed as required by 35 U.S.C. 112, first paragraph. “For if a patent could not theoretically have issued the day the application was filed, it is not entitled to be used against another as ‘secret prior art’” under 35 U.S.C. 102(e). In re Wertheim, 646 F.2d 527, 537, 209 USPQ 554, 564 (CCPA 1981) (The examiner made a 35 U.S.C. 103 rejection over a U.S. patent to Pfluger. The Pfluger patent (Pfluger IV) was the child of a string of abandoned parent applications (Pfluger I, the first application, Pfluger II and III, both CIPs). Pfluger IV was a continuation of Pfluger III. The court characterized the contents of the applications as follows: Pfluger I - subject matter A, II-AB, III-ABC, IV- ABC. ABC anticipated the claims of the examined application, but the filing date of III was later than the application filing date. So the examiner reached back to “A” in Pfluger I and combined this disclosure with another reference to establish obviousness. The court held that the examiner impermissibly carried over “A” and should have instead determined which of the parent applications contained the subject matter which made Pfluger patentable. Only if B and C were not claimed, or at least not critical to the patentability of Pfluger IV, could the filing date of Pfluger I be used. The court reversed the rejection based on a determination that Pfluger IV was only entitled to the Pfluger III filing date. The added new matter (C) was critical to the claims of the issued patent.). Note that In re Wertheim modified the holding of In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967) as to “carrying back” the subject matter to the parent applications.

See also Ex parte Gilderdale, 1990 Pat. App. LEXIS 25 (Bd. Pat. App. & Inter. Appeal no. 89- 0352) (The examiner made a 35 U.S.C. 102(e) rejection over a U.S. patent to Hernandez. Hernandez was a continuation of a continuation-in-part. Both the parent and grandparent had been abandoned. The parent listed a different inventive entity but supported the subject matter of the child’s claims. The parent was filed on the same day as the examined application and thus no 35 U.S.C. 102(e) rejection could be made based on the parent’s filing date. The Board reversed the rejection, explaining that the Hernandez patent was entitled to the filing date of its parent, as the parent supported the patent claims and 35 U.S.C. 120was satisfied. Under 35 U.S.C. 120, an application can claim the benefit of an earlier filing date even if not all inventors are the same. However, Hernandez was not entitled to the grandparent filing date because the parent and child applications contained new matter as compared to the grandparent.).

Compare Ex parte Ebata, 19 USPQ2d 1952 (Bd. Pat. App. & Inter. 1991) (The claims were directed to a method of administering a salt of lysocellin to animals. A 35 U.S.C. 102(e) rejection was made over Martin. Martin was a continuation of an application which was in turn a continuation-in-part of an abandoned application. The grandparent application disclosed administering a manganese complex of lysocellin to animals. The Board found that “the new matter relates to additional forms of lysocellin which are useful in Martin’s process, i.e., species or embodiments other than the manganese complex. This is far different from adding limitations which are required or necessary for patentability.” Unlike the situation in In re Wertheim, Martin’s invention was patentable as presented in the grandparent application.).

See also MPEP § 706.02(f)(1), examples 2 and 5 to 9.

V. DATE OF CONCEPTION OR REDUCTION TO PRACTICE[edit | edit source]

35 U.S.C. 102(e) Reference Date Is the Filing Date Not Date of Inventor’s Conception or Reduction to Practice

If a reference available under 35 U.S.C. 102(e) discloses, but does not claim the subject matter of the claims being examined or an obvious variant, the reference is not prior art under 35 U.S.C. 102(g). Furthermore, the reference does not qualify as “prior art” under 35 U.S.C. 102 as of a date earlier than its filing date based upon any prior inventive activity that is disclosed in the U.S. patent or U.S. patent application publication in the absence of evidence that the subject matter was actually reduced to practice in this country on an earlier date. See MPEP § 2138. When the cases are not in interference, the effective date of the reference as prior art is its filing date in the United States (which will include certain international filing dates), as stated in 35 U.S.C. 102(e). See MPEP § 706.02(a). The date that the prior art subject matter was conceived or reduced to practice is of no importance when 35 U.S.C. 102(g) is not at issue. Sun Studs, Inc. v. ATA Equip. Leasing, Inc., 872 F.2d 978, 983, 10 USPQ2d 1338, 1342 (Fed. Cir. 1989) (The defendant sought to invalidate patents issued to Mason and Sohn assigned to Sun Studs. The earliest of these patents issued in June 1973. A U.S. patent to Mouat was found which issued in March 1976 and which disclosed the invention of Mason and Sohn. While the patent to Mouat issued after the Mason and Sohn patents, it was filed 7 months earlier than the earliest of the Mason and Sohn patents. Sun Studs submitted affidavits showing conception in 1969 and diligence to the constructive reduction to practice and therefore antedated the patent to Mouat. The defendant sought to show that Mouat conceived the invention in 1966. The court held that conception of the subject matter of the reference only becomes an issue when the claims of the conflicting patents cover inventions which are the same or obvious over one another. When 35 U.S.C. 102(e) applies but not 35 U.S.C. 102(g), the filing date of the prior art patent is the earliest date that can be used to reject or invalidate claims.).

2136.04 Different Inventive Entity; Meaning of "By Another"[edit | edit source]

IF THERE IS ANY DIFFERENCE IN THE INVENTIVE ENTITY, THE REFERENCE IS "BY ANOTHER"[edit | edit source]

"Another" means other than applicants, In re Land, 368 F.2d 866, 151 USPQ 621 (CCPA 1966), 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. Ex parte DesOrmeaux, 25 USPQ2d 2040 (Bd. Pat. App. & Inter. 1992) (The examiner made a 35 U.S.C. 102(e) rejection based on an issued U.S. patent to three inventors. The rejected application was a continuation- in-part of the issued parent with an extra inventor. The Board found that the patent was “by another” and thus could be used in a 35 U.S.C. 102(e)/103 rejection of the application.).

A DIFFERENT INVENTIVE ENTITY IS PRIMA FACIE EVIDENCE THAT THE REFERENCE IS "BY ANOTHER"[edit | edit source]

As stated by the House and Senate reports on the bills enacting section 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, 270 U.S. 390 (1926). 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 35 U.S.C. 102(e). In re Mathews, 408 F.2d 1393, 161 USPQ 276 (CCPA 1969); In re Facius, 408 F.2d 1396, 161 USPQ 294 (CCPA 1969); Ex parte DesOrmeaux, 25 USPQ2d 2040 (Bd. Pat. App. & Inter. 1992). See MPEP § 706.02(b) and § 2136.05 for discussion of methods of overcoming 35 U.S.C. 102(e) rejections.

2136.05 Overcoming a Rejection Under 35 U.S.C. 102(e)[edit | edit source]

A 35 U.S.C. 102(e) REJECTION CAN BE OVERCOME BY ANTEDATING THE FILING DATE OR SHOWING THAT DISCLOSURE RELIED ON IS APPLICANT'S OWN WORK[edit | edit source]

When a prior U.S. patent, U.S. patent application publication, or international application publication is not a statutory bar, a 35 U.S.C. 102(e) rejection can be overcome by antedating the filing date (see MPEP § 2136.03 regarding critical reference date of 35 U.S.C. 102(e) prior art) of the reference by submitting an affidavit or declaration under 37 CFR 1.131 or by submitting an affidavit or declaration under 37 CFR 1.132 establishing that the relevant disclosure is applicant’s own work.

The filing date can also be antedated by applicant's earlier foreign priority application or provisional application if 35 U.S.C. 119 is met and the foreign application or provisional application "supports" (conforms to 35 U.S.C. 112, first paragraph, requirements) all the claims of the U.S. application.

But a prior application which was not copending with the application at issue cannot be used to antedate a reference. A terminal disclaimer also does not overcome a 35 U.S.C. 102(e)rejection.

See MPEP § 706.02(b) for a list of methods which can be used to overcome rejections based on 35 U.S.C. 102(e) rejections. An affidavit or declaration is not appropriate if the reference describes applicant’s own work. In this case, applicant must submit an affidavit or declaration under 37 CFR 1.132.

A 35 U.S.C. 102(e) REJECTION CAN BE OVERCOME BY SHOWING THE REFERENCE IS DESCRIBING APPLICANT’S OWN WORK[edit | edit source]

“The fact that an application has named a different inventive entity than a patent does not necessarily make that patent prior art.” Applied Materials Inc. v. Gemini Research Corp., 835 F.2d 279, 15 USPQ2d 1816 (Fed. Cir. 1988). The issue turns on what the evidence of record shows as to who invented the subject matter. In fact, even if applicant’s work was publicly disclosed prior to his or her application, applicant’s own work may not be used against him or her unless there is a time bar under 35 U.S.C. 102(b). In re DeBaun, 687 F.2d 459, 214 USPQ 933 (CCPA 1982).

Therefore, when the unclaimed subject matter of a reference is applicant’s own invention, applicant may overcome a prima facie case based on the patent, U.S. patent application publication, or international application publication, by showing that the disclosure is a description of applicant’s own previous work. Such a showing can be made by proving that the patentee, or the inventor(s) of the U.S. patent application publication or the international application publication, was associated with applicant (e.g. worked for the same company) and learned of applicant’s invention from applicant. In re Mathews, 408 F.2d 1393, 161 USPQ 276 (CCPA 1969). In the situation where one application is first filed by inventor X and then a later application is filed by X & Y, it must be proven that the joint invention was made first, was thereafter described in the sole applicant’s patent, or was thereafter described in the sole applicant’s U.S. patent application publication or international application publication, and then the joint application was filed. In re Land, 368 F.2d 866, 151 USPQ 621 (CCPA 1966).

In In re Land, separate U.S. patents to Rogers and to Land were used to reject a joint application to Rogers and Land under 35 U.S.C. 102(e)/103. The inventors worked for the same company (Polaroid) and in the same laboratory. All the patents flowed from the same research. In addition, the patent applications were prepared by the same attorneys, were interrelated and contained cross-references to each other. The court affirmed the rejection because (1) the inventive entities of the patents (one to Rogers and one to Land) were different from the inventive entity of the joint application (Rogers and Land) and (2) Land and Rogers brought their knowledge of their individual work with them when they made the joint invention. There was no indication that the portions of the references relied on disclosed anything they did jointly. Neither was there any showing that what they did jointly was done before the filing of the reference patent applications.

See also In re Carreira, 532 F.2d 1356, 189 USPQ 461 (CCPA 1976) (The examiner rejected claims to a joint application to Carreira, Kyrakakis, Solodar, and Labana under 35 U.S.C. 102(e) and 103 in view of a U.S. patent issued to Tulagin and Carreira or a patent issued to Clark. The applicants submitted declarations under 37 CFR 1.132 by Tulagin and Clark in which each declarant stated he was “not the inventor of the use of compounds having a hydroxyl group in a position ortho to an azo linkage.” The court held that these statements were vague and inconclusive because the declarants did not disclose the use of this generic compound but rather species of this generic compound in their patents and it was the species which met the claims. The declaration that each did not invent the use of the generic compound does not establish that Tulagin and Clark did not invent the use of the species.)

APPLICANT NEED NOT SHOW DILIGENCE OR REDUCTION TO PRACTICE WHEN THE SUBJECT MATTER DISCLOSED IN THE REFERENCE IS APPLICANT'S OWN WORK[edit | edit source]

When the reference reflects applicant’s own work, applicant need not prove diligence or reduction to practice to establish that he or she invented the subject matter disclosed in the reference. A showing that the reference disclosure arose from applicant’s work coupled with a showing of conception by the applicant before the filing date of the reference will overcome the 35 U.S.C. 102(e) rejection. The showing can be made by submission of an affidavit by the inventor under 37 CFR 1.132. The other patentees need not submit an affidavit disclaiming inventorship, but, if submitted, a disclaimer by all other patentees should be considered by the examiner. In re DeBaun, 687 F.2d 459, 214 USPQ 933 (CCPA 1982) (Declaration submitted by DeBaun stated that he was the inventor of subject matter disclosed in the U.S. patent reference of DeBaun and Noll. Exhibits were attached to the declaration showing conception and included drawings DeBaun had prepared and given to counsel for purposes of preparing the application which issued as the reference patent. The court held that, even though the evidence was not sufficient to antedate the prior art patent under 37 CFR 1.131, diligence and/or reduction to practice was not required to show DeBaun invented the subject matter. Declarant’s statement that he conceived the invention first was enough to overcome the 35 U.S.C. 102(e) rejection.).

CLAIMING OF INDIVIDUAL ELEMENTS OR SUBCOMBINATIONS IN A COMBINATION CLAIM OF THE REFERENCE DOES NOT ITSELF ESTABLISH THAT THE PATENTEE INVENTED THOSE ELEMENTS[edit | edit source]

The existence of combination claims in a reference is not evidence that the patentee invented the individual elements or subcombinations included if the elements and subcombinations are not separately claimed apart from the combination.