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| claims which properly define the invention. | | claims which properly define the invention. |
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| {{Statute|37 CFR 1.104 Nature of examination.}} | | {{:37 CFR 1.104}} |
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| (c)Rejection of claims.
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| (1)If the invention is not considered patentable, or not
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| considered patentable as claimed, the claims, or those considered
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| unpatentable will be rejected.
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| (2)In rejecting claims for want of novelty or for obviousness,
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| the examiner must cite the best references at his or her command.
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| When a reference is complex or shows or describes
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| inventions other than that claimed by the applicant, the particular
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| part relied on must be designated as nearly as practicable. The
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| pertinence of each reference, if not apparent, must be clearly
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| explained and each rejected claim specified.
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| (3)In rejecting claims the examiner may rely upon
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| admissions by the applicant, or the patent owner in a reexamination
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| proceeding, as to any matter affecting patentability and, insofar
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| as rejections in applications are concerned, may also rely upon
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| facts within his or her knowledge pursuant to paragraph (d)(2) of
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| this section.
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| (4)Subject matter which is developed by another person
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| which qualifies as prior art only under 35 U.S.C. 102(e), (f) or (g)
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| may be used as prior art under 35 U.S.C. 103 against a claimed
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| invention unless the entire rights to the subject matter and the
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| claimed invention were commonly owned by the same person or
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| subject to an obligation of assignment to the same person at the
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| time the claimed invention was made.
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| (i)Subject matter developed by another person and a
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| claimed invention shall be deemed to have been commonly owned
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| by the same person or subject to an obligation of assignment to the
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| same person in any application and in any patent granted on or
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| after December 10, 2004, if:
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| (A)The claimed invention and the subject matter
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| was made by or on behalf of parties to a joint research agreement
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| that was in effect on or before the date the claimed invention was
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| made;
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| (B)The claimed invention was made as a result of
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| activities undertaken within the scope of the joint research agreement;
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| and
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| (C)The application for patent for the claimed
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| invention discloses or is amended to disclose the names of the parties
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| to the joint research agreement.
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| (ii)For purposes of paragraph (c)(4)(i) of this section,
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| the term “joint research agreement” means a written contract,
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| grant, or cooperative agreement entered into by two or more persons
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| or entities for the performance of experimental, developmental,
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| or research work in the field of the claimed invention.
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| (iii)To overcome a rejection under 35 U.S.C. 103(a)
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| based upon subject matter which qualifies as prior art under only
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| one or more of 35 U.S.C. 102(e), (f) or (g) via 35 U.S.C.
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| 103(c)(2), the applicant must provide a statement to the effect that
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| the prior art and the claimed invention were made by or on the
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| behalf of parties to a joint research agreement, within the meaning
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| of 35 U.S.C. 103(c)(3) and paragraph (c)(4)(ii) of this section, that
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| was in effect on or before the date the claimed invention was
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| made, and that the claimed invention was made as a result of
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| activities undertaken within the scope of the joint research agreement.
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| (5)The claims in any original application naming an
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| inventor will be rejected as being precluded by a waiver in a published
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| statutory invention registration naming that inventor if the
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| same subject matter is claimed in the application and the statutory
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| invention registration. The claims in any reissue application naming
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| an inventor will be rejected as being precluded by a waiver in
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| a published statutory invention registration naming that inventor if
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| the reissue application seeks to claim subject matter:
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| (i)Which was not covered by claims issued in the
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| patent prior to the date of publication of the statutory invention
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| registration; and
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| (ii)Which was the same subject matter waived in the
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| statutory invention registration.
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| |}
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| I. UNIFORM APPLICATION OF THE PATENTABILITY | | I. UNIFORM APPLICATION OF THE PATENTABILITY |