MPEP 706: Difference between revisions

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==706 Rejection of Claims==
<noinclude>{{MPEP Section|705|700|707}}</noinclude>
 
==[[MPEP 706|706 Rejection of Claims]]==
 
<noinclude><div class="noautonum">__TOC__</div></noinclude>


After the application has been read and the claimed  
After the application has been read and the claimed  
Line 30: Line 34:
claims which properly define the invention.
claims which properly define the invention.


{{:37 CFR 1.104}}
{{Statute|37 CFR 1.104 Nature of examination.}}
{{Ellipsis}}
(c)Rejection of claims.
 
(1)If the invention is not considered patentable, or not
considered patentable as claimed, the claims, or those considered
unpatentable will be rejected.


I.UNIFORM APPLICATION OF THE PATENTABILITY
(2)In rejecting claims for want of novelty or for obviousness,
STANDARD
the examiner must cite the best references at his or her command.  
When a reference is complex or shows or describes
inventions other than that claimed by the applicant, the particular
part relied on must be designated as nearly as practicable. The
pertinence of each reference, if not apparent, must be clearly
explained and each rejected claim specified.


The standards of patentability applied in the examination
(3)In rejecting claims the examiner may rely upon
of claims must be the same throughout the  
admissions by the applicant, or the patent owner in a reexamination
Office. In every art, whether it be considered “complex,”
proceeding, as to any matter affecting patentability and, insofar
“newly developed,” “crowded,” or “competitive,”
as rejections in applications are concerned, may also rely upon
all of the requirements for patentability (e.g.,
facts within his or her knowledge pursuant to paragraph (d)(2) of
novelty, usefulness and unobviousness, as provided in  
this section.
35 U.S.C. 101, 102, and 103) must be met before a
claim is allowed. The mere fact that a claim recites in
detail all of the features of an invention (i.e., is a “picture”
claim) is never, in itself, justification for the
allowance of such a claim.  


An application should not be allowed, unless and
(4)Subject matter which is developed by another person
until issues pertinent to patentability have been raised
which qualifies as prior art only under 35 U.S.C. 102(e), (f) or (g)
and resolved in the course of examination and prosecution,  
may be used as prior art under 35 U.S.C. 103 against a claimed
since otherwise the resultant patent would not
invention unless the entire rights to the subject matter and the  
justify the statutory presumption of validity (35  
claimed invention were commonly owned by the same person or
U.S.C. 282), nor would it “strictly adhere” to the  
subject to an obligation of assignment to the same person at the  
requirements laid down by Congress in the 1952 Act
time the claimed invention was made.
as interpreted by the Supreme Court. The standard to  
be applied in all cases is the “preponderance of the  
evidence” test. In other words, an examiner should
reject a claim if, in view of the prior art and evidence
of record, it is more likely than not that the claim is
unpatentable.  


II.DEFECTS IN FORM OR OMISSION OF A
(i)Subject matter developed by another person and a
LIMITATION; CLAIMS OTHERWISE ALLOWABLE
claimed invention shall be deemed to have been commonly owned
by the same person or subject to an obligation of assignment to the
same person in any application and in any patent granted on or
after December 10, 2004, if:


(A)The claimed invention and the subject matter
was made by or on behalf of parties to a joint research agreement
that was in effect on or before the date the claimed invention was
made;


When an application discloses patentable subject
(B)The claimed invention was made as a result of
matter and it is apparent from the claims and the  
activities undertaken within the scope of the joint research agreement;
applicant's arguments that the claims are intended to
and
be directed to such patentable subject matter, but the  
 
claims in their present form cannot be allowed
(C)The application for patent for the claimed
because of defects in form or omission of a limitation,  
invention discloses or is amended to disclose the names of the parties
the examiner should not stop with a bare objection or  
to the joint research agreement.
rejection of the claims. The examiner’s action should
 
be constructive in nature and when possible should
(ii)For purposes of paragraph (c)(4)(i) of this section,  
offer a definite suggestion for correction.
the term “joint research agreement” means a written contract,
grant, or cooperative agreement entered into by two or more persons
or entities for the performance of experimental, developmental,
or research work in the field of the claimed invention.
 
(iii)To overcome a rejection under 35 U.S.C. 103(a)
based upon subject matter which qualifies as prior art under only
one or more of 35 U.S.C. 102(e), (f) or (g) via 35 U.S.C.
103(c)(2), the applicant must provide a statement to the effect that
the prior art and the claimed invention were made by or on the
behalf of parties to a joint research agreement, within the meaning
of 35 U.S.C. 103(c)(3) and paragraph (c)(4)(ii) of this section, that
was in effect on or before the date the claimed invention was
made, and that the claimed invention was made as a result of
activities undertaken within the scope of the joint research agreement.


III.PATENTABLE SUBJECT MATTER DISCLOSED
(5)The claims in any original application naming an
BUT NOT CLAIMED
inventor will be rejected as being precluded by a waiver in a published
statutory invention registration naming that inventor if the
same subject matter is claimed in the application and the statutory
invention registration. The claims in any reissue application naming
an inventor will be rejected as being precluded by a waiver in
a published statutory invention registration naming that inventor if
the reissue application seeks to claim subject matter:


If the examiner is satisfied after the search has been
(i)Which was not covered by claims issued in the  
completed that patentable subject matter has been disclosed
patent prior to the date of publication of the statutory invention  
and the record indicates that the applicant
registration; and
intends to claim such subject matter, he or she may
note in the Office action that certain aspects or features
of the patentable invention have not been
claimed and that if properly claimed such claims may
be given favorable consideration.


IV.RECONSIDERATION OF CLAIMS AFTER
(ii)Which was the same subject matter waived in the
REPLY BY APPLICANT
statutory invention registration.
|}


{{:37 CFR 1.112}}
I. UNIFORM APPLICATION OF THE PATENTABILITY
STANDARD


37 CFR 1.112 provides for the reconsideration and
The standards of patentability applied in the examination  
continued examination of an application after reply by
of claims must be the same throughout the  
the applicant, and for the reconsideration and continued
Office. In every art, whether it be considered "complex,"
examination of a reexamination proceeding after
"newly developed," "crowded," or "competitive,"
a response by the patent owner. If claims are rejected,
all of the requirements for patentability (e.g.,  
or objections or requirements are made, the applicant
novelty, usefulness and unobviousness, as provided in  
or patent owner will be notified in the same manner as
35 U.S.C. 101, 102, and 103) must be met before a  
notification was provided after the first examination.
claim is allowed. The mere fact that a claim recites in  
Applicant or patent owner may reply to such Office  
detail all of the features of an invention (i.e., is a "picture"
action (with or without amendment) in the same manner
claim) is never, in itself, justification for the
provided in 37 CFR 1.111, or 37 CFR 1.945 for an
allowance of such a claim.  
inter partes reexamination, unless such Office action
indicates that it is made final (37 CFR 1.113), or an
appeal under 37 CFR 41.31 has been taken (37 CFR
1.116), or such Office action indicates in an inter
partes reexamination that it is an action closing prosecution
(37 CFR 1.949) or a right of appeal notice (37
CFR 1.953). Once an appeal has been taken in an
application or in an ex parte reexamination proceeding,
any amendment (filed prior to an appeal brief) is
subject to the provisions of 37 CFR 1.116(b) and (c),  
even if the appeal is in reply to a non-final Office
action. See 37 CFR 41.33(b) for amendments filed
with or after the filing of an appeal brief.


V.REJECTIONS IN STATUTORY INVENTION
An application should not be allowed, unless and
REGISTRATIONS
until issues pertinent to patentability have been raised
and resolved in the course of examination and prosecution,
since otherwise the resultant patent would not
justify the statutory presumption of validity (35
U.S.C. 282), nor would it “strictly adhere” to the
requirements laid down by Congress in the 1952 Act
as interpreted by the Supreme Court. The standard to
be applied in all cases is the “preponderance of the
evidence” test. In other words, an examiner should
reject a claim if, in view of the prior art and evidence
of record, it is more likely than not that the claim is
unpatentable.


See MPEP Chapter 1100 for rejection of claims in
II. DEFECTS IN FORM OR OMISSION OF A
an application for a Statutory Invention Registration.
LIMITATION; CLAIMS OTHERWISE ALLOWABLE


===706.01 Contrasted With Objections===
When an application discloses patentable subject
 
matter and it is apparent from the claims and the  
The refusal to grant claims because the subject matter
applicant's arguments that the claims are intended to
as claimed is considered unpatentable is called a
be directed to such patentable subject matter, but the
“rejection.” The term “rejected” must be applied to  
claims in their present form cannot be allowed
such claims in the examiner’s action. If the form of
because of defects in form or omission of a limitation,  
the claim (as distinguished from its substance) is
the examiner should not stop with a bare objection or
improper, an “objection” is made. An example of a
rejection of the claims. The examiner’s action should
matter of form as to which objection is made is dependency
be constructive in nature and when possible should
of a claim on a rejected claim, if the dependent
offer a definite suggestion for correction.
claim is otherwise allowable. See MPEP § 608.01(n).
The practical difference between a rejection and an
objection is that a rejection, involving the merits of  
the claim, is subject to review by the Board of Patent
Appeals and Interferences, while an objection, if persisted,
may be reviewed only by way of petition to the
Director of the USPTO.  


Similarly, the Board will not hear or decide issues
III.PATENTABLE SUBJECT MATTER DISCLOSED
pertaining to objections and formal matters which are
BUT NOT CLAIMED
not properly before the Board. These formal matters
should not be combined in appeals to the Board.


===706.02 Rejection on Prior Art===
If the examiner is satisfied after the search has been
completed that patentable subject matter has been disclosed
and the record indicates that the applicant
intends to claim such subject matter, he or she may
note in the Office action that certain aspects or features
of the patentable invention have not been
claimed and that if properly claimed such claims may
be given favorable consideration.


{{:35 U.S.C. 102}}
IV.RECONSIDERATION OF CLAIMS AFTER
REPLY BY APPLICANT


{{:35 U.S.C. 103}}
{{Statute|37 CFR 1.112 Reconsideration before final action.}}
After reply by applicant or patent owner (§ 1.111 or § 1.945) to
a non-final action and any comments by an inter partes reexamination
requester (§ 1.947), the application or the patent under
reexamination will be reconsidered and again examined. The
applicant, or in the case of a reexamination proceeding the patent
owner and any third party requester, will be notified if claims are
rejected, objections or requirements made, or decisions favorable
to patentability are made, in the same manner as after the first
examination (§ 1.104). Applicant or patent owner may reply to
such Office action in the same manner provided in § 1.111 or §
1.945, with or without amendment, unless such Office action indicates
that it is made final (§ 1.113) or an appeal (§ 41.31 of this
title) has been taken (§ 1.116), or in an inter partes reexamination,
that it is an action closing prosecution (§ 1.949) or a right of
appeal notice (§ 1.953).
|}


By far the most frequent ground of rejection is on
37 CFR 1.112 provides for the reconsideration and
the ground of unpatentability in view of the prior art,  
continued examination of an application after reply by
that is, that the claimed subject matter is either not
the applicant, and for the reconsideration and continued
novel under 35 U.S.C. 102, or else it is obvious under
examination of a reexamination proceeding after
35 U.S.C. 103. The language to be used in rejecting
a response by the patent owner. If claims are rejected,
claims should be unequivocal. See MPEP
or objections or requirements are made, the applicant
§ 707.07(d).
or patent owner will be notified in the same manner as
notification was provided after the first examination.
Applicant or patent owner may reply to such Office
action (with or without amendment) in the same manner
provided in 37 CFR 1.111, or 37 CFR 1.945 for an
inter partes reexamination, unless such Office action
indicates that it is made final (37 CFR 1.113), or an
appeal under 37 CFR 41.31 has been taken (37 CFR
1.116), or such Office action indicates in an inter
partes reexamination that it is an action closing prosecution
(37 CFR 1.949) or a right of appeal notice (37
CFR 1.953). Once an appeal has been taken in an
application or in an ex parte reexamination proceeding,
any amendment (filed prior to an appeal brief) is
subject to the provisions of 37 CFR 1.116(b) and (c),
even if the appeal is in reply to a non-final Office
action. See 37 CFR 41.33(b) for amendments filed
with or after the filing of an appeal brief.


I.CHOICE OF PRIOR ART; BEST AVAILABLE
V. REJECTIONS IN STATUTORY INVENTION
REGISTRATIONS


Prior art rejections should ordinarily be confined
See [[MPEP 1100]] for rejection of claims in
strictly to the best available art. Exceptions may properly
an application for a Statutory Invention Registration.
be made, for example, where:


(A)the propriety of a 35 U.S.C. 102 or 103 rejection
===706.01 Contrasted With Objections===
depends on a particular interpretation of a claim;


(B)a claim is met only in terms by a reference
The refusal to grant claims because the subject matter
which does not disclose the inventive concept
as claimed is considered unpatentable is called a
involved; or
“rejection.” The term “rejected” must be applied to
 
such claims in the examiner’s action. If the form of
(C)the most pertinent reference seems likely to  
the claim (as distinguished from its substance) is  
be antedated by a 37 CFR 1.131 affidavit or declaration.  
improper, an “objection” is made. An example of a  
 
matter of form as to which objection is made is dependency
Such rejections should be backed up by the best
of a claim on a rejected claim, if the dependent
other art rejections available. Merely cumulative
claim is otherwise allowable. See MPEP § 608.01(n).
rejections, i.e., those which would clearly fall if the  
The practical difference between a rejection and an
primary rejection were not sustained, should be
objection is that a rejection, involving the merits of
avoided.
the claim, is subject to review by the Board of Patent
Appeals and Interferences, while an objection, if persisted,
may be reviewed only by way of petition to the
Director of the USPTO.  
 
Similarly, the Board will not hear or decide issues
pertaining to objections and formal matters which are
not properly before the Board. These formal matters
should not be combined in appeals to the Board.
 
===706.02 Rejection on Prior Art===
 
{{Statute|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)the invention was known or used by others in this country,  
or patented or described in a printed publication in this or a
foreign country, before the invention thereof by the applicant for
patent, or


See also MPEP § 707.05.
(b)the invention was patented or described in a printed publication
in this or a foreign country or in public use or on sale in
this country, more than one year prior to the date of the application
for patent in the United States, or


II.RELIANCE UPON ABSTRACTS AND
(c)he has abandoned the invention, or
FOREIGN LANGUAGE DOCUMENTS IN
SUPPORT OF A REJECTION


Prior art uncovered in searching the claimed subject
(d)the invention was first patented or caused to be patented,  
matter of a patent application often includes English
or was the subject of an inventor’s certificate, by the applicant or
language abstracts of underlying documents, such as
his legal representatives or assigns in a foreign country prior to the  
technical literature or foreign patent documents which
date of the application for patent in this country on an application
may not be in the English language. When an abstract
for patent or inventor’s certificate filed more than twelve months
is used to support a rejection, the evidence relied upon
before the filing of the application in the United States, or
is the facts contained in the abstract, not additional
facts that may be contained in the underlying full text
document. Citation of and reliance upon an abstract
without citation of and reliance upon the underlying
scientific document is generally inappropriate where
both the abstract and the underlying document are
prior art. See Ex parte Jones, 62 USPQ2d 1206, 1208
(Bd. Pat. App. & Inter. 2001) (unpublished).


To determine whether both the abstract and the  
(e)the invention was described in — (1) an application for
underlying document are prior art, a copy of the
patent, published under section 122(b), by another filed in the  
underlying document must be obtained and analyzed.
United States before the invention by the applicant for patent or  
If the document is in a language other than English
(2) a patent granted on an application for patent by another filed in
and the examiner seeks to rely on that document, a
the United States before the invention by the applicant for patent,  
translation must be obtained so that the record is clear
except that an international application filed under the treaty
as to the precise facts the examiner is relying upon
defined in section 351(a) shall have the effects for the purposes of
in support of the rejection. The record must also
this subsection of an application filed in the United States only if
be clear as to whether the examiner is relying upon
the international application designated the United States and was
the abstract or the full text document to support a  
published under Article 21(2) of such treaty in the English language;
rejection. The rationale for this is several-fold. It is
or
not uncommon for a full text document to reveal that
the document fully anticipates an invention that the  
abstract renders obvious at best. The converse may
also be true, that the full text document will include
teachings away from the invention that will preclude
an obviousness rejection under 35 U.S.C. 103, when
the abstract alone appears to support the rejection. An
abstract can have a different effective publication date
than the full text document. Because all patentability
determinations are fact dependent, obtaining and considering
full text documents at the earliest practicable
time in the examination process will yield the fullest
available set of facts upon which to determine patentability,
thereby improving quality and reducing pendency.


When both the abstract and the underlying document
(f)he did not himself invent the subject matter sought to be  
qualify as prior art, the underlying document
patented, or
should normally be used to support a rejection. In limited
circumstances, it may be appropriate for the
examiner to make a rejection in a non-final Office
action based in whole or in part on the abstract only
without relying on the full text document. In such circumstances,
the full text document and a translation
(if not in English) may be supplied in the next Office
action. Whether the next Office action may be made
final is governed by MPEP § 706.07(a).


III. REEXAMINATION
(g)(1)during the course of an interference conducted under
 
section 135 or section 291, another inventor involved therein
For scope of rejections in ex parte reexamination
establishes, to the extent permitted in section 104, that before such
proceedings, see MPEP § 2258 and in inter partesreexamination, see MPEP § 2658.  
person’s invention thereof the invention was made by such other
inventor and not abandoned, suppressed, or concealed, or (2)
before such person’s invention thereof, the invention was made in
this country by another inventor who had not abandoned, suppressed,
or concealed it. In determining priority of invention
under this subsection, there shall be considered not only the
respective dates of conception and reduction to practice of the
invention, but also the reasonable diligence of one who was first
to conceive and last to reduce to practice, from a time prior to conception
by the other.
|}


IV.DISTINCTION BETWEEN 35 U.S.C. 102
AND 103


The distinction between rejections based on
{{Statute|35 U.S.C. 103. Conditions for patentability; non-obvious subject matter.}}
35 U.S.C. 102 and those based on 35 U.S.C. 103should be kept in mind. Under the former, the claim is  
(a)A patent may not be obtained though the invention is not
anticipated by the reference. No question of obviousness
identically disclosed or described as set forth in section 102 of  
is present. In other words, for anticipation under
this
35 U.S.C. 102, the reference must teach every aspect
title, if the differences between the subject matter sought to be  
of the claimed invention either explicitly or impliedly.
patented and the prior art are such that the subject matter as a
Any feature not directly taught must be inherently
whole would have been obvious at the time the invention was
present. Whereas, in a rejection based on 35
made to a person having ordinary skill in the art to which said subject
U.S.C. 103, the reference teachings must somehow be modified
matter pertains. Patentability shall not be negatived by the  
in order to meet the claims. The modification
manner in which the invention was made.
must be one which would have been obvious to one of
ordinary skill in the art at the time the invention was  
made. See MPEP § 2131 - § 2146 for guidance on patentability
determinations under 35 U.S.C. 102 and
103.


V.DETERMINING THE EFFECTIVE FILING
(b)(1)Notwithstanding subsection (a), and upon timely election
DATE OF THE APPLICATION
by the applicant for patent to proceed under this subsection, a
biotechnological process using or resulting in a composition of
matter that is novel under section 102 and nonobvious under subsection
(a) of this section shall be considered nonobvious if-


The effective filing date of a U.S. application may
(A)claims to the process and the composition of matter
be determined as follows:
are contained in either the same application for patent or in separate
applications having the same effective filing date; and


(A)If the application is a continuation or divisional
(B)the composition of matter, and the process at the time
of one or more earlier U.S. applications or
it was invented, were owned by the same person or subject to an
international applications and if the requirements of
obligation of assignment to the same person.
35 U.S.C. 120 and 365(c), respectively, have been satisfied,
the effective filing date is the same as the earliest
filing date in the line of continuation or divisional
applications.


(B)If the application is a continuation-in-part of
(2)A patent issued on a process under paragraph (1)-
an earlier U.S. application or international application,
any claims in the new application not supported
by the specification and claims of the parent application
have an effective filing date equal to the filing
date of the new application. Any claims which are
fully supported under 35 U.S.C. 112 by the earlier
parent application have the effective filing date of that
earlier parent application.


(C)If the application claims foreign priority
(A)shall also contain the claims to the composition of  
under 35
matter used in or made by that process, or
U.S.C. 119(a)-(d) or 365(a)or (b), the
effective filing date is the filing date of the U.S. application,
unless situation (A) or (B) as set forth above
applies. The filing date of the foreign priority document
is not the effective filing date, although the filing
date of the foreign priority document may be used
to overcome certain references. See MPEP
§ 706.02(b) and § 2136.05.


(D)If the application properly claims benefit
(B)shall, if such composition of matter is claimed in
under 35
another patent, be set to expire on the same date as such other
U.S.C. 119(e) to a provisional application,
patent, notwithstanding section 154.
the effective filing date is the filing date of the provisional
application for any claims which are fully supported
under the first paragraph of 35
U.S.C. 112 by
the provisional application.


See MPEP § 1893.03(b) for determining the effective
(3)For purposes of paragraph (1), the term “biotechnological
filing date of an application under 35 U.S.C. 371.
process” means-
See MPEP § 201.11(a) and § 1895 for additional
information on determining the effective filing date of
a continuation, divisional, or continuation-in-part of a
PCT application designating the U.S. See also MPEP
§ 1895.01 and § 1896 which discuss differences
between applications filed under 35 U.S.C. 111(a) and
international applications that enter national stage
under 35
U.S.C. 371.


====706.02(a)Rejections Under 35 U.S.C. 102(a), (b), or (e); Printed Publication or Patent====
(A)a process of genetically altering or otherwise
inducing a single- or multi-celled organism to-


Once the examiner conducts a search and finds a
(i)express an exogenous nucleotide sequence,
printed publication or patent which discloses the
claimed invention, the examiner should determine
whether the rejection should be made under 35 U.S.C.
102(a), (b), or (e).


In order to determine which section of 35 U.S.C.
(ii)inhibit, eliminate, augment, or alter expression
102 applies, the effective filing date of the application
of an endogenous nucleotide sequence, or
must be determined and compared with the date of the
reference. See MPEP § 706.02 regarding determination
of effective filing date of the application.


I.DETERMINING THE REFERENCE ISSUE
(iii)express a specific physiological characteristic
OR PUBLICATION DATE
not naturally associated with said organism;


The examiner must determine the issue or publication
(B)cell fusion procedures yielding a cell line that
date of the reference so that a proper comparison
expresses a specific protein, such as a monoclonal antibody; and
between the application and reference dates can be
made. A magazine is effective as a printed publication
under 35 U.S.C. 102(b) as of the date it reached the
addressee and not the date it was placed in the mail.
Protein Foundation Inc. v. Brenner, 260 F. Supp. 519,
151 USPQ 561 (D.D.C. 1966). See MPEP
§ 707.05(f). For foreign patents see MPEP § 901.05.
See MPEP § 2124, § 2126, and § 2128 - § 2128.02 for
case law relevant to reference date determination.


II.DETERMINING WHETHER TO APPLY
(C)a method of using a product produced by a process
35 U.S.C. 102(a), (b), or (e)  
defined by subparagraph (A) or (B), or a combination of subparagraphs
(A) and (B).


A.35 U.S.C. 102(b)
(c)(1) Subject matter developed by another person, which
qualifies as prior art only under one or more of subsections (e), (f),
and (g) of section 102 of this title, shall not preclude patentability
under this section where the subject matter and the claimed invention
were, at the time the claimed invention was made, owned by
the same person or subject to an obligation of assignment to the
same person.


First, the examiner should consider whether the reference
(2)For purposes of this subsection, subject matter developed
qualifies as prior art under 35 U.S.C. 102(b)
by another person and a claimed invention shall be deemed
because this section results in a statutory bar to  
to have been owned by the same person or subject to an obligation
obtaining a patent. If the publication or issue date of
of assignment to the same person if —
the reference is more than 1 year prior to the effective
filing date of the application (MPEP § 706.02), the
reference qualifies as prior art under 35 U.S.C.
102(b).


Where the last day of the year dated from the date
(A)the claimed invention was made by or on behalf of  
of publication falls on a Saturday, Sunday or Federal
parties to a joint research agreement that was in effect on or before
holiday, the publication is not a statutory bar under
the date the claimed invention was made;
35
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)the claimed invention was made as a result of
activities undertaken within the scope of the joint research agreement;
and


If the publication or issue date of the reference is
(C)the application for patent for the claimed invention
too recent for 35 U.S.C. 102(b) to apply, then the  
discloses or is amended to disclose the names of the parties to the  
examiner should consider 35 U.S.C. 102(e).  
joint research agreement.  


In order to apply a reference under 35 U.S.C.
(3)For purposes of paragraph (2), the term “joint
102(e), the inventive entity of the application must be
research agreement” means a written contract, grant, or cooperative
different than that of the reference. Note that, where
agreement entered into by two or more persons or entities for  
there are joint inventors, only one inventor needs
the performance of experimental, developmental, or research
to be different for the inventive entities to be different
work in the field of the claimed invention.
and a rejection under 35 U.S.C. 102(e) is applicable
|}
even if there are some inventors in common
between the application and the reference.


Revised 35 U.S.C. 102(e), as amended by the  
By far the most frequent ground of rejection is on
American Inventors Protection Act of 1999 (AIPA)
the ground of unpatentability in view of the prior art,  
(Pub. L. 106-113, 113 Stat. 1501 (1999)), and as further
that is, that the claimed subject matter is either not
amended by the Intellectual Property and High
novel under 35 U.S.C. 102, or else it is obvious under
Technology Technical Amendments Act of 2002
35 U.S.C. 103. The language to be used in rejecting
(Pub. L. 107-273, 116 Stat. 1758 (2002)), applies in  
claims should be unequivocal. See MPEP  
the examination of all applications, whenever filed,  
§ 707.07(d).
and the reexamination of, or other proceedings to contest,
all patents. The filing date of the application
being examined is no longer relevant in determining
what version of 35 U.S.C. 102(e) to apply in determining
the patentability of that application, or the
patent resulting from that application. The revised
statutory provisions supersede all previous versions of
35 U.S.C. 102(e) and 374, with only one exception,
which is when the potential reference is based on an
international application filed prior to November 29,
2000 (discussed further below). Furthermore, the provisions
amending 35 U.S.C. 102(e) and 374 in Pub. L.  
107-273 are completely retroactive to the effective
date of the relevant provisions in the AIPA (November
29, 2000). See MPEP § 706.02(f)(1) for examination
guidelines on the application of 35 U.S.C. 102(e).


35 U.S.C. 102. Conditions for patentability; novelty and
I.CHOICE OF PRIOR ART; BEST AVAILABLE
loss of right to patent.


(e)the invention was described in — (1) an application for
Prior art rejections should ordinarily be confined
patent, published under section 122(b), by another filed in the
strictly to the best available art. Exceptions may properly
United States before the invention by the applicant for patent or
be made, for example, where:
(2) a patent granted on an application for patent by another filed in
the United States before the invention by the applicant for patent,  
except that an international application filed under the treaty
defined in section 351(a) shall have the effects for the purposes of
this subsection of an application filed in the United States only if
the international application designated the United States and was
published under Article 21(2) of such treaty in the English language;
or


As mentioned above, references based on international
(A)the propriety of a 35 U.S.C. 102 or 103 rejection
applications that were filed prior to November
depends on a particular interpretation of a claim;
29, 2000 are subject to the former (pre-AIPA) version
of 35 U.S.C. 102(e) as set forth below.


Former 35 U.S.C. 102. Conditions for patentability;  
(B)a claim is met only in terms by a reference
novelty and loss of right to patent.
which does not disclose the inventive concept
involved; or


A person shall be entitled to a patent unless-
(C)the most pertinent reference seems likely to
be antedated by a 37 CFR 1.131 affidavit or declaration.


Such rejections should be backed up by the best
other art rejections available. Merely cumulative
rejections, i.e., those which would clearly fall if the
primary rejection were not sustained, should be
avoided.


See also MPEP § 707.05.


(e)the invention was described in a patent granted on an
II.RELIANCE UPON ABSTRACTS AND
application for patent by another filed in the United States before
FOREIGN LANGUAGE DOCUMENTS IN
the invention thereof by the applicant for patent, or on an international
SUPPORT OF A REJECTION
application by another who has fulfilled the requirements of
paragraphs (1), (2), and (4) of section 371(c) of this title before the
invention thereof by the applicant for patent.


Prior art uncovered in searching the claimed subject
matter of a patent application often includes English
language abstracts of underlying documents, such as
technical literature or foreign patent documents which
may not be in the English language. When an abstract
is used to support a rejection, the evidence relied upon
is the facts contained in the abstract, not additional
facts that may be contained in the underlying full text
document. Citation of and reliance upon an abstract
without citation of and reliance upon the underlying
scientific document is generally inappropriate where
both the abstract and the underlying document are
prior art. See Ex parte Jones, 62 USPQ2d 1206, 1208
(Bd. Pat. App. & Inter. 2001) (unpublished).


To determine whether both the abstract and the
underlying document are prior art, a copy of the
underlying document must be obtained and analyzed.
If the document is in a language other than English
and the examiner seeks to rely on that document, a
translation must be obtained so that the record is clear
as to the precise facts the examiner is relying upon
in support of the rejection. The record must also
be clear as to whether the examiner is relying upon
the abstract or the full text document to support a
rejection. The rationale for this is several-fold. It is
not uncommon for a full text document to reveal that
the document fully anticipates an invention that the
abstract renders obvious at best. The converse may
also be true, that the full text document will include
teachings away from the invention that will preclude
an obviousness rejection under 35 U.S.C. 103, when
the abstract alone appears to support the rejection. An
abstract can have a different effective publication date
than the full text document. Because all patentability
determinations are fact dependent, obtaining and considering
full text documents at the earliest practicable
time in the examination process will yield the fullest
available set of facts upon which to determine patentability,
thereby improving quality and reducing pendency.
When both the abstract and the underlying document
qualify as prior art, the underlying document
should normally be used to support a rejection. In limited
circumstances, it may be appropriate for the
examiner to make a rejection in a non-final Office
action based in whole or in part on the abstract only
without relying on the full text document. In such circumstances,
the full text document and a translation
(if not in English) may be supplied in the next Office
action. Whether the next Office action may be made
final is governed by MPEP § 706.07(a).


Revised 35 U.S.C. 102(e) has two separate clauses,
III. REEXAMINATION
namely, 35 U.S.C. 102(e)(1) for publications of
patent applications and 35 U.S.C. 102(e)(2) for U.S.
patents. 35 U.S.C. 102(e)(1), in combination with
amended 35 U.S.C. 374, created a new category of
prior art by providing prior art effect for certain publications
of patent applications, including certain international
applications, as of their effective United
States filing dates (which will include certain international
filing dates). Under revised 35 U.S.C. 102(e),
an international filing date which is on or after
November 29, 2000 is a United States filing date if the
international application designated the United States
and was published by the World Intellectual Property
Organization (WIPO) under the Patent Cooperation
Treaty (PCT) Article 21(2) in the English language.
Therefore, the prior art date of a reference under
35
U.S.C. 102(e) may be the international filing date
(if all three conditions noted above are met) or an earlier
U.S. filing date for which priority or benefit is
properly claimed. Publication under PCT Article
21(2) may result from a request for early publication
by an applicant of an international application or after
the expiration of 18-months after the earliest claimed
filing date in an international application. An applicant
of an international application that has designated
only the U.S. would continue to be required to
request publication from WIPO as the reservation
under PCT Article 64(3) continues to be in effect
for such applicants. 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).
 
Revised 35 U.S.C. 102(e) eliminated the reference
to fulfillment of the 35
U.S.C. 371(c)(1), (2) and (4)
requirements. As a result, United States patentsissued directly from international applications filed on
or after November 29, 2000 will no longer be available
as prior art under 35 U.S.C. 102(e) as of the date
the requirements of 35
U.S.C. 371(c)(1), (2) and (4)
have been satisfied. Under 35
U.S.C. 102(e)(2), as
amended by the AIPA and Pub. L. 107-273, an international
filing date which is on or after November 29,
2000 is a United States filing date for purposes of
determining the earliest effective prior art date of a
patent if the international application designated the
United States and was published in the English language
under PCT Article 21(2) by WIPO.
 
No international filing dates prior to November 29,
2000 may be relied upon as a prior art date under
35
U.S.C. 102(e) in accordance with the last sentence
of the effective date provisions of Pub. L. 107-273.
Patents issued directly, or indirectly, from international
applications filed before November 29, 2000
may only be used as prior art based on the provisions
of 35 U.S.C. 102(e) in effect before November 29,


For scope of rejections in ex parte reexamination
proceedings, see MPEP § 2258 and in inter partesreexamination, see MPEP § 2658.


IV.DISTINCTION BETWEEN 35 U.S.C. 102
AND 103


The distinction between rejections based on
35 U.S.C. 102 and those based on 35 U.S.C. 103 should be kept in mind. Under the former, the claim is
anticipated by the reference. No question of obviousness
is present. In other words, for anticipation under
35 U.S.C. 102, the reference must teach every aspect
of the claimed invention either explicitly or impliedly.
Any feature not directly taught must be inherently
present. Whereas, in a rejection based on 35
U.S.C. 103, the reference teachings must somehow be modified
in order to meet the claims. The modification
must be one which would have been obvious to one of
ordinary skill in the art at the time the invention was
made. See MPEP § 2131 - § 2146 for guidance on patentability
determinations under 35 U.S.C. 102 and
103.


V.DETERMINING THE EFFECTIVE FILING
DATE OF THE APPLICATION


2000. Thus, the 35 U.S.C. 102(e) date of such a prior
The effective filing date of a U.S. application may
art patent is the earliest of the date of compliance with
be determined as follows:
35
U.S.C. 371(c)(1), (2) and (4), or the filing date of  
the later-filed U.S. continuing application that
claimed the benefit of the international application.
Publications of international applications filed before
November 29, 2000 (which would include WIPO
publications and U.S. publications of the national
stage (35
U.S.C. 371)) do not have a 35 U.S.C. 102(e)
date at all (however, such publications are available as
prior art under 35 U.S.C. 102(a) or (b) as of the publication
date). Specifically, under revised 35
U.S.C.
374, the international application must be filed on or
after November 29, 2000 for its WIPO publication to
be “deemed a publication under section 122(b)” and
thus available as a possible prior art reference under
35 U.S.C. 102(e) as amended by the AIPA.


C.35 U.S.C. 102(a)
(A)If the application is a continuation or divisional
of one or more earlier U.S. applications or
international applications and if the requirements of
35 U.S.C. 120 and 365(c), respectively, have been satisfied,
the effective filing date is the same as the earliest
filing date in the line of continuation or divisional
applications.


Even if the reference is prior art under 35
(B)If the application is a continuation-in-part of
U.S.C.
an earlier U.S. application or international application,  
102(e), the examiner should still consider 35
any claims in the new application not supported
U.S.C.
by the specification and claims of the parent application  
102(a) for two reasons. First, if the reference is a U.S.  
have an effective filing date equal to the filing
patent or patent application publication of, or claims
date of the new application. Any claims which are  
benefit of, an international application, the publication
fully supported under 35 U.S.C. 112 by the earlier
of the international application under PCT Article
parent application have the effective filing date of that
21(2) may be the earliest prior art date under
earlier parent application.
35
U.S.C. 102(a) for the disclosure. Second, references
that are only prior art under 35
U.S.C. 102(e),
(f), or (g) and applied in a rejection under 35
U.S.C.
103(a) are subject to being disqualified under  
35  
U.S.C. 103(c) if the reference and the application  
were commonly owned, or subject to an obligation of
common assignment, at the time the invention was
made. For 35
U.S.C. 102(a) to apply, the reference
must have a publication date earlier in time than the  
effective filing date of the application, and must not
be applicant’s own work.  


706.02(b)Overcoming a 35 U.S.C. 102Rejection Based on a PrintedPublication or Patent [R-5]
(C)If the application claims foreign priority
under 35  
U.S.C. 119(a)-(d) or 365(a)or (b), the
effective filing date is the filing date of the U.S. application,
unless situation (A) or (B) as set forth above
applies. The filing date of the foreign priority document
is not the effective filing date, although the filing
date of the foreign priority document may be used
to overcome certain references. See MPEP
§ 706.02(b) and § 2136.05.


A rejection based on 35 U.S.C. 102(b) can be overcome
(D)If the application properly claims benefit
by:
under 35  
U.S.C. 119(e) to a provisional application,
the effective filing date is the filing date of the provisional
application for any claims which are fully supported
under the first paragraph of 35
U.S.C. 112 by  
the provisional application.


(A)Persuasively arguing that the claims are patentably
See MPEP § 1893.03(b) for determining the effective
distinguishable from the prior art;
filing date of an application under 35 U.S.C. 371.
See MPEP § 201.11(a) and § 1895 for additional
information on determining the effective filing date of
a continuation, divisional, or continuation-in-part of a
PCT application designating the U.S. See also MPEP
§ 1895.01 and § 1896 which discuss differences
between applications filed under 35 U.S.C. 111(a) and
international applications that enter national stage
under 35
U.S.C. 371.


(B)Amending the claims to patentably distinguish
====706.02(a)Rejections Under 35 U.S.C. 102(a), (b), or (e); Printed Publication or Patent====
over the prior art;  


(C)Perfecting benefit under 35 U.S.C. 120,
Once the examiner conducts a search and finds a
within the time period set in 37 CFR 1.78(a) or filing
printed publication or patent which discloses the
a grantable petition under 37 CFR 1.78(a), by amending
claimed invention, the examiner should determine
the specification of the application to contain a
whether the rejection should be made under 35 U.S.C.  
specific reference to a prior application or by filing an
102(a), (b), or (e).
application data sheet under 37 CFR 1.76 which contains
a specific reference to a prior application in
accordance with 37 CFR 1.78(a), and by establishing
that the prior application satisfies the enablement and
written description requirements of 35 U.S.C. 112,
first paragraph. See MPEP § 201.11 and § 706.02; or


(D)Perfecting benefit claim under 35 U.S.C.  
In order to determine which section of 35 U.S.C.  
119(e) by complying with the requirements of 37 CFR
102 applies, the effective filing date of the application  
1.78(a) (see item (C) above). Since a provisional
must be determined and compared with the date of the  
application could not have been filed more than one
reference. See MPEP § 706.02 regarding determination
year prior to the filing of a nonprovisional application
of effective filing date of the application.
that claims benefit to the provisional application, in
order to overcome a rejection under 35 U.S.C. 102(b),
there must be at least one intermediate application
between the provisional application and the nonprovisional
application under examination, e.g., chain of  
prior applications. In order to overcome the rejection
under 35 U.S.C. 102(b), benefit claim must be
perfected for the chain of prior applications (35
U.S.C. 119(e) and 120 must be perfected). See MPEP  
§ 201.11.


A rejection based on 35 U.S.C. 102(e) can be overcome
I.DETERMINING THE REFERENCE ISSUE
by:
OR PUBLICATION DATE


(A)Persuasively arguing that the claims are patentably
The examiner must determine the issue or publication
distinguishable from the prior art;
date of the reference so that a proper comparison
between the application and reference dates can be
made. A magazine is effective as a printed publication
under 35 U.S.C. 102(b) as of the date it reached the  
addressee and not the date it was placed in the mail.
Protein Foundation Inc. v. Brenner, 260 F. Supp. 519,
151 USPQ 561 (D.D.C. 1966). See MPEP
§ 707.05(f). For foreign patents see MPEP § 901.05.
See MPEP § 2124, § 2126, and § 2128 - § 2128.02 for
case law relevant to reference date determination.


(B)Amending the claims to patentably distinguish
II.DETERMINING WHETHER TO APPLY
over the prior art;
35 U.S.C. 102(a), (b), or (e)  


(C)Filing an affidavit or declaration under
A.35 U.S.C. 102(b)
37
CFR 1.132 showing that the reference invention is
not by
“another.” See MPEP § 715.01(a), § 715.01(c),
and §
716.10;


(D)Filing an affidavit or declaration under
First, the examiner should consider whether the reference  
37
qualifies as prior art under 35 U.S.C. 102(b)
CFR 1.131 showing prior invention, if the reference  
because this section results in a statutory bar to
is not a U.S. patent or a U.S. patent application
obtaining a patent. If the publication or issue date of
publication claiming the same patentable invention as
the reference is more than 1 year prior to the effective
defined in 37
filing date of the application (MPEP § 706.02), the  
CFR 41.203(a). See MPEP §
reference qualifies as prior art under 35 U.S.C.  
102(b).
715 for
more information on 37 CFR 1.131 affidavits. When
the claims of the reference U.S. patent or U.S. patent
application publication and the application are
directed to the same invention or are obvious variants,


Where the last day of the year dated from the date
of publication falls on a Saturday, Sunday or Federal
holiday, the publication is not a statutory bar under
35 U.S.C. 102(b) if the application was filed on the
next succeeding business day.


B.35 U.S.C. 102(e)


If the publication or issue date of the reference is
too recent for 35 U.S.C. 102(b) to apply, then the
examiner should consider 35 U.S.C. 102(e).


In order to apply a reference under 35 U.S.C.
102(e), the inventive entity of the application must be
different than that of the reference. Note that, where
there are joint inventors, only one inventor needs
to be different for the inventive entities to be different
and a rejection under 35 U.S.C. 102(e) is applicable
even if there are some inventors in common
between the application and the reference.


an affidavit or declaration under 37
Revised 35 U.S.C. 102(e), as amended by the
CFR 1.131 is not
American Inventors Protection Act of 1999 (AIPA)
an acceptable method of overcoming the rejection.  
(Pub. L. 106-113, 113 Stat. 1501 (1999)), and as further
Under these circumstances, the examiner must determine
amended by the Intellectual Property and High
whether a double patenting rejection or interference
Technology Technical Amendments Act of 2002
is appropriate. If there is a common assignee or
(Pub. L. 107-273, 116 Stat. 1758 (2002)), applies in
inventor between the application and patent, a double
the examination of all applications, whenever filed,
patenting rejection must be made. See MPEP § 804. If
and the reexamination of, or other proceedings to contest,
there is no common assignee or inventor and the  
all patents. The filing date of the application
rejection under 35 U.S.C. 102(e) is the only possible
being examined is no longer relevant in determining
rejection, the examiner must determine whether an
what version of 35 U.S.C. 102(e) to apply in determining
interference should be declared. See MPEP Chapter
the patentability of that application, or the
2300 for more information regarding interferences;
patent resulting from that application. The revised
statutory provisions supersede all previous versions of
35 U.S.C. 102(e) and 374, with only one exception,
which is when the potential reference is based on an
international application filed prior to November 29,
2000 (discussed further below). Furthermore, the provisions
amending 35 U.S.C. 102(e) and 374 in Pub. L.
107-273 are completely retroactive to the effective
date of the relevant provisions in the AIPA (November
29, 2000). See MPEP § 706.02(f)(1) for examination
guidelines on the application of 35 U.S.C. 102(e).


(E)Perfecting a claim to priority under 35 U.S.C.  
{{Statute|35 U.S.C. 102. Conditions for patentability; novelty and loss of right to patent.}}
119(a)-(d) within the time period set in 37 CFR
{{Ellipsis}}
1.55(a)(1) or filing a grantable petition under 37 CFR
(e)the invention was described in — (1) an application for
1.55(c). See MPEP § 201.13. The foreign priority filing
patent, published under section 122(b), by another filed in the
date must antedate the reference and be perfected.
United States before the invention by the applicant for patent or
The filing date of the priority document is not perfected
(2) a patent granted on an application for patent by another filed in
unless applicant has filed a certified priority
the United States before the invention by the applicant for patent,  
document in the application (and an English language
except that an international application filed under the treaty
translation, if the document is not in English) (see
defined in section 351(a) shall have the effects for the purposes of
37
this subsection of an application filed in the United States only if
CFR 1.55(a)(3)) and the examiner has established
the international application designated the United States and was
that the priority document satisfies the enablement
published under Article 21(2) of such treaty in the English language;
and description requirements of 35 U.S.C. 112, first
or
paragraph; or
{{Ellipsis}}
|}


(F)Perfecting benefit under 35 U.S.C. 119(e)
As mentioned above, references based on international
or 120, within the time periods set in 37 CFR 1.78(a)
applications that were filed prior to November
or filing a grantable petition under 37 CFR 1.78(a),  
29, 2000 are subject to the former (pre-AIPA) version
by amending the specification of the application to  
of 35 U.S.C. 102(e) as set forth below.
contain a specific reference to a prior application or
by filing an application data sheet under 37 CFR 1.76
which contains a specific reference to a prior application
in accordance with 37 CFR 1.78(a), and by establishing
that the prior application satisfies the
enablement and written description requirements of  
35 U.S.C. 112, first paragraph. See MPEP § 201.11
and §
706.02.


A rejection based on 35 U.S.C. 102(a) can be overcome
{{Statute|Former 35 U.S.C. 102. Conditions for patentability; novelty and loss of right to patent.}}
by:
A person shall be entitled to a patent unless-
{{Ellipsis}}
(e)the invention was described in a patent granted on an
application for patent by another filed in the United States before
the invention thereof by the applicant for patent, or on an international
application by another who has fulfilled the requirements of
paragraphs (1), (2), and (4) of section 371(c) of this title before the
invention thereof by the applicant for patent.
|}


(A)Persuasively arguing that the claims are patentably
Revised 35 U.S.C. 102(e) has two separate clauses,
distinguishable from the prior art;
namely, 35 U.S.C. 102(e)(1) for publications of
 
patent applications and 35 U.S.C. 102(e)(2) for U.S.
(B)Amending the claims to patentably distinguish
patents. 35 U.S.C. 102(e)(1), in combination with
over the prior art;
amended 35 U.S.C. 374, created a new category of
 
prior art by providing prior art effect for certain publications
(C)Filing an affidavit or declaration under  
of patent applications, including certain international
37
applications, as of their effective United
CFR 1.131 showing prior invention, if the reference  
States filing dates (which will include certain international
is not a U.S. patent or a U.S. patent application
filing dates). Under revised 35 U.S.C. 102(e),
publication claiming the same patentable invention as
an international filing date which is on or after
defined in 37 CFR 41.203(a). See MPEP § 715 for  
November 29, 2000 is a United States filing date if the
information on the requirements of 37 CFR 1.131affidavits. When the claims of the reference U.S.  
international application designated the United States
patent or U.S. patent application publication and the
and was published by the World Intellectual Property
application are directed to the same invention or are
Organization (WIPO) under the Patent Cooperation
obvious variants, an affidavit or declaration under  
Treaty (PCT) Article 21(2) in the English language.
37
Therefore, the prior art date of a reference under
CFR 1.131 is not appropriate to overcome the
35
rejection.
U.S.C. 102(e) may be the international filing date
(if all three conditions noted above are met) or an earlier
U.S. filing date for which priority or benefit is
properly claimed. Publication under PCT Article
21(2) may result from a request for early publication
by an applicant of an international application or after
the expiration of 18-months after the earliest claimed
filing date in an international application. An applicant
of an international application that has designated
only the U.S. would continue to be required to
request publication from WIPO as the reservation
under PCT Article 64(3) continues to be in effect
for such applicants. 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).  


(D)Filing an affidavit or declaration under
Revised 35 U.S.C. 102(e) eliminated the reference
37
to fulfillment of the 35
CFR 1.132 showing that the reference invention is
U.S.C. 371(c)(1), (2) and (4)
not by “another.” See MPEP § 715.01(a), § 715.01(c),
requirements. As a result, United States patents issued directly from international applications filed on
and §
or after November 29, 2000 will no longer be available
as prior art under 35 U.S.C. 102(e) as of the date
716.10;
the requirements of 35  
 
U.S.C. 371(c)(1), (2) and (4)  
(E)Perfecting a claim to priority under 35 U.S.C.  
have been satisfied. Under 35  
119(a)-(d) as explained in reference to 35 U.S.C.  
U.S.C. 102(e)(2), as
102(e) above;
amended by the AIPA and Pub. L. 107-273, an international
filing date which is on or after November 29,
2000 is a United States filing date for purposes of
determining the earliest effective prior art date of a
patent if the international application designated the
United States and was published in the English language
under PCT Article 21(2) by WIPO.


(F)Perfecting benefit under 35 U.S.C. 119(e)
No international filing dates prior to November 29,
or 120 as explained in reference to 35 U.S.C. 102(e)  
2000 may be relied upon as a prior art date under
above.
35
U.S.C. 102(e) in accordance with the last sentence
of the effective date provisions of Pub. L. 107-273.
Patents issued directly, or indirectly, from international
applications filed before November 29, 2000
may only be used as prior art based on the provisions
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
art patent is the earliest of the date of compliance with
35
U.S.C. 371(c)(1), (2) and (4), or the filing date of
the later-filed U.S. continuing application that
claimed the benefit of the international application.
Publications of international applications filed before
November 29, 2000 (which would include WIPO
publications and U.S. publications of the national
stage (35
U.S.C. 371)) do not have a 35 U.S.C. 102(e)
date at all (however, such publications are available as
prior art under 35 U.S.C. 102(a) or (b) as of the publication
date). Specifically, under revised 35
U.S.C.
374, the international application must be filed on or  
after November 29, 2000 for its WIPO publication to
be “deemed a publication under section 122(b)” and
thus available as a possible prior art reference under
35 U.S.C. 102(e) as amended by the AIPA.


706.02(c)Rejections Under 35 U.S.C.  
C.35 U.S.C. 102(a)
102(a) or (b); Knowledge by
Others or Public Use or Sale


An applicant may make an admission, or submit
Even if the reference is prior art under 35
evidence of sale of the invention or knowledge of the  
U.S.C.
invention by others, or the examiner may have personal
102(e), the examiner should still consider 35
knowledge that the invention was sold by applicant
U.S.C.
or known by others in this country. The language
102(a) for two reasons. First, if the reference is a U.S.
“in this country” means in the United States only and  
patent or patent application publication of, or claims
does not include other WTO or NAFTA member
benefit of, an international application, the publication
countries. In these cases the examiner must determine
of the international application under PCT Article
if 35 U.S.C. 102(a) or 102(b) applies. See MPEP
21(2) may be the earliest prior art date under
§
35
U.S.C. 102(a) for the disclosure. Second, references
2133.03 for a discussion of case law treating the  
that are only prior art under 35
“public use” and “on sale” statutory bars.  
U.S.C. 102(e),
(f), or (g) and applied in a rejection under 35
U.S.C.  
103(a) are subject to being disqualified under
35
U.S.C. 103(c) if the reference and the application
were commonly owned, or subject to an obligation of
common assignment, at the time the invention was
made. For 35  
U.S.C. 102(a) to apply, the reference
must have a publication date earlier in time than the
effective filing date of the application, and must not
be applicant’s own work.  


If the activity is by an entity other than the inventors
====706.02(b) Overcoming a 35 U.S.C. 102 Rejection Based on a Printed Publication or Patent====
or assignee, such as sale by another, manufacture
by another or disclosure of the invention by applicant
to another then both 35 U.S.C. 102(a) and (b) may be
applicable. If the evidence only points to knowledge
within the year prior to the effective filing date then
35 U.S.C. 102(a) applies. However, no rejection under
35 U.S.C. 102(a) should be made if there is evidence
that applicant made the invention and only disclosed
it to others within the year prior to the effective filing
date.


35 U.S.C. 102(b) is applicable if the activity
A rejection based on 35 U.S.C. 102(b) can be overcome
occurred more than 1 year prior to the effective filing
by:
date of the application. See MPEP § 2133.03 for a dis


(A)Persuasively arguing that the claims are patentably
distinguishable from the prior art;


(B)Amending the claims to patentably distinguish
over the prior art;


(C)Perfecting benefit under 35 U.S.C. 120,
within the time period set in 37 CFR 1.78(a) or filing
a grantable petition under 37 CFR 1.78(a), by amending
the specification of the application to contain a
specific reference to a prior application or by filing an
application data sheet under 37 CFR 1.76 which contains
a specific reference to a prior application in
accordance with 37 CFR 1.78(a), and by establishing
that the prior application satisfies the enablement and
written description requirements of 35 U.S.C. 112,
first paragraph. See MPEP § 201.11 and § 706.02; or


(D)Perfecting benefit claim under 35 U.S.C.
119(e) by complying with the requirements of 37 CFR
1.78(a) (see item (C) above). Since a provisional
application could not have been filed more than one
year prior to the filing of a nonprovisional application
that claims benefit to the provisional application, in
order to overcome a rejection under 35 U.S.C. 102(b),
there must be at least one intermediate application
between the provisional application and the nonprovisional
application under examination, e.g., chain of
prior applications. In order to overcome the rejection
under 35 U.S.C. 102(b), benefit claim must be
perfected for the chain of prior applications (35
U.S.C. 119(e) and 120 must be perfected). See MPEP
§ 201.11.


A rejection based on 35 U.S.C. 102(e) can be overcome
by:


cussion of “on sale” and “public use” bars under
(A)Persuasively arguing that the claims are patentably
35
distinguishable from the prior art;
U.S.C. 102(b).


Note that as an aid to resolving public use or on sale
(B)Amending the claims to patentably distinguish
issues, as well as to other related matters of 35 U.S.C.
over the prior art;
102(b) activity, an applicant may be required to
answer specific questions posed by the examiner and
to explain or supplement any evidence of record. See
35 U.S.C. 132, 37
CFR 1.104(a)(2). Information
sought should be restricted to that which is reasonably
necessary for the examiner to render a decision on
patentability. The examiner may consider making a
requirement for information under 37 CFR 1.105where the evidence of record indicates reasonable
necessity. See MPEP § 704.10 et seq.


A 1- or 2-month time period should be set by the
(C)Filing an affidavit or declaration under
examiner for any reply to the requirement, unless the
37
requirement is part of an Office action having a shortened
CFR 1.132 showing that the reference invention is  
statutory period, in which case the period for
not by
reply to the Office action will also apply to the
“another.” See MPEP § 715.01(a), § 715.01(c),
requirement. If applicant fails to reply in a timely
and § 716.10;
fashion to a requirement for information, the application
will be regarded as abandoned. 35 U.S.C. 133.  
See MPEP § 2133.03.


If there is not enough information on which to base
(D)Filing an affidavit or declaration under
a public use or on sale rejection, the examiner should
37 CFR 1.131 showing prior invention, if the reference
make a requirement for more information. Form paragraph
is not a U.S. patent or a U.S. patent application
7.104 can be used.
publication claiming the same patentable invention as
defined in 37
CFR 41.203(a). See MPEP § 715 for
more information on 37 CFR 1.131 affidavits. When
the claims of the reference U.S. patent or U.S. patent
application publication and the application are
directed to the same invention or are obvious variants,
an affidavit or declaration under 37
CFR 1.131 is not
an acceptable method of overcoming the rejection.
Under these circumstances, the examiner must determine
whether a double patenting rejection or interference
is appropriate. If there is a common assignee or
inventor between the application and patent, a double
patenting rejection must be made. See MPEP § 804. If
there is no common assignee or inventor and the
rejection under 35 U.S.C. 102(e) is the only possible
rejection, the examiner must determine whether an
interference should be declared. See MPEP Chapter
2300 for more information regarding interferences;


¶ 7.104 Requirement for Information, Public Use or Sale
(E)Perfecting a claim to priority under 35 U.S.C.  
 
119(a)-(d) within the time period set in 37 CFR
An issue of public use or on sale activity has been raised in this
1.55(a)(1) or filing a grantable petition under 37 CFR
application. In order for the examiner to properly consider patentability
1.55(c). See MPEP § 201.13. The foreign priority filing
of the claimed invention under 35 U.S.C. 102(b), additional
date must antedate the reference and be perfected.
information regarding this issue is required as follows: [1]
The filing date of the priority document is not perfected
 
unless applicant has filed a certified priority
Applicant is reminded that failure to fully reply to this requirement
document in the application (and an English language
for information will result in a holding of abandonment.
translation, if the document is not in English) (see
 
37
Examiner Note:
CFR 1.55(a)(3)) and the examiner has established
 
that the priority document satisfies the enablement
1.Information sought should be restricted to that which is reasonably
and description requirements of 35 U.S.C. 112, first
necessary for the examiner to render a decision on patentability.  
paragraph; or
See MPEP § 2133.03.
 
2.A one or two month time period should be set by the examiner
for reply to the requirement unless it is part of an Office
action having an SSP, in which case the period for reply will apply
also to the requirement.


3.If sufficient evidence already exists to establish a prima faciecase of public use or on sale, use form paragraph 7.16 to make a  
(F)Perfecting benefit under 35 U.S.C. 119(e)
rejection under 35 U.S.C. 102(b). See MPEP § 2133.03.
or 120, within the time periods set in 37 CFR 1.78(a)
or filing a grantable petition under 37 CFR 1.78(a),
by amending the specification of the application to
contain a specific reference to a prior application or  
by filing an application data sheet under 37 CFR 1.76
which contains a specific reference to a prior application
in accordance with 37 CFR 1.78(a), and by establishing
that the prior application satisfies the
enablement and written description requirements of
35 U.S.C. 112, first paragraph. See MPEP § 201.11
and § 706.02.


706.02(d)Rejections Under 35 U.S.C.  
A rejection based on 35 U.S.C. 102(a) can be overcome
102(c)
by:


Under 35 U.S.C. 102(c), abandonment of the  
(A)Persuasively arguing that the claims are patentably
“invention” (as distinguished from abandonment of an
distinguishable from the prior art;
application) results in loss of right to a patent. See
MPEP § 2134 for case law which sets forth the criteria
for abandonment under 35 U.S.C. 102(c).


706.02(e)Rejections Under 35 U.S.C.
(B)Amending the claims to patentably distinguish
102(d) [R-2]
over the prior art;


35 U.S.C. 102(d) establishes four conditions which,
(C)Filing an affidavit or declaration under
if all are present, establish a statutory bar against the  
37
granting of a patent in this country:
CFR 1.131 showing prior invention, if the reference
is not a U.S. patent or a U.S. patent application
publication claiming the same patentable invention as
defined in 37 CFR 41.203(a). See MPEP § 715 for
information on the requirements of 37 CFR 1.131affidavits. When the claims of the reference U.S.
patent or U.S. patent application publication and the
application are directed to the same invention or are  
obvious variants, an affidavit or declaration under
37
CFR 1.131 is not appropriate to overcome the  
rejection.


(A)The foreign application must be filed more
(D)Filing an affidavit or declaration under
than 12 months before the effective filing date of the  
37
United States application. See MPEP § 706.02 regarding
CFR 1.132 showing that the reference invention is
determination of the effective filing date of the
not by “another.” See MPEP § 715.01(a), § 715.01(c),
application.
and § 716.10;


(B)The foreign and United States applications
(E)Perfecting a claim to priority under 35 U.S.C.
must be filed by the same applicant, his or her legal
119(a)-(d) as explained in reference to 35 U.S.C.
representatives or assigns.
102(e) above;


(C)The foreign application must have actually
(F)Perfecting benefit under 35 U.S.C. 119(e)
issued as a patent or inventor’s certificate (e.g.,
or 120 as explained in reference to 35 U.S.C. 102(e)  
granted by sealing of the papers in Great Britain)  
above.
before the filing in the United States. It need not be
published but the patent rights granted must be
enforceable.


(D)The same invention must be involved.
====706.02(c) Rejections Under 35 U.S.C. 102(a) or (b); Knowledge by Others or Public Use or Sale====


If such a foreign patent or inventor’s certificate is
An applicant may make an admission, or submit
discovered by the examiner, the rejection is made
evidence of sale of the invention or knowledge of the
under 35  
invention by others, or the examiner may have personal
U.S.C. 102(d) on the ground of statutory bar.
knowledge that the invention was sold by applicant
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
countries. In these cases the examiner must determine
if 35 U.S.C. 102(a) or 102(b) applies. See MPEP
§ 2133.03 for a discussion of case law treating the
"public use" and "on sale" statutory bars.  


See MPEP § 2135.01 for case law which further
If the activity is by an entity other than the inventors
clarifies each of the four requirements of 35 U.S.C.  
or assignee, such as sale by another, manufacture
102(d).  
by another or disclosure of the invention by applicant
to another then both 35 U.S.C. 102(a) and (b) may be
applicable. If the evidence only points to knowledge
within the year prior to the effective filing date then
35 U.S.C. 102(a) applies. However, no rejection under
35 U.S.C. 102(a) should be made if there is evidence
that applicant made the invention and only disclosed
it to others within the year prior to the effective filing
date.


SEARCHING FOR 35 U.S.C. 102(d) PRIOR ART
35 U.S.C. 102(b) is applicable if the activity
occurred more than 1 year prior to the effective filing
date of the application. See MPEP § 2133.03 for a dis
cussion of "on sale" and "public use" bars under
35 U.S.C. 102(b).


The examiner should only undertake a search for an  
Note that as an aid to resolving public use or on sale
issued foreign patent for use as 35 U.S.C. 102(d) prior
issues, as well as to other related matters of 35 U.S.C.  
art if there is a reasonable possibility that a foreign
102(b) activity, an applicant may be required to
patent covering the same subject matter as the U.S.
answer specific questions posed by the examiner and
application has been granted to the same inventive
to explain or supplement any evidence of record. See
entity before the U.S. effective filing date, i.e., the
35 U.S.C. 132, 37
time period between foreign and U.S. filings is greater
CFR 1.104(a)(2). Information
than the usual time it takes for a patent to issue in the
sought should be restricted to that which is reasonably
foreign country. Normally, the probability of the
necessary for the examiner to render a decision on
inventor’s foreign patent issuing before the U.S. filing
patentability. The examiner may consider making a  
requirement for information under 37 CFR 1.105 where the evidence of record indicates reasonable
necessity. See MPEP § 704.10 et seq.


A 1- or 2-month time period should be set by the
examiner for any reply to the requirement, unless the
requirement is part of an Office action having a shortened
statutory period, in which case the period for
reply to the Office action will also apply to the
requirement. If applicant fails to reply in a timely
fashion to a requirement for information, the application
will be regarded as abandoned. 35 U.S.C. 133.
See MPEP § 2133.03.


If there is not enough information on which to base
a public use or on sale rejection, the examiner should
make a requirement for more information.


====706.02(d) Rejections Under 35 U.S.C. 102(c)====


Under 35 U.S.C. 102(c), abandonment of the
“invention” (as distinguished from abandonment of an
application) results in loss of right to a patent. See
MPEP § 2134 for case law which sets forth the criteria
for abandonment under 35 U.S.C. 102(c).


date is so slight as to make such a search unproductive.  
====706.02(e) Rejections Under 35 U.S.C. 102(d)====
However, it should be kept in mind that the average
pendency varies greatly between foreign
countries. In Belgium, for instance, a patent may be
granted in just a month after its filing, while in Japan
the patent may not issue for several years.  


The search for a granted patent can be accomplished
35 U.S.C. 102(d) establishes four conditions which,  
on an electronic database either by the examiner
if all are present, establish a statutory bar against the
or by the staff of the Scientific and Technical
granting of a patent in this country:
Information Center. See MPEP § 901.06(a), paragraph
IV.B., for more information on online searching.
The document must be a patent or inventor’s
certificate and not merely a published or laid open
application.


706.02(f)Rejection Under 35 U.S.C.  
(A)The foreign application must be filed more
102(e) [R-3]
than 12 months before the effective filing date of the
United States application. See MPEP § 706.02 regarding
determination of the effective filing date of the
application.
 
(B)The foreign and United States applications
must be filed by the same applicant, his or her legal
representatives or assigns.


35  
(C)The foreign application must have actually
U.S.C. 102(e), in part, allows for certain prior  
issued as a patent or inventor’s certificate (e.g.,
art (i.e., U.S. patents, U.S. patent application publications  
granted by sealing of the papers in Great Britain)
and WIPO publications of international applications)  
before the filing in the United States. It need not be
to be applied against the claims as of its  
published but the patent rights granted must be
enforceable.
 
(D)The same invention must be involved.
 
If such a foreign patent or inventor’s certificate is
discovered by the examiner, the rejection is made
under 35
U.S.C. 102(d) on the ground of statutory bar.
 
====706.02(f) Rejection Under 35 U.S.C. 102(e)====
 
35 U.S.C. 102(e), in part, allows for certain prior  
art (i.e., U.S. patents, U.S. patent application publications  
and WIPO publications of international applications)  
to be applied against the claims as of its  
effective U.S. filing date. This provision of 35  
effective U.S. filing date. This provision of 35  
U.S.C.  
U.S.C. 102 is mostly utilized when the publication or issue  
102 is mostly utilized when the publication or issue  
date is too recent for the reference to be applied under  
date is too recent for the reference to be applied under  
35  
35 U.S.C. 102(a) or (b). In order to apply a reference  
U.S.C. 102(a) or (b). In order to apply a reference  
under 35 U.S.C. 102(e), the inventive entity of the  
under 35  
U.S.C. 102(e), the inventive entity of the  
application must be different than that of the reference.  
application must be different than that of the reference.  
Note that, where there are joint inventors, only  
Note that, where there are joint inventors, only  
one inventor needs to be different for the inventive  
one inventor needs to be different for the inventive  
entities to be different and a rejection under  
entities to be different and a rejection under  
35  
35 U.S.C. 102(e) is applicable even if there are some  
U.S.C. 102(e) is applicable even if there are some  
inventors in common between the application and the  
inventors in common between the application and the  
reference.
reference.


706.02(f)(1)Examination Guidelines for  
=====706.02(f)(1)Examination Guidelines for Applying References Under 35 U.S.C. 102(e)=====
Applying References Under  
35 U.S.C. 102(e) [R-5]


I.DETERMINE THE APPROPRIATE 35  
======I. DETERMINE THE APPROPRIATE 35 U.S.C. 102(e) DATE FOR EACH POTENTIAL REFERENCE BY FOLLOWING THE GUIDELINES, EXAMPLES, AND FLOW CHARTS SET FORTH BELOW:======
U.S.C. 102(e) DATE FOR EACH POTENTIAL  
REFERENCE BY FOLLOWING THE  
GUIDELINES, EXAMPLES, AND FLOW  
CHARTS SET FORTH BELOW:


(A)The potential reference must be a U.S. patent,  
(A)The potential reference must be a U.S. patent,  
Line 975: Line 1,079:
matter used to make the rejection in compliance  
matter used to make the rejection in compliance  
with 35 U.S.C. 112, first paragraph. See MPEP  
with 35 U.S.C. 112, first paragraph. See MPEP  
§
§ 2136.02.  
2136.02.  


(C)If the potential reference resulted from, or  
(C)If the potential reference resulted from, or  
Line 1,023: Line 1,125:
United States or was not published in English under  
United States or was not published in English under  
PCT Article 21(2), do not treat the international filing  
PCT Article 21(2), do not treat the international filing  
date as a U.S. filing date for prior art purposes. In this  
date as a U.S. filing date for prior art purposes. In this  
situation, do not apply the reference as of its international  
situation, do not apply the reference as of its international  
Line 1,099: Line 1,195:
U.S.C. 365(a) or (b).
U.S.C. 365(a) or (b).


II.EXAMPLES
======II. EXAMPLES======


In order to illustrate the prior art dates of U.S. and  
In order to illustrate the prior art dates of U.S. and  
Line 1,127: Line 1,223:
may not be portrayed in the examples.
may not be portrayed in the examples.


 
'''Example 1''': Reference Publication and Patent of 35  
 
 
 
Example 1: Reference Publication and Patent of 35  
U.S.C. 111(a) Application with no Priority/Benefit  
U.S.C. 111(a) Application with no Priority/Benefit  
Claims.  
Claims.  
Line 1,146: Line 1,237:
application’s actual filing date as its prior art date under 35  
application’s actual filing date as its prior art date under 35  
U.S.C. 102(e).
U.S.C. 102(e).
{{Timeline|2=11/29/00|1=AIPA effective date|3=08 Dec 2000|4=35 U.S.C. 111(a) application filed with no claims for benefit/priority|6=12 Jun 2002|5=Publication of 35 U.S.C. 111(a) application under 35 U.S.C. 122(b)|7=03 Dec 2002|8=Patent granted|9=|10=|11=|12=|13=|14=|15=|16=|17=|18=}}


The 35 U.S.C. 102(e)(1) date for the Publication is 08 Dec. 2000. The 35 U.S.C. 102(e)(2) date for the Patent is: 08 Dec. 2000.


 
'''Example 2''': Reference Publication and Patent of 35  
 
 
The 35 U.S.C. 102(e)(1) date for the Publication is 08 Dec. 2000.The 35 U.S.C. 102(e)(2) date for the Patent is: 08 Dec. 2000.
 
 
The 35 U.S.C. 102(e)(1) date for the Publication is 08 Dec. 2000.
The 35 U.S.C. 102(e)(2) date for the Patent is: 08 Dec. 2000.
 
Example 2: Reference Publication and Patent of 35  
U.S.C. 111(a) Application with a Benefit Claim to a  
U.S.C. 111(a) Application with a Benefit Claim to a  
Prior U.S. Provisional or Nonprovisional Application.
Prior U.S. Provisional or Nonprovisional Application.
Line 1,174: Line 1,258:
application has proper support for the subject matter as required by 35  
application has proper support for the subject matter as required by 35  
U.S.C. 119(e) or 120.
U.S.C. 119(e) or 120.
{{Timeline|2=01 Jan 2000|1=1st 35 U.S.C. 111(a)/(b) application filed before effective date|3=11/29/00|4=AIPA effective date|6=01 Jan 2001|5=2nd application, file under 35 U.S.C. 111(a), claiming the benefit or priority of the prior application under 35 U.S.C. 120/119(e)|7=05 Jul 2001|8=Publication of the 2nd application under 35 U.S.C. 122(b)|10=02 Dec 2002|9=Patent granted on 2nd application|11=|12=|13=|14=|15=|16=|17=|18=}}




The 35 U.S.C. 102(e)(1) date for the Publication is: 01 Jan. 2000. The 35 U.S.C. 102(e)(2) date for the Patent is: 01 Jan. 2000.




'''Example 3''': Reference <u>Publication</u> and <u>Patent</u> of 35 U.S.C. 111(a) Application with 35 U.S.C. 119(a)-(d) Priority Claim to a Prior Foreign Application.


 
For reference publications and patents of patent applications filed under 35  
 
U.S.C. 111(a), the prior art dates  
 
under 35  
U.S.C. 102(e) accorded to these references are the earliest effective U.S. filing dates. No benefit of  
 
The 35 U.S.C. 102(e)(1) date for the Publication is: 01 Jan. 2000.The 35 U.S.C. 102(e)(2) date for the Patent is: 01 Jan. 2000.
01 Jan 2000
01 Jan 2001 02 Dec 2002
2nd application,
filed under 35
U.S.C. 111(a),
claiming the benefit
of the prior
application under
35 U.S.C. 120/119(e)
1st 35 U.S.C.
111(a)/(b)
application filed
before effective
datePatentgranted
on 2nd
application
11/29/00
05 Jul 2001
Publication of
the 2nd
applicationunder 35 U.S.C.
122(b)
 
 
The 35 U.S.C. 102(e)(1) date for the Publication is: 01 Jan. 2000.
The 35 U.S.C. 102(e)(2) date for the Patent is: 01 Jan. 2000.
 
Example 3: Reference Publication and Patent of 35
U.S.C. 111(a) Application with 35
U.S.C. 119(a)-(d)
Priority Claim to a Prior Foreign Application.
 
For reference publications and patents of patent applications filed under 35  
U.S.C. 111(a), the prior art dates  
under 35  
U.S.C. 102(e) accorded to these references are the earliest effective U.S. filing dates. No benefit of  
the filing date of the foreign application is given under 35  
the filing date of the foreign application is given under 35  
U.S.C. 102(e) for prior art purposes (In re Hilmer,  
U.S.C. 102(e) for prior art purposes (In re Hilmer,  
149 USPQ 480 (CCPA 1966)). Thus, a publication and patent of a 35  
149 USPQ 480 (CCPA 1966)). Thus, a publication and patent of a 35 U.S.C. 111(a) application, which claims  
U.S.C. 111(a) application, which claims  
priority under 35 U.S.C. 119(a)-(d) to a prior foreign-filed application (or under 35  
priority under 35  
U.S.C. 119(a)-(d) to a prior foreign-filed application (or under 35  
U.S.C. 365(a) to an  
U.S.C. 365(a) to an  
international application), would be accorded its U.S. filing date as its prior art date under 35  
international application), would be accorded its U.S. filing date as its prior art date under 35 U.S.C. 102(e). In  
U.S.C. 102(e). In  
the example below, it is assumed that the earlier-filed U.S. application has proper support for the subject matter  
the example below, it is assumed that the earlier-filed U.S. application has proper support for the subject matter  
of the later-filed U.S. application as required by 35 U.S.C. 120.
of the later-filed U.S. application as required by 35 U.S.C. 120.
{{Timeline|2=22 Jun 1998|1=Foreign application filed in Japan|3=21 Jun 1999|4=1st 35 U.S.C. 111(a) application filed claiming 35 U.S.C. 199(a)-(d) priority to Japanese application|6=11/29/00|5=AIPA effective date|7=16 Aug 2001|8=2nd 35 U.S.C. 111(a) application filed under 37 CFR 1.53(b) or (d) with 35 U.S.C. 120 priority claim|10=14 Mar 2002|9=Publication of the 2nd 35 U.S.C. 111(a) application under 35 U.S.C. 122(b)|11=01 Nov 2003|12=Patent granted on the 2nd 35 U.S.C. 111(a) application|13=|14=|15=|16=|17=|18=}}




The 35 U.S.C. 102(e)(1) date for the Publication is: 21 June 1999. The 35 U.S.C. 102(e)(2) date for the Patent is: 21 June 1999.




 
Example 4: References based on the '''national stage (35 U.S.C. 371)''' of an '''International Application filed on or after November 29, 2000''' and which was published in '''English''' under PCT Article 21(2).
The 35 U.S.C. 102(e)(1) date for the Publication is: 21 June 1999.The 35 U.S.C. 102(e)(2) date for the Patent is: 21 June 1999.
2nd 35 U.S.C.
111(a) application
filed under 37
CFR 1.53(b) or (d)
with 35 U.S.C.
120 benefit
claim
16 Aug 2001 14 Mar 2002
1st 35 U.S.C. 111(a)
application filed
claiming
35 U.S.C. 119(a)-(d)
priority to Japanese
applicationForeignapplicationfiled in JapanPublication of
the 2nd 35 U.S.C.
111(a)
applicationunder 35 U.S.C.
122(b)
11/29/0021 Jun 1999
22 Jun 1998 01 Nov 2003
Patent granted
on the 2nd 35
U.S.C. 111(a)
application
 
 
The 35 U.S.C. 102(e)(1) date for the Publication is: 21 June 1999.
The 35 U.S.C. 102(e)(2) date for the Patent is: 21 June 1999.
 
 
 
 
 
Example 4: References based on the national stage (35  
U.S.C. 371) of an International Application filed on  
or after November 29, 2000 and which was published in English under PCT Article 21(2).


All references, whether the WIPO publication, the U.S. patent application publication or the U.S. patent, of an  
All references, whether the WIPO publication, the U.S. patent application publication or the U.S. patent, of an  
Line 1,284: Line 1,294:
U.S.C. 102(e) prior art purposes if the IA was published  
U.S.C. 102(e) prior art purposes if the IA was published  
under PCT Article 21(2) in a language other than English.
under PCT Article 21(2) in a language other than English.
{{Timeline|2=11/29/2000|1=AIPA effective date|3=01 Jan 2001|4=IA filed in Swedish, US designated|6=01 July 2002|5=IA publication by WIPO <u>''in English''</u>|7=01 Jun 2003|8=35 U.S.C. 371(c)(1), (2), and (4) fullfillment)|10=01 Jul 2003|9=Publication by USPTO under 35 U.S.C. 122(b)|11=01 Nov 2003|12=Patent granted on 35 U.S.C. 371 application|13=|14=|15=|16=|17=|18=}}




 
The 35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: 01 Jan. 2001. The 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: 01 Jan. 2001. The 35 U.S.C. 102(e)(2) date for the Patent is: 01 Jan. 2001.
 
 
The 35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: 01 Jan. 2001.The 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: 01 Jan. 2001.The 35 U.S.C. 102(e)(2) date for the Patent is: 01 Jan. 2001.
 
 
The 35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: 01 Jan. 2001.
The 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: 01 Jan. 2001.
The 35 U.S.C. 102(e)(2) date for the Patent is: 01 Jan. 2001.


Additional Benefit Claims:
Additional Benefit Claims:
Line 1,315: Line 1,318:
U.S.C. 119(e) or 120.
U.S.C. 119(e) or 120.


 
'''Example 5''': References based on the '''national stage (35 U.S.C. 371)''' of an '''International Application filed on or after November 29, 2000''' and which was '''not''' published in '''English''' under PCT Article 21(2).
 
 
 
 
 
 
 
Example 5: References based on the national stage (35  
U.S.C. 371) of an International Application filed on  
or after November 29, 2000 and which was not published in English under PCT Article 21(2).


All references, whether the WIPO publication, the U.S. patent application publication or the U.S. patent, of an  
All references, whether the WIPO publication, the U.S. patent application publication or the U.S. patent, of an  
Line 1,337: Line 1,329:
art purposes if the IA was published under PCT Article 21(2) in a language other than English, regardless of  
art purposes if the IA was published under PCT Article 21(2) in a language other than English, regardless of  
whether the international application entered the national stage. Such references may be applied under  
whether the international application entered the national stage. Such references may be applied under  
35  
35 U.S.C. 102(a) or (b) as of their publication dates, but never under 35 U.S.C. 102(e).
U.S.C. 102(a) or (b) as of their publication dates, but never under 35  
{{Timeline|2=11/29/2000|1=AIPA effective date|3=01 Jan 2001|4=IA filed, US designated|6=01 July 2002|5=IA publication by WIPO <u>''NOT in English''</u>|7=01 Jun 2003|8=35 U.S.C. 371(c)(1), (2), and (4) fullfillment)|10=02 Oct 2003|9=Publication by USPTO under 35 U.S.C. 122(b)|11=02 Nov 2004|12=Patent granted on 35 U.S.C. 371 application|13=|14=|15=|16=|17=|18=}}
U.S.C. 102(e).




 
The 35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: None. The 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: None. The 35 U.S.C. 102(e)(2) date for the Patent is: None.
 
 
The 35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: None.The 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: None.The 35 U.S.C. 102(e)(2) date for the Patent is: None.
 
 
The 35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: None.
The 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: None.
The 35 U.S.C. 102(e)(2) date for the Patent is: None.


The IA publication by WIPO can be applied under 35  
The IA publication by WIPO can be applied under 35  
Line 1,363: Line 1,346:


If a later-filed U.S. nonprovisional (35  
If a later-filed U.S. nonprovisional (35  
U.S.C. 111(a)) application claimed the benefit of the IA in the example  
U.S.C. 111(a)) application claimed the benefit of the IA in the example above, the 35 U.S.C. 102(e) date of the patent or publication of the later-filed U.S. application would be the  
above, the 35  
U.S.C. 102(e) date of the patent or publication of the later-filed U.S. application would be the  
actual filing date of the later-filed U.S. application.
actual filing date of the later-filed U.S. application.




'''Example 6''': References based on the national stage ('''35 U.S.C. 371''') of an '''International Application filed prior to November 29, 2000''' (language of the publication under PCT Article 21(2) is not relevant).


 
The reference U.S. patent issued from an international application (IA) that was filed prior to November 29,  
 
2000 has a 35  
 
U.S.C. 102(e) prior art date of the date of fulfillment of the requirements of 35  
 
 
 
Example 6: References based on the national stage (35
U.S.C. 371) of an International Application filed
prior to November 29, 2000 (language of the publication under PCT Article 21(2) is not relevant).
 
The reference U.S. patent issued from an international application (IA) that was filed prior to November 29,  
2000 has a 35  
U.S.C. 102(e) prior art date of the date of fulfillment of the requirements of 35  
U.S.C. 371(c)(1),  
U.S.C. 371(c)(1),  
(2) and (4). This is the pre-AIPA 35  
(2) and (4). This is the pre-AIPA 35  
Line 1,396: Line 1,367:
U.S.C. 102(a) or (b) as of their publication dates.
U.S.C. 102(a) or (b) as of their publication dates.


{{Timeline|2=01 Jan 2000|1=IA filed in Canada, desig. the US|3=11/29/2000|4=AIPA effective date|6=01 July 2001|5=Publication of IA in ''any language'' under PCT Art. 21(2) by WIPO|7=01 July 2002|8=National Stage (NS)fulfilling 35 U.S.C. 371(c)(1), (2), and (4)|10=03 Oct 2002|9=Voluntary Publication of NS under 35 U.S.C. 122(b)|11=01 Nov 2003|12=Patent granted on 35 U.S.C. 371 application|13=|14=|15=|16=|17=|18=}}




 
The 35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: None.The 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: None. The 35 U.S.C. 102(e) date for the Patent is: 01 July 2002.
 
The 35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: None.The 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: None.The 35 U.S.C. 102(e) date for the Patent is: 01 July 2002.
 
 
The 35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: None.
The 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: None.
The 35 U.S.C. 102(e) date for the Patent is: 01 July 2002.


The IA publication by WIPO can be applied under 35  
The IA publication by WIPO can be applied under 35  
Line 1,430: Line 1,395:
35  
35  
U.S.C. 371(c)(1), (2) and (4)).
U.S.C. 371(c)(1), (2) and (4)).


If the patent was based on a later-filed U.S. application that claimed the benefit of the international application  
If the patent was based on a later-filed U.S. application that claimed the benefit of the international application  
Line 1,448: Line 1,404:




 
'''Example 7''': References based on a 35  
 
U.S.C. 111(a) Application which is a '''Continuation of an International Application''', which was filed on or after '''November 29, 2000, designated the U.S.''' and was '''published in English''' under PCT Article 21(2).
 
Example 7: References based on a 35  
U.S.C. 111(a) Application which is a Continuation of an International  
Application, which was filed on or after November 29, 2000, designated the U.S. and was published in  
English under PCT Article 21(2).


All references, whether the WIPO publication, the U.S. patent application publication or the U.S. patent of, or  
All references, whether the WIPO publication, the U.S. patent application publication or the U.S. patent of, or  
Line 1,466: Line 1,417:
that the earlier-filed IA has proper support for the subject matter of the later-filed U.S. application as required  
that the earlier-filed IA has proper support for the subject matter of the later-filed U.S. application as required  
by 35 U.S.C. 120 and 365(c).
by 35 U.S.C. 120 and 365(c).
 
{{Timeline|2=11/29/00|1=AIPA effective date|3=01 Mar 2001|4=IA filed, US was designated|6=01 Sep 2002|5=IA Publication by WIPO ''<u>in English</u>'''|7=01 May 2003|8=35 U.S.C. 111(a) application claiming the benefit of the IA under 35 U.S.C. 365(c) is filed|10=01 July 2003|9=Publication of 35 U.S.C. 111(a) appl. by USPTO under 35 U.S.C. 122(b)|11=01 Nov 2004|12=Patent granted on 35 U.S.C. 111 (a) application|13=|14=|15=|16=|17=|18=}}
 
 




The 35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: 01 Mar. 2001.The 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: 01 Mar. 2001.The 35 U.S.C. 102(e)(2) date for the Patent is: 01 Mar. 2001.
The 35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: 01 Mar. 2001.The 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: 01 Mar. 2001.The 35 U.S.C. 102(e)(2) date for the Patent is: 01 Mar. 2001.
The 35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: 01 Mar. 2001.
The 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: 01 Mar. 2001.
The 35 U.S.C. 102(e)(2) date for the Patent is: 01 Mar. 2001.


Additional Benefit Claims:
Additional Benefit Claims:
Line 1,487: Line 1,426:
If the IA properly claimed the benefit of an earlier-filed U.S. provisional (35  
If the IA properly claimed the benefit of an earlier-filed U.S. provisional (35  
U.S.C. 111(b)) application  
U.S.C. 111(b)) application  
or the benefit of an earlier-filed U.S. nonprovisional (35  
or the benefit of an earlier-filed U.S. nonprovisional (35 U.S.C. 111(a)) application, the 35  
U.S.C. 111(a)) application, the 35  
U.S.C. 102(e) date  
U.S.C. 102(e) date  
for all the references would be the filing date of the earlier-filed U.S. application, assuming the earlier-filed  
for all the references would be the filing date of the earlier-filed U.S. application, assuming the earlier-filed  
Line 1,503: Line 1,441:
U.S.C. 120 and 365(c).
U.S.C. 120 and 365(c).


 
'''Example 8''': References based on a 35  
 
U.S.C. 111(a) Application which is a '''Continuation of an International Application''', which was '''filed on or after November 29, 2000''' and was '''not published in English''' under PCT Article 21(2).
 
 
Example 8: References based on a 35  
U.S.C. 111(a) Application which is a Continuation of an International  
Application, which was filed on or after November 29, 2000 and was not published in English under PCT  
Article 21(2).


Both the U.S. publication and the U.S. patent of the 35  
Both the U.S. publication and the U.S. patent of the 35  
Line 1,526: Line 1,458:
under 35  
under 35  
U.S.C. 102(a) or (b) as of its publication date.
U.S.C. 102(a) or (b) as of its publication date.
{{Timeline|2=11/29/00|1=AIPA effective date|3=01 Mar 2001|4=IA filed, US was designated|6=01 Sep 2002|5=IA Publication by WIPO ''<u>NOT in English</u>'''|7=01 May 2003|8=35 U.S.C. 111(a) application claiming the benefit of the IA under 35 U.S.C. 365(c) is filed|10=01 July 2003|9=Publication of 35 U.S.C. 111(a) appl. by USPTO under 35 U.S.C. 122(b)|11=01 Nov 2004|12=Patent granted on 35 U.S.C. 111 (a) application|13=|14=|15=|16=|17=|18=}}




The 35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: None.The 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: 01 May 2003.The 35 U.S.C. 102(e)(2) date for the Patent is: 01 May 2003


The IA publication by WIPO can be applied under 35
U.S.C. 102(a) or (b) as of its publication date (01 Sept
2002).


 
Additional Benefit Claims:
The 35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: None.The 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: 01 May 2003.The 35 U.S.C. 102(e)(2) date for the Patent is: 01 May 2003
 
 
The 35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: None.
The 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: 01 May 2003.
The 35 U.S.C. 102(e)(2) date for the Patent is: 01 May 2003
 
 
 
 
 
The IA publication by WIPO can be applied under 35
U.S.C. 102(a) or (b) as of its publication date (01 Sept
2002).
 
Additional Benefit Claims:


If the IA properly claimed the benefit of any earlier-filed U.S. application (whether provisional or nonprovisional),  
If the IA properly claimed the benefit of any earlier-filed U.S. application (whether provisional or nonprovisional),  
Line 1,567: Line 1,487:




 
'''Example 9''': References based on a 35  
 
U.S.C. 111(a) Application which is a '''Continuation''' (filed prior to any  
 
entry of the national stage) '''of an International Application''', which was '''filed prior to November 29, 2000''' (language of the publication under PCT Article 21(2) is not relevant).
Example 9: References based on a 35  
U.S.C. 111(a) Application which is a Continuation (filed prior to any  
entry of the national stage) of an International Application, which was filed prior to November 29, 2000  
(language of the publication under PCT Article 21(2) is not relevant).


Both the U.S. publication and the U.S. patent of the 35  
Both the U.S. publication and the U.S. patent of the 35  
Line 1,588: Line 1,504:
under PCT Article 21(2) can be applied under 35  
under PCT Article 21(2) can be applied under 35  
U.S.C. 102(a) or (b) as of its publication date.
U.S.C. 102(a) or (b) as of its publication date.
 
{{Timeline|2=01 Mar 2000|1=IA filed, with priority claim, US designated|3=01 Sep 2000|4=IA Publication by WIPO ''<u> in any language</u>'''|6=11/29/00|5=AIPA effective date|7=01 Dec 2000|8=35 U.S.C. 111(a) application filed claiming benefit of the prior IA application|10=06 Dec 2001|9=Publication of 35 U.S.C. 111(a) appl. by USPTO under 35 U.S.C. 122(b)|11=06 Aug 2002|12=Patent granted to 35 U.S.C. 111 (a) application|13=|14=|15=|16=|17=|18=}}
 
 




The 35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: None.The 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: 01 Dec. 2000.The 35 U.S.C. 102(e)(2) date for the Patent is: 01 Dec. 2000.
The 35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: None.The 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: 01 Dec. 2000.The 35 U.S.C. 102(e)(2) date for the Patent is: 01 Dec. 2000.
The 35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: None.
The 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: 01 Dec. 2000.
The 35 U.S.C. 102(e)(2) date for the Patent is: 01 Dec. 2000.


The IA publication by WIPO can be applied under 35  
The IA publication by WIPO can be applied under 35  
Line 1,628: Line 1,532:
above (01 Dec 2000).
above (01 Dec 2000).


 
======III. FLOWCHARTS======
 
 
 
 
 
 
 
III.FLOWCHARTS
 
 


Flowchart for 35 U.S.C. 102(e)DatesFlowchart for 35 U.S.C. 102(e)Dates
Flowchart for 35 U.S.C. 102(e)DatesFlowchart for 35 U.S.C. 102(e)Dates
Line 1,788: Line 1,681:
   
   


706.02(f)(2)Provisional Rejections Under35 U.S.C. 102(e); Reference Is  
=====706.02(f)(2) Provisional Rejections Under35 U.S.C. 102(e); Reference Is a Copending U.S. Patent Application=====
a Copending U.S. Patent  
Application [R-3]


If an earlier filed, copending, and unpublished U.S.  
If an earlier filed, copending, and unpublished U.S.  
Line 1,797: Line 1,688:
U.S. application which has a different inventive  
U.S. application which has a different inventive  
entity, the examiner should determine whether a provisional  
entity, the examiner should determine whether a provisional  
35  
35 U.S.C. 102(e) rejection of the later filed  
U.S.C. 102(e) rejection of the later filed  
application can be made. In addition, a provisional  
application can be made. In addition, a provisional  
35  
35 U.S.C. 102(e) rejection may be made, in the circumstances  
U.S.C. 102(e) rejection may be made, in the circumstances  
described below, if the earlier filed, pending  
described below, if the earlier filed, pending  
application has been published as redacted  
application has been published as redacted  
(37  
(37 CFR 1.217) and the subject matter relied upon in  
CFR 1.217) and the subject matter relied upon in  
the rejection is not supported in the redacted publication  
the rejection is not supported in the redacted publication  
of the patent application.
of the patent application.


I.COPENDING U.S. APPLICATIONS HAVING  
======I. COPENDING U.S. APPLICATIONS HAVING AT LEAST ONE COMMON INVENTOR OR ARE COMMONLY ASSIGNED======
AT LEAST ONE COMMON INVENTOR  
OR ARE COMMONLY ASSIGNED


If (1) at least one common inventor exists  
If (1) at least one common inventor exists  
Line 1,831: Line 1,717:
be overcome in the same manner that a 35 U.S.C.  
be overcome in the same manner that a 35 U.S.C.  
102(e) rejection can be overcome. See MPEP  
102(e) rejection can be overcome. See MPEP  
§
§ 706.02(b). The provisional rejection can also be  
706.02(b). The provisional rejection can also be  
overcome by abandoning the applications and filing a  
overcome by abandoning the applications and filing a  
new application containing the subject matter of both.
new application containing the subject matter of both.


Form paragraph 7.15.01 should be used when making
======II. COPENDING APPLICATIONS HAVING NO COMMON INVENTOR OR ASSIGNEE======
a provisional rejection under 35 U.S.C. 102(e).


 
If there is no common assignee or common inventor  
 
and the application was not published pursuant to  
¶ 7.15.01 Provisional Rejection, 35 U.S.C. 102(e) -
35 U.S.C. 122(b), the confidential status of applications  
Common Assignee or At Least One Common Inventor
 
Claim [1] provisionally rejected under 35 U.S.C. 102(e) as
being anticipated by copending Application No. [2] which has a
common [3] with the instant application.
 
Based upon the earlier effective U.S. filing date of the copending
application, it would constitute prior art under 35 U.S.C.
102(e), if published under 35 U.S.C. 122(b) or patented. This provisional
rejection under 35 U.S.C. 102(e) is based upon a presumption
of future publication or patenting of the copending
application. [4].
 
This provisional rejection under 35 U.S.C. 102(e) might be
overcome either by a showing under 37 CFR 1.132 that any
invention disclosed but not claimed in the copending application
was derived from the inventor of this application and is thus not
the invention “by another,” or by an appropriate showing under 37
CFR 1.131.
 
This rejection may not be overcome by the filing of a terminal
disclaimer. See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885
(Fed. Cir. 1991).
 
Examiner Note:
 
1.This form paragraph is used to provisionally reject over a
copending application with an earlier filing date that discloses the
claimed invention which has not been published under 35 U.S.C.
122. The copending application must have either a common
assignee or at least one common inventor.
 
2. Use 35 U.S.C. 102(e) as amended by the American Inventors
Protection Act and the Intellectual Property and High Technology
Technical Amendments Act of 2002 (form paragraph 7.12)
to determine the copending application reference’s prior art date,
unless the copending application reference is based directly, or
indirectly, from an international application which has an international
filing date prior to November 29, 2000. If the copending
application reference is either a national stage of an international
application (application under 35 U.S.C. 371) which has an international
filing date prior to November 29, 2000, or a continuing
application claiming benefit under 35 U.S.C. 120, 121, or 365(c)
to an international application having an international filing date
prior to November 29, 2000, use pre-AIPA 35 U.S.C. 102(e)
(form paragraph 7.12.01). See the Examiner Notes for form paragraphs
7.12 and 7.12.01 to assist in the determination of the 35
U.S.C. 102(e) date.
 
3.If the claims would have been obvious over the invention
disclosed in the other copending application, use form paragraph
7.21.01.
 
4.In bracket 3, insert either --assignee-- or --inventor--.
 
5.In bracket 4, an appropriate explanation may be provided in
support of the examiner’s position on anticipation, if necessary.
 
6.If the claims of the copending application conflict with the
claims of the instant application, a provisional double patenting
rejection should also be given using form paragraphs 8.30 and
8.32.
 
7.If evidence is additionally of record to show that either
invention is prior art unto the other under 35 U.S.C. 102(f) or (g),
a rejection using form paragraphs 7.13 and/or 7.14 should also be
made.
 
 
 
 
 
 
 
II.COPENDING APPLICATIONS HAVING
NO COMMON INVENTOR OR ASSIGNEE
 
If there is no common assignee or common inventor  
and the application was not published pursuant to  
35 U.S.C. 122(b), the confidential status of applications  
under 35 U.S.C. 122(a) must be maintained and  
under 35 U.S.C. 122(a) must be maintained and  
no rejection can be made relying on the earlier filed,  
no rejection can be made relying on the earlier filed,  
Line 1,940: Line 1,742:
as a reference in a rejection under 35 U.S.C. 102(e) in  
as a reference in a rejection under 35 U.S.C. 102(e) in  
the still pending application as appropriate. See  
the still pending application as appropriate. See  
MPEP §
MPEP § 706.02(a) and § 2136 et seq.
706.02(a) and § 2136 et seq.


706.02(g)Rejections Under 35 U.S.C.  
====706.02(g) Rejections Under 35 U.S.C. 102(f)====
102(f)  


35 U.S.C. 102(f) bars the issuance of a patent  
35 U.S.C. 102(f) bars the issuance of a patent  
Line 1,960: Line 1,759:
See MPEP § 2137 - § 2137.02 for more information  
See MPEP § 2137 - § 2137.02 for more information  
on the substantive requirements of rejections under  
on the substantive requirements of rejections under  
35  
35 U.S.C. 102(f).
U.S.C. 102(f).


706.02(h)Rejections Under 35 U.S.C.  
====706.02(h) Rejections Under 35 U.S.C. 102(g)====
102(g)


35 U.S.C. 102(g) bars the issuance of a patent  
35 U.S.C. 102(g) bars the issuance of a patent  
Line 1,972: Line 1,769:
basis for interference practice. See MPEP Chapter  
basis for interference practice. See MPEP Chapter  
2300 for more information on interference procedure.  
2300 for more information on interference procedure.  
See MPEP § 2138 - §
See MPEP § 2138 - § 2138.06 for more information  
2138.06 for more information  
on the requirements of 35 U.S.C. 102(g).
on the requirements of 35 U.S.C. 102(g).


706.02(i)Form Paragraphs for Use inRejections Under 35 U.S.C. 102[R-3]
====706.02(j) Contents of a 35 U.S.C. 103 Rejection====


The following form paragraphs should be used in  
35 U.S.C. 103 authorizes a rejection where, to meet
making the appropriate rejections.
the claim, it is necessary to modify a single reference
or to combine it with one or more other references.
After indicating that the rejection is under 35 U.S.C.
103, the examiner should set forth in the Office
action:


Note that the particular part of the reference relied  
(A)the relevant teachings of the prior art relied  
upon to support the rejection should be identified.
upon, preferably with reference to the relevant column
or page number(s) and line number(s) where
appropriate,


¶ 7.07 Statement of Statutory Basis, 35 U.S.C. 102
(B)the difference or differences in the claim over
the applied reference(s),


The following is a quotation of the appropriate paragraphs of
(C)the proposed modification of the applied reference(
35 U.S.C. 102 that form the basis for the rejections under this section
s) necessary to arrive at the claimed subject
made in this Office action:
matter, and


A person shall be entitled to a patent unless --
(D)an explanation why one of ordinary skill in
the art at the time the invention was made would have
been motivated to make the proposed modification.


Examiner Note:
To establish a prima facie case of obviousness,
three basic criteria must be met. First, there must be
some suggestion or motivation, either in the references
themselves or in the knowledge generally available
to one of ordinary skill in the art, to modify the
reference or to combine reference teachings. Second,
there must be a reasonable expectation of success.
Finally, the prior art reference (or references when
combined) must teach or suggest all the claim limitations.
The teaching or suggestion to make the claimed
combination and the reasonable expectation of success
must both be found in the prior art and not based
on applicant’s disclosure. In re Vaeck, 947 F.2d 488,
20
USPQ2d 1438 (Fed. Cir. 1991). See MPEP § 2143- § 2143.03 for decisions pertinent to each of these
criteria.


1.The statute is no longer being re-cited in all Office actions. It
The initial burden is on the examiner to provide
is only required in first actions on the merits and final rejections.
some suggestion of the desirability of doing what the
Where the statute is not being cited in an action on the merits, use
inventor has done. “To support the conclusion that the
form paragraph 7.103.
claimed invention is directed to obvious subject matter,
either the references must expressly or impliedly
suggest the claimed invention or the examiner must
present a convincing line of reasoning as to why the  
artisan would have found the claimed invention to
have been obvious in light of the teachings of the references.”
Ex parte Clapp, 227 USPQ 972, 973 (Bd.
Pat. App. & Inter. 1985). See MPEP § 2144 -
§ 2144.09 for examples of reasoning supporting obviousness
rejections.  


2.Form paragraphs 7.07 to 7.14 are to be used ONLY ONCE in
Where a reference is relied on to support a rejection,
a given Office action.
whether or not in a minor capacity, that reference
should be positively included in the statement of the
rejection. See In re Hoch, 428 F.2d 1341, 1342 n.3
166 USPQ 406, 407 n. 3 (CCPA 1970).


¶ 7.08 102(a), Activity by Another Before Invention by
It is important for an examiner to properly communicate
Applicant
the basis for a rejection so that the issues can be
identified early and the applicant can be given fair
opportunity to reply. Furthermore, if an initially
rejected application issues as a patent, the rationale
behind an earlier rejection may be important in interpreting
the scope of the patent claims. Since issued
patents are presumed valid (35 U.S.C. 282) and constitute
a property right (35 U.S.C. 261), the written
record must be clear as to the basis for the grant. Since
patent examiners cannot normally be compelled to
testify in legal proceedings regarding their mental
processes (see MPEP § 1701.01), it is important that
the written record clearly explain the rationale for
decisions made during prosecution of the application.


(a) the invention was known or used by others in this country,  
See MPEP § 2141 - § 2144.09 generally for guidance
or patented or described in a printed publication in this or a foreign
on patentability determinations under 35 U.S.C.
country, before the invention thereof by the applicant for a  
103, including a discussion of the requirements of
patent.
Graham v. John Deere, 383 U.S. 1, 148 USPQ 459
(1966). See MPEP § 2145 for consideration of applicant’s
rebuttal arguments. See MPEP § 706.02(l) -
§ 706.02(l)(3) for a discussion of prior art disqualified
under 35 U.S.C. 103(c).


Examiner Note:
====706.02(k) Provisional Rejection (Obviousness) Under 35 U.S.C. 102(e)/103====


This form paragraph must be preceded by form paragraph 7.07.
For patent applications pending on or after Dec. 10, 2004, examination proceedings, subject matter which
was prior art under former 35 U.S.C. 103 via
35 U.S.C. 102(e) was disqualified as prior art against
the claimed invention if that subject matter and the
claimed invention "were, at the time the invention
was made, owned by the same person or subject to an
obligation of assignment to the same person."


¶ 7.09 102(b), Activity More Than One Year Prior to Filing
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 three conditions are met:


(b) the invention was patented or described in a printed publication
(A) the claimed invention was made by or on
in this or a foreign country or in public use or on sale in this
behalf of parties to a joint research agreement that
country, more than one year prior to the date of application for
was in effect on or before the date the claimed invention
patent in the United States.
was made;


Examiner Note:
(B) the claimed invention was made as a result of
activities undertaken within the scope of the joint
research agreement; and


This form paragraph must be preceded by paragraph form 7.07,
(C) the application for patent for the claimed
and may be preceded by form paragraph 7.08.
invention discloses or is amended to disclose the
names of the parties to the joint research agreement.


¶ 7.10 102(c), Invention Abandoned
For reexamination proceedings, the above rules are in effect only for patents granted on or after December 10, 2004.


(c) he has abandoned the invention.
Where two applications of different inventive entities
are copending, not published under 35 U.S.C.
122(b), and the filing dates differ, a provisional rejection
under 35 U.S.C. 102(e)/103 should be made in
the later filed application unless the application has
been excluded under 35 U.S.C. 103(c).


Examiner Note:
Provisional rejections are used to maintain confidentiality of unpublished applications.


This form paragraph must be preceded by form paragraph 7.07,
A provisional rejection alerts the applicant that
and may be preceded by one or more of form paragraphs 7.08 and  
he or she can expect an actual rejection on the same
7.09.
ground if one of the applications issues and also lets
applicant know that action must be taken to avoid the
rejection.


¶ 7.11 102(d), Foreign Patenting
This gives applicant the opportunity to analyze the
propriety of the rejection and possibly avoid the loss
of rights to desired subject matter. Provisional rejections
of the obviousness type under 35 U.S.C. 102(e)/
103 are rejections applied to copending applications
having different effective filing dates wherein each
application has a common assignee or a common
inventor. The earlier filed application, if patented or
published, would constitute prior art under 35
U.S.C.
102(e). The rejection can be overcome by:


(d) the invention was first patented or caused to be patented, or
(A) Arguing patentability over the earlier filed
was the subject of an inventor’s certificate, by the applicant or his
application;
legal representatives or assigns in a foreign country prior to the
date of the application for patent in this country on an application  


(B) Combining the subject matter of the copending
applications into a single application claiming
benefit under 35 U.S.C. 120 of the prior applications
and abandoning the copending applications (Note that
a claim in a subsequently filed application that relies
on a combination of prior applications may not be
entitled to the benefit of an earlier filing date under
35
U.S.C. 120 since 35 U.S.C. 120 requires that the
earlier filed application contain a disclosure which
complies with 35 U.S.C. 112, first paragraph for each
claim in the subsequently filed application.);


(C) Filing an affidavit or declaration under
37 CFR 1.132 showing that any unclaimed invention
disclosed in the copending application was derived
from the inventor of the other application and is thus
not invention "by another" (see MPEP § 715.01(a),
§ 715.01(c), and § 716.10);


(D) Filing an affidavit or declaration under
37 CFR 1.131 showing a date of invention prior to the
effective U.S. filing date of the copending application.
See MPEP § 715; or


(E) For an application that is pending on or after
 
December 10, 2004, a showing that (1) the prior art
for patent or inventor’s certificate filed more than twelve months
and the claimed invention were, at the time the invention
before the filing of the application in the United States.
was made, owned by the same person or subject
 
to an obligation of assignment to the same person, or
Examiner Note:
(2) the subject matter is disqualified under the amendment
 
to 35 U.S.C. 103(c) made by the CREATE Act
This form paragraph must be preceded by form paragraph 7.07,
(i.e., joint research agreement disqualification).
and may be preceded by one or more of form paragraphs 7.08 to
7.10.


¶ 7.12 Rejection under 35 U.S.C 102(e), Patent
Where the applications are claiming the same patentable
Application Publication or Patent to Another with Earlier
invention, a terminal disclaimer and an affidavit
Filing Date, in view of the American Inventors Protection
or declaration under 37 CFR 1.130 may be used to
Act of 1999 (AIPA) and the Intellectual Property and High
overcome a rejection under 35 U.S.C. 103 in a common
Technology Technical Amendments Act of 2002
ownership situation if the earlier filed application
has been published or matured into a patent. See
[[MPEP 718]].


(e) the invention was described in (1) an application for patent,  
If a provisional rejection is made and the copending
published under section 122(b), by another filed in the United
applications are combined into a single application
States before the invention by the applicant for patent or (2) a  
and the resulting single application is subject to a
patent granted on an application for patent by another filed in the
restriction requirement, the divisional application
United States before the invention by the applicant for patent,  
would not be subject to a provisional or actual rejection
except that an international application filed under the treaty
under 35 U.S.C. 102(e)/103 since the provisions
defined in section 351(a) shall have the effects for purposes of this
of 35 U.S.C. 121 preclude the use of a patent issuing
subsection of an application filed in the United States only if the  
therefrom as a reference against the other application.
international application designated the United States and was
Additionally, the resulting continuation-in-part is entitled
published under Article 21(2) of such treaty in the English language.
to 35 U.S.C. 120 benefit of each of the prior
applications. This is illustrated in Example 2, below.


The following examples are instructive as to the
application of 35 U.S.C. 102(e)/103 in applications
filed prior to November 29, 1999 for which a patent
was granted prior to December 10, 2004:


Examiner Note:


1.This form paragraph should only be used if the reference is
'''''Example 1'''''. Assumption: Employees A and B
one of the following:
work for C, each with knowledge of the other's
work, and with obligation to assign inventions to C
while employed.


(a)a U.S. patent or a publication of a U.S. application for patent  
{| border="1" cellspacing="0" cellpadding="5" align="center" width="90%"
filed under 35 U.S.C. 111(a);
!width="50%"|SITUATIONS
!width="50%"|RESULTS
|-
|1. A invents X and later files application.
|This is permissible.
|-
|2. B modifies X to XY. B files application before A’s filing.
|No 35 U.S.C. 102(f)/103 or 102(g)/103 rejection; provisional 35 U.S.C. 102(e)/103 rejection applies. Provisional double patenting rejection made.
|-
|3. B’s patent issues.
|A’s claims rejected under 35 U.S.C. 102(e)/103 and double patenting.
|-
|4. A files 37 CFR 1.130 affidavit to disqualify B’s patent as prior art where the same patentable invention is being claimed. Terminal disclaimer filed under 37 CFR 1.321(c).
|Rejection under 35 U.S.C. 102(e)/103 may be overcome and double patenting rejection may be overcome if inventions X and XY are commonly owned and all requirements of 37 CFR 1.130 and 1.321 are met.
|}
In situation (2.) above, the result is a provisionalrejection by the examiner under 35 U.S.C. 102(e)/
103. The rejection is provisional since the subject
matter and the prior art are pending applications.


(b)a U.S. patent issued directly or indirectly from, or a U.S. or
WIPO publication of, an international application if the international
application has an international filing date on or after
November 29, 2000.


2.In determining the 35 U.S.C. 102(e) date, consider priority/
'''''Example 2'''''. Assumption: Employees A and B
benefit claims to earlier-filed U.S. provisional applications under
work for C, each with knowledge of the other’s
35 U.S.C. 119(e), U.S. nonprovisional applications under 35
work, and with obligation to assign inventions to C  
U.S.C. 120 or 121, and international applications under 35 U.S.C.
while employed.
120, 121 or 365(c) if the subject matter used to make the rejection
is appropriately supported in the relied upon earlier-filed application’s
disclosure (and any intermediate application(s)). Do NOT
consider foreign priority claims under 35 U.S.C. 119(a)-(d) and
365(a).


3.In order to rely on an international filing date for prior art
{| border="1" cellspacing="0" cellpadding="5" align="center" width="90%"
purposes under 35 U.S.C. 102(e), the international application  
!width="50%"|SITUATIONS
must have been filed on or after November 29, 2000, it must have
!width="50%"|RESULTS
designated the U.S., and the international publication under PCT
|-
Article 21(2) by WIPO must have been in English. If any one of  
|1. A invents X and files application.
the conditions is not met, the international filing date is not a U.S.  
|This is permissible.
filing date for prior art purposes under 35 U.S.C. 102(e).
|-
|2. B modifies X to XY after A’s application is filed. B files application establishing that A and B were both under obligation to assign inventions to C at the time the inventions were made.
|Provisional 35 U.S.C. 102(e)/103 rejection made; provisional double patenting rejection made; no 35 U.S.C. 102(f)/103 or 102(g)/103 rejection made.
|-
|3. A and B file continuing application claiming priority to both their earlier applications and abandon the earlier applications.
|Assume it is proper that restriction be required between X and XY.
|-
|4. X is elected and patent issues on X with divisional application being timely filed on XY.
|No rejection of divisional application under 35 U.S.C. 102(e)/103 in view of 35 U.S.C. 121.
|}
The following examples are instructive as to rejections
under 35 U.S.C. 102(e)/103 in applications that
are pending on or after December 10, 2004:


4.If an international application was published by WIPO in a
language other than English, or did not designate the U.S., the
International Application’s publication by WIPO, the U.S. publication
of the national stage application (35 U.S.C. 371) of the
international application and a U.S. patent issued from the
national stage of the international application may not be applied
as a reference under 35 U.S.C. 102(e). The reference may be
applied under 35 U.S.C. 102(a) or (b) as of its publication date.
See form paragraphs 7.08 and 7.09.


5.If an international application was published by WIPO in a
'''''Example 3'''''. Assumption: Employees A and B
language other than English, or did not designate the U.S., the
work for C, each with knowledge of the other’s
U.S. publication of, or a U.S. patent issued from, a continuing
work, and with obligation to assign inventions to C
application claiming benefit under 35 U.S.C. 120, 121, or 365(c)
while employed. Employee A’s application, which
to such an international application, has a 35 U.S.C. 102(e) date as
is pending on or after December 10, 2004, is being
of the earliest U.S. filing date after the international filing date.  
examined.


6.If the reference is a U.S. patent issued directly, or indirectly,
{| border="1" cellspacing="0" cellpadding="5" align="center" width="90%"
from an international application that has an international filing
!width="50%"|SITUATIONS
date prior to November 29, 2000, use form paragraph 7.12.01. In  
!width="50%"|RESULTS
that situation, pre-AIPA 35 U.S.C. 102(e) is applicable in the  
|-
determination of the prior art date of the patent issued from such
|1. A invents X and later files application.  
an international application.  
|This is permissible.
|-
|2. B modifies X to XY. B files application before A’s filing. A files an application on invention X.
|Provisional 35 U.S.C. 102(e)/103 rejection and a provisional double patenting rejection are made.
|-
|3. B’s patent issues.
|A’s claims are rejected under 35 U.S.C. 102(e)/103 and double patenting.
|-
|4. A files evidence of common ownership of inventions X and XY at the time invention XY was made to disqualify B’s patent as prior art. In addition, A files a terminal disclaimer under 37 CFR 1.321(c).
|Rejection under 35 U.S.C. 102(e)/103 will be withdrawn and double patenting rejection will be obviated if inventions X and XY are commonly owned at the time invention XY was made and all requirements of 37 CFR 1.321 are met.
|}
In situation (2.) above, the result is a provisionalrejection by the examiner under 35 U.S.C. 102(e)/
103. The rejection is provisional since the subject
matter and the prior art are pending applications.  


7.If the reference is a publication of an international application
(including the U.S. publication of a national stage (35 U.S.C.
371)) that has an international filing date prior to November 29,
2000, do not use this form paragraph. Such a reference may not be
applied as a prior art reference under 35 U.S.C. 102(e). The reference
may be applied under 35 U.S.C. 102(a) or (b) as of its publication
date. See form paragraphs 7.08 and 7.09.


8.This form paragraph must be preceded by form paragraph
'''''Example 4'''''. Assumption: Employees A and B
7.07, and may be preceded by one or more of form paragraphs
work for C, each with knowledge of the other’s
7.08 to 7.11.  
work, and with obligation to assign inventions to C
while employed. Employee B’s application, which
is pending on or after December 10, 2004, is being
examined.


¶ 7.12.01 Rejection under 35 U.S.C. 102(e), Patent to
{| border="1" cellspacing="0" cellpadding="5" align="center" width="90%"
Another with Earlier Filing Date, Reference is a U.S.  
!width="50%"|SITUATIONS
Patent Issued Directly or Indirectly From a National Stage
!width="50%"|RESULTS
of, or a Continuing Application Claiming Benefit under 35
|-
U.S.C. 365(c) to, an International Application Having an
|1. A invents X and files application.
International Filing Date Prior to November 29, 2000
|This is permissible.
|-
|2. B modifies X to XY after A’s application is filed. B files evidence establishing that A and B were both under obligation to assign inventions to C at the time the invention XY was made.
|Provisional 35 U.S.C. 102(e)/103 rejection cannot be made; provisional double patenting rejection is made; no 35 U.S.C. 102(f)/103 or 102(g)/103 rejection made.  
|-
|3. B files a terminal disclaimer under 37 CFR 1.321(c).
|The provisional double patenting rejection made in B’s application would be obviated if all requirements of 37 CFR 1.321 are met.
|}


(e) the invention was described in a patent granted on an application
for patent by another filed in the United States before the
invention thereof by the applicant for patent, or on an international
application by another who has fulfilled the requirements of
paragraphs (1), (2), and (4) of section 371(c) of this title before the
invention thereof by the applicant for patent.


The changes made to 35 U.S.C. 102(e) by the American Inventors
'''''Example 5'''''. Assumption: Employee A works for
Protection Act of 1999 (AIPA) and the Intellectual Property
assignee I and Employee B works for assignee J.
and High Technology Technical Amendments Act of 2002 do not
There is a joint research agreement, pursuant to 35  
apply when the reference is a U.S. patent resulting directly or indirectly
U.S.C. 103(c), between assignees I and J. Employees
from an international application filed before November 29,
A and B each filed an application as set forth
2000. Therefore, the prior art date of the reference is determined
below. Employee B’s invention claimed in his
under 35 U.S.C. 102(e) prior to the amendment by the AIPA (pre-
application was made after the joint research
AIPA 35 U.S.C. 102(e)).
agreement was entered into, and it was made as a
result of activities undertaken within the scope of  
the joint agreement. Employee B’s application discloses
assignees I and J as the parties to the joint
research agreement. Employee B’s application,
which is pending on or after December 10, 2004, is
being examined.
{| border="1" cellspacing="0" cellpadding="5" align="center" width="90%"
!width="50%"|SITUATIONS
!width="50%"|RESULTS
|-
|1. A invents X and files application.
|This is permissible.
|-
|2. B modifies X to XY after A’s application is filed. B files evidence establishing a joint research agreement in compliance with 35 U.S.C. 103(c).
|Provisional 35 U.S.C. 102(e)/103 rejection cannot be made; provisional double patenting rejection is made; no 35 U.S.C. 102(f)/103 or 102(g)/103 rejection made.
|-
|3. B files a terminal disclaimer under 37 CFR 1.321.
|The provisional double patenting rejection made in B’s application would be obviated if all requirements of 37 CFR 1.321 are met.
|}


Examiner Note:


1.This form paragraph should only be used if the reference is a
'''EXAMINATION OF CONTINUING APPLICATION COMMONLY OWNED WITH ABANDONED PARENT APPLICATION TO WHICH BENEFIT IS CLAIMED UNDER 35 U.S.C. 120'''
U.S. patent issued directly or indirectly from either a national
stage of an international application (application under 35 U.S.C.  
371) which has an international filing date prior to November 29,
2000 or a continuing application claiming benefit under 35 U.S.C.
365(c) to an international application having an international filing
date prior to November 29, 2000.


2.If the reference is a U.S. patent issued directly from a
An application claiming the benefit of a prior filed
national stage of such an international application, the reference’s
copending national or international application under
35 U.S.C. 102(e) date is the date that the requirements of 35
35 U.S.C. 120 must name as an inventor at least one
inventor named in the prior filed application. The
prior filed application must also disclose the named
inventor’s invention claimed in at least one claim of  
the later filed application in the manner provided by
the first paragraph of 35 U.S.C. 112.


So long as the applications have at least one inventor
in common and the other requirements are met, the
Office will permit a claim for 35 U.S.C. 120 benefit
without any additional submissions or notifications
from applicants regarding inventorship differences.


====706.02(l) Rejections Under 35 U.S.C. 103(a) Using Prior Art Under Only 35 U.S.C. 102 (e), (f), or (g)====


{{Statute|35 U.S.C. 103. Conditions for patentability; non-obvious subject matter.}}
{{Ellipsis}}
(c)
{{tab1}}(1) Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.</p>


{{tab1}}(2) For purposes of this subsection, subject matter developed by another person and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person if —</p>


U.S.C. 371(c)(1), (2) and (4) were fulfilled. The language of  
{{tab2}}(A) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made;</p>
WIPO publication (PCT) is not relevant in this situation. Caution:
the international publication of the international application (PCT)
by WIPO may have an earlier prior art date under 35 U.S.C.
102(a) or 102(b).


3.If the reference is a U.S. patent issued directly from a continuing
{{tab2}}(B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and </p>
application claiming benefit under 35 U.S.C. 120, 121 or
365(c) to such an international application (which had not entered
the national stage prior to the continuing application’s filing date,
otherwise see note 4), the prior art reference’s 35 U.S.C. 102(e)
date is the actual U.S. filing date of the continuing application.
Caution: the international publication of the international application
(PCT) by WIPO may have an earlier prior art date under 35
U.S.C. 102(a) or 102(b).


4.In determining the 35 U.S.C. 102(e) date, consider priority/
{{tab2}}(C) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement. </p>
benefit claims to earlier-filed U.S. provisional applications under
35 U.S.C. 119(e), U.S. nonprovisional applications under 35
U.S.C. 120 or 121, and international applications under 35 U.S.C.
120, 121 or 365(c) only if the subject matter used to make the  
rejection is appropriately supported in the relied upon earlier-filed
application’s disclosure (and any intermediate application(s)). A
benefit claim to a U.S. patent of an earlier-filed international
application may only result in an effective U.S. filing date as of
the date the requirements of 35 U.S.C. 371(c)(1), (2) and (4) were
fulfilled. Do NOT consider any priority/benefit claims to U.S.
applications which are filed before an international application.
Do NOT consider foreign priority claims under 35 U.S.C. 119(a)-
(d) and 365(a).


5.This form paragraph must be preceded by form paragraph
{{tab1}}(3) For purposes of paragraph (2), the term "joint research agreement" means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.</p>
7.07, and may be preceded by one or more of form paragraphs
|}
7.08 to 7.11.


¶ 7.13 102(f), Applicant Not the Inventor


(f) he did not himself invent the subject matter sought to be  
* It is important to recognize that 35 U.S.C. 103(c) applies '''only''' to consideration of prior art for purposes of '''obviousness''' under 35 U.S.C. 103.
patented.
* 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.
* In addition, subject matter that 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).
* A patent applicant or patentee urging that subject
matter is disqualified has the burden of establishing
that the prior art is disqualified under 35 U.S.C.
103(c).
* The term "another" as used in 35 U.S.C. 103 means any inventive entity other than the inventor and would include the inventor and any other persons.
* The term "commonly owned" means wholly owned by the same person(s) or organization(s) at the time the invention was made.


Examiner Note:
FOR APPLICATIONS FILED PRIOR TO NOVEMBER 29, 1999 AND GRANTED AS PATENTS PRIOR TO DECEMBER 10, 2004


This form paragraph must be preceded by form paragraph 7.07,  
Prior to November 29, 1999, 35 U.S.C. 103(c) provided
and may be preceded by one or more of form paragraphs 7.08 to
that subject matter developed by another which
7.12.
qualifies as “prior art” only under subsections
35 U.S.C. 102(f) or 35 U.S.C. 102(g) is not to be considered
when determining whether an invention
sought to be patented is obvious under 35 U.S.C. 103,  
provided the subject matter and the claimed invention
were commonly owned at the time the invention was
made. See MPEP § 706.02(l)(1) for information
regarding when prior art under 35 U.S.C. 102(e)/103is disqualified under 35 U.S.C. 103(c).  


¶ 7.14 102(g), Priority of Invention
For applications filed prior to November 29, 1999
and granted as patents prior to December 10, 2004,
the subject matter that is disqualified as prior art
under 35 U.S.C. 103(c) is strictly limited to subject
matter that A) qualifies as prior art only under
35 U.S.C. 102(f) or 35 U.S.C. 102(g), and B) was
commonly owned with the claimed invention at the
time the invention was made. If
the subject matter that
qualifies as prior art only under 35
U.S.C. 102(f) or
35 U.S.C. 102(g) was not commonly owned at the
time of the invention, the subject matter is not disqualified
as prior art under 35
U.S.C. 103(c). See
OddzOn Products, Inc. v. Just Toys, Inc., 122 F.3d
1396, 1403-04, 43 USPQ2d 1641, 1646 (Fed. Cir.
1997) (“We therefore hold that subject matter derived
from another not only is itself unpatentable to the
party who derived it under § 102(f), but, when combined
with other prior art, may make a resulting obvious
invention unpatentable to that party under a
combination of §§ 102(f) and 103.”) Therefore, in
these applications, information learned from or transmitted
to persons outside the organization is not disqualified
as prior art.


(g)(1) during the course of an interference conducted under
Inventors of subject matter not commonly owned at
section 135 or section 291, another inventor involved therein
the time of the invention, but currently commonly
establishes, to the extent permitted in section 104, that before such  
owned, may file as joint inventors in a single application.
person’s invention thereof the invention was made by such other
However, the claims in such an application are
inventor and not abandoned, suppressed, or concealed, or (2)  
not protected from a 35 U.S.C. 102(f)/103 or  
before such person’s invention thereof, the invention was made in
35 U.S.C. 102(g)/103 rejection. Applicants in such  
this country by another inventor who had not abandoned, suppressed,
cases have an obligation pursuant to 37
or concealed it. In determining priority of invention  
CFR 1.56 to point out the inventor and invention dates of each
under this subsection, there shall be considered not only the
claim and the lack of common ownership at the time
respective dates of conception and reduction to practice of the  
the later invention was made to enable the examiner
invention, but also the reasonable diligence of one who was first
to consider the applicability of a 35 U.S.C. 102(f)/103or 35
to conceive and last to reduce to practice, from a time prior to conception
U.S.C. 102(g)/103 rejection. The examiner will
by the other.
assume, unless there is evidence to the contrary, that
applicants are complying with their duty of disclosure.


Examiner Note:
Foreign applicants will sometimes combine the
subject matter of two or more related applications
with different inventors into a single U.S. application
naming joint inventors. The examiner will make the
assumption, absent contrary evidence, that the applicants
are complying with their duty of disclosure if no
information is provided relative to invention dates and
common ownership at the time the later invention was
made. Such a claim for 35 U.S.C. 119(a)-(d) priority
based upon the foreign filed applications is
appropriate and 35 U.S.C. 119(a)-(d) priority can
be accorded based upon each of the foreign filed
applications.


This form paragraph must be preceded by form paragraph 7.07,  
=====706.02(l)(1) Rejections Under 35 U.S.C. 103(a) Using Prior Art Under 35 U.S.C. 102(e), (f), or (g); Prior Art Disqualification Under 35 U.S.C. 103(c)=====
and may be preceded by one or more of form paragraphs 7.08 to
7.13.


¶ 7.15 Rejection, 35 U.S.C. 102(a), (b) Patent or
{{Statute|35 U.S.C. 103. Conditions for patentability; non-obvious subject matter.}}
Publication, and (g)
{{Ellipsis}}
(c)
{{tab1}}(1) Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.</p>


Claim [1] rejected under 35 U.S.C. 102[2] as being [3] by [4].
{{tab1}}(2) For purposes of this subsection, subject matter developed by another person and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person if —</p>


Examiner Note:
{{tab2}}(A) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made;</p>


1.In bracket 2, insert the appropriate paragraph letter or letters
{{tab2}}(B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and </p>
of 35
U.S.C. 102 in parentheses. If paragraph (e) of 35 U.S.C. 102is applicable, use form paragraph 7.15.02 or 7.15.03.


2.In bracket 3, insert either --clearly anticipated-- or --anticipated--
{{tab2}}(C) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement. </p>
with an explanation at the end of the paragraph.  


3.In bracket 4, insert the prior art relied upon.
{{tab1}}(3) For purposes of paragraph (2), the term "joint research agreement" means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.</p>
|}


4.This rejection must be preceded either by form paragraph
======I.COMMON OWNERSHIP OR ASSIGNEE PRIOR ART EXCLUSION UNDER 35 U.S.C. 103(c)======
7.07 and form paragraphs 7.08, 7.09, and 7.14 as appropriate, orby form paragraph 7.103.


5.If 35 U.S.C. 102(e) is also being applied, this form paragraph
Enacted on November 29, 1999, the American
must be followed by either form paragraph 7.15.02 or 7.15.03.
Inventors Protection Act (AIPA) added subject
matter which was prior art under former 35 U.S.C.
103 via 35 U.S.C. 102(e) as disqualified  prior
art against the claimed invention if that subject matter
and the claimed invention “were, at the time the
invention was made, owned by the same person or
subject to an obligation of assignment to the same
person.” The 1999 change to 35 U.S.C. 103(c)
only applied to all utility, design and plant patent
applications filed on or after November 29, 1999.
The Cooperative Research and Technology Enhancement
Act of 2004 (CREATE Act), in part, redesignated
the former 35 U.S.C. 103(c) to 35 U.S.C.
103(c)(1) and made this provision effective to all
applications in which the patent is granted on or after
December 10, 2004. Therefore, the provision of 35
U.S.C. 103(c)(1) is effective for all applications pending
on or after December 10, 2004, including applications
filed prior to November 29, 1999. In addition,
this provision applies to all patent applications,
including utility, design, plant and reissue applications.
The amendment to 35 U.S.C. 103(c)(1) does not
affect any application filed before November 29, 1999
and issued as a patent prior to December 10, 2004.


In a reexamination proceeding, however, one must
look at whether or not the patent being reexamined
was granted on or after December 10, 2004 to determine
whether 35 U.S.C. 103(c), as amended by the
CREATE Act, applies. For a reexamination proceeding
of a patent granted prior to December 10, 2004 on
an application filed on or after November 29, 1999, it
is the 1999 changes to 35 U.S.C. 103(c) that are applicable
to the disqualifying commonly assigned/owned
prior art provisions of 35 U.S.C. 103(c). For a reexamination
proceeding of a patent granted prior to
December 10, 2004 on an application filed prior to
November 29, 1999, neither the 1999 nor the 2004
changes to 35 U.S.C. 103(c) are applicable. Therefore,
only prior art under 35 U.S.C. 102(f) or (g) used
in a rejection under 35 U.S.C. 103(a) may be disqualified
under the commonly assigned/owned prior art
provisions of 35 U.S.C. 103(c).


For reissue applications, the doctrine of recapture
may prevent the presentation of claims in the
reissue applications that were amended or cancelled
from the application which matured into the patent for
which reissue is being sought, if the claims were
amended or cancelled to distinguish the claimed
invention from 35
U.S.C. 102(e)/103 prior art which
was not able to be excluded under 35 U.S.C.
103(c) in the application that issued as a patent. If an
examiner determines that this situation applies in the
reissue application under examination, a consultation
with the Office of Patent Legal Administration should
be initiated via the Technology Center Special Program
Examiner.


¶ 7.15.01 Provisional Rejection, 35 U.S.C. 102(e) -
35 U.S.C. 103(c) applies only to prior art usable in
Common Assignee or At Least One Common Inventor
an obviousness rejection under 35 U.S.C. 103. Subject
matter that qualifies as anticipatory prior art
under 35 U.S.C. 102  is not affected, and may still
be used to reject claims as being anticipated. In addition,
double patenting rejections, based on subject
matter now disqualified as prior art in amended 35  
U.S.C. 103(c), should still be made as appropriate.
See 37 CFR 1.78(c) and MPEP § 804.


Claim [1] provisionally rejected under 35 U.S.C. 102(e) as  
The burden of establishing that subject matter is
being anticipated by copending Application No. [2] which has a  
disqualified as prior art is placed on applicant once
common [3] with the instant application.
the examiner has established a prima facie case of
 
obviousness based on the subject matter. For example,
Based upon the earlier effective U.S. filing date of the copending
the fact that the reference and the application
application, it would constitute prior art under 35 U.S.C.  
have the same assignee is not, by itself, sufficient evidence
102(e), if published under 35 U.S.C. 122(b) or patented. This provisional
to disqualify the prior art under 35 U.S.C.  
rejection under 35 U.S.C. 102(e) is based upon a presumption
103(c). There must be a statement that the common
of future publication or patenting of the copending
ownership was “at the time the invention was made.”
application. [4].
 
This provisional rejection under 35 U.S.C. 102(e) might be  
overcome either by a showing under 37 CFR 1.132 that any
invention disclosed but not claimed in the copending application
was derived from the inventor of this application and is thus not
the invention “by another,” or by an appropriate showing under 37
CFR 1.131.
 
This rejection may not be overcome by the filing of a terminal
disclaimer. See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885
(Fed. Cir. 1991).


Examiner Note:
See MPEP § 706.02(l)(2) for information regarding
establishing common ownership. See MPEP § 706.02(l)(3) for examination procedure with respect
to 35 U.S.C. 103(c).


1.This form paragraph is used to provisionally reject over a
======II. JOINT RESEARCH AGREEMENT DISQUALIFICATION UNDER 35 U.S.C. 103(c) BY THE CREATE ACT======
copending application with an earlier filing date that discloses the
claimed invention which has not been published under 35 U.S.C.  
122. The copending application must have either a common
assignee or at least one common inventor.


2. Use 35 U.S.C. 102(e) as amended by the American Inventors
The CREATE Act (Pub. L. 108-453, 118 Stat. 3596
Protection Act and the Intellectual Property and High Technology
(2004)) was enacted on December 10, 2004, and is
Technical Amendments Act of 2002 (form paragraph 7.12)  
effective for applications for which the patent is  
to determine the copending application reference’s prior art date,  
granted on or after December 10, 2004. Specifically,  
unless the copending application reference is based directly, or
the CREATE Act amended 35 U.S.C. 103(c) to provide
indirectly, from an international application which has an international
that:
filing date prior to November 29, 2000. If the copending


*subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of 35 U.S.C. 102 shall not preclude patentability under 35 U.S.C. 103 where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person;
*for purposes of 35 U.S.C. 103, subject matter developed by another person and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person if
**the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made,
**the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement, and
**the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement;
*for purposes of 35 U.S.C. 103(c), the term “joint research agreement” means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, development, or research work in the field of the claimed invention.


The effective date provision of the CREATE Act
provided that its amendments shall apply to any
patent (including any reissue patent) granted on or
after December 10, 2004. The CREATE Act also provided
that its amendment shall not affect any final
decision of a court or the Office rendered before
December 10, 2004, and shall not affect the right of
any party in any action pending before the Office or a
court on December 10, 2004, to have that party’s
rights determined on the basis of the provisions of
title 35, United States Code, in effect on December 9,
2004. Since the CREATE Act also includes the
amendment to 35 U.S.C. 103(c) made by section 4807
of the AIPA (see Pub. L. 106-113, 113 Stat. 1501,
1501A-591 (1999)), the change of “subsection (f) or
(g)” to “one or more of subsections (e), (f), or (g)” in
35 U.S.C. 103(c) is now also applicable to applications
filed prior to November 29, 1999, that were
pending on December 10, 2004.


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. If the rejection is anticipation under 35
U.S.C. 102(e), (f), or (g), 35 U.S.C. 103(c) cannot be
relied upon to disqualify the subject matter in order to
overcome or prevent the anticipation rejection. Likewise,
35 U.S.C. 103(c) cannot be relied upon to overcome
or prevent a double patenting rejection. See 37
CFR 1.78(c) and MPEP § 804.


Because the CREATE Act applies only to patents
 
granted on or after December 10, 2004, the recapture
application reference is either a national stage of an international
doctrine may prevent the presentation of claims in the
application (application under 35 U.S.C. 371) which has an international
reissue applications that had been amended or cancelled
filing date prior to November 29, 2000, or a continuing
(e.g., to avoid a rejection under 35 U.S.C.  
application claiming benefit under 35 U.S.C. 120, 121, or 365(c)
103(a) based on subject matter that may now be disqualified
to an international application having an international filing date
under the CREATE Act) during the prosecution
prior to November 29, 2000, use pre-AIPA 35 U.S.C. 102(e)
of the application which resulted in the patent
(form paragraph 7.12.01). See the Examiner Notes for form paragraphs
being reissued.
7.12 and 7.12.01 to assist in the determination of the 35
U.S.C. 102(e) date.  


3.If the claims would have been obvious over the invention
=====706.02(l)(2)Establishing Common Ownership or Joint Research Agreement=====
disclosed in the other copending application, use form paragraph
7.21.01.


4.In bracket 3, insert either --assignee-- or --inventor--.
In order to be disqualified as prior art under
35 U.S.C. 103(c), the subject matter which would oth
erwise be prior art to the claimed invention and the
claimed invention must be commonly owned, or subject
to an obligation of assignment to a same person,
at the time the claimed invention was made or be subject
to a joint research agreement at the time the
invention was made. See MPEP § 706.02(l) for
35 U.S.C. 102(f)/103 or 35 U.S.C. 102(g)/103 prior
art disqualified under 35 U.S.C. 103(c) in applications
granted as patents prior to December 10, 2004. See
MPEP § 706.02(l)(1) for 35 U.S.C. 102(e), (f), or (g)/
103 prior art disqualified under 35 U.S.C. 103(c).  


5.In bracket 4, an appropriate explanation may be provided in
======I. DEFINITION OF COMMON OWNERSHIP======
support of the examiner’s position on anticipation, if necessary.


6.If the claims of the copending application conflict with the  
The term "commonly owned" is intended to mean
claims of the instant application, a provisional double patenting
that the subject matter which would otherwise be
rejection should also be given using form paragraphs 8.30 and  
prior art to the claimed invention and the claimed
8.32.
invention are entirely or wholly owned by the same
person(s) or organization(s)/business entity(ies) at the
time the claimed invention was made. If the person(s)
or organization(s) owned less than 100 percent of the  
subject matter which would otherwise be prior art to
the claimed invention, or less than 100 percent of the  
claimed invention, then common ownership would
not exist. Common ownership requires that the person(
s) or organization(s)/business entity(ies) own 100
percent of the subject matter and 100 percent of the
claimed invention.  


7.If evidence is additionally of record to show that either
Specifically, if an invention claimed in an application
invention is prior art unto the other under 35 U.S.C. 102(f) or (g),  
is owned by more than one entity and those entities
a rejection using form paragraphs 7.13 and/or 7.14 should also be  
seek to exclude the use of a reference under  
made.
35  
 
U.S.C. 103, then the reference must be owned by,  
 
or subject to an obligation of assignment to, the same
 
entities that owned the application, at the time the
¶ 7.15.02 Rejection, 35 U.S.C. 102(e), Common Assignee
later invention was made. For example, assume Company
or Inventor(s)
A owns twenty percent of patent Application X
 
and Company B owns eighty percent of patent Application
Claim [1] rejected under 35 U.S.C. 102(e) as being anticipated
X at the time the invention of Application X
by [2].
was made. In addition, assume that Companies A and
 
B seek to exclude the use of Reference Z under
The applied reference has a common [3] with the instant application.  
35  
Based upon the earlier effective U.S. filing date of the reference,
U.S.C. 103. Reference Z must have been co-
it constitutes prior art under 35 U.S.C. 102(e). This
owned, or have been under an obligation of assignment
rejection under 35 U.S.C. 102(e) might be overcome either by a
to both companies, on the date the invention was
showing under 37 CFR 1.132 that any invention disclosed but not
made in order for the exclusion to be properly
claimed in the reference was derived from the inventor of this
requested. A statement such as “Application X and
application and is thus not the invention “by another,” or by an  
Patent Z were, at the time the invention of Application
appropriate showing under 37 CFR 1.131.
X was made, jointly owned by Companies A and B”
 
would be sufficient evidence of common ownership.  
Examiner Note:
 
1.This form paragraph is used to reject over a patent or patent
application publication with an earlier filing date that discloses
but does not claim the same invention. The patent or patent application
publication must have either a common assignee or a common
inventor.
 
2.35 U.S.C. 102(e) as amended by the American Inventors
Protection Act of 1999 (AIPA) and the Intellectual Property and  
High Technology Technical Amendments Act of 2002 (form paragraph
7.12) must be applied if the reference is one of the following:


For applications owned by a joint venture of two or
more entities, both the application and the reference
must have been owned by, or subject to an obligation
of assignment to, the joint venture at the time the
invention was made. For example, if Company A and
Company B formed a joint venture, Company C, both
Application X and Reference Z must have been
owned by, or subject to an obligation of assignment
to, Company C at the time the invention was made in
order for Reference Z to be properly excluded as prior
art under 35 U.S.C. 103(c). If Company A by itself
owned Reference Z at the time the invention of Application
X was made and Application X was owned by
Company C on the date the invention was made, then
a request for the exclusion of Reference Z as prior art
under 35 U.S.C. 103(c) would not be proper.


a.a U.S. patent or a publication of a U.S. application for patent
As long as principal ownership rights to either the
filed under 35 U.S.C. 111(a);
subject matter or the claimed invention reside in different
persons or organizations common ownership
does not exist. A license of the claimed invention to
another by the owner where basic ownership rights
are retained would not defeat ownership.  


b.a U.S. patent issued directly or indirectly from, or a U.S. or
The requirement for common ownership at the time
WIPO publication of, an international application if the international
the claimed invention was made is intended to preclude
application has an international filing date on or after
obtaining ownership of subject matter after the  
November 29, 2000.
claimed invention was made in order to disqualify
that subject matter as prior art against the claimed
invention.  


See the Examiner Notes for form paragraph 7.12 to assist in the
The question of whether common ownership exists
determination of the 35 U.S.C. 102(e) date of the reference.
at the time the claimed invention was made is to be
 
determined on the facts of the particular case in question.  
3. Pre-AIPA 35 U.S.C 102(e) (form paragraph 7.12.01) must
Actual ownership of the subject matter and the  
be applied if the reference is a U.S. patent issued directly, or indirectly,
claimed invention by the same individual(s) or organization(
from an international application filed prior to November
s) or a legal obligation to assign both the subject  
29, 2000. See the Examiner Notes for form paragraph 7.12.01 to
matter and the claimed invention to the same
assist in the determination of the 35 U.S.C. 102(e) date of the reference.
individual(s) or organization(s)/business entity(ies)  
 
must be in existence at the time the claimed invention
 
was made in order for the subject matter to be disqualified
4.In determining the 35 U.S.C. 102(e) date, consider priority/
as prior art. A moral or unenforceable obligation
benefit claims to earlier-filed U.S. provisional applications under
would not evidence common ownership.
35 U.S.C. 119(e), U.S. nonprovisional applications under 35
U.S.C. 120 or 121, and international applications under 35 U.S.C.
120, 121 or 365(c) if the subject matter used to make the rejection
is appropriately supported in the relied upon earlier-filed application’s
disclosure (and any intermediate application(s)). A benefit
claim to a U.S. patent of an earlier-filed international application,
which has an international filing date prior to November 29, 2000,
may only result in an effective U.S. filing date as of the date the  
requirements of 35 U.S.C. 371(c)(1), (2) and (4) were fulfilled.
Do NOT consider any priority/benefit claims to U.S. applications
which are filed before an international application that has an
international filing date prior to November 29, 2000. Do NOT
consider foreign priority claims under 35 U.S.C. 119(a)-(d) and
365(a).  


5.If the reference is a publication of an international application
Under 35 U.S.C. 103(c), an applicant’s admission
(including voluntary U.S. publication under 35 U.S.C. 122 of
that subject matter was developed prior to applicant’s
the national stage or a WIPO publication) that has an international
invention would not make the subject matter prior art
filing date prior to November 29, 2000, did not designate the  
to applicant if the subject matter qualifies as prior art  
United States or was not published in English by WIPO, do not
only under sections 35 U.S.C. 102(e), (f), or (g), and
use this form paragraph. Such a reference is not a prior art reference
if the subject matter and the claimed invention were
under 35 U.S.C. 102(e). The reference may be applied under
commonly owned at the time the invention was made.  
35 U.S.C. 102(a) or (b) as of its publication date. See form paragraphs
See In re Fout, 675
7.08 and 7.09.
F.2d 297, 213 USPQ 532 (CCPA
1982), for a decision involving an applicant’s admission
which was used as prior art against their application.  
If the subject matter and invention were not
commonly owned, an admission that the subject matter
is prior art would be usable under 35 U.S.C. 103.


6.In bracket 3, insert either --assignee-- or --inventor--.
The burden of establishing that subject matter is
disqualified as prior art under 35 U.S.C. 103(c) is
intended to be placed and reside upon the person or
persons urging that the subject matter is disqualified.
For example, a patent applicant urging that subject
matter is disqualified as prior art under 35 U.S.C.
103(c), would have the burden of establishing that it
was commonly owned at the time the claimed invention
was made. The patentee in litigation would likewise
properly bear the same burden placed upon the
applicant before the U.S. Patent and Trademark
Office. To place the burden upon the patent examiner
or the defendant in litigation would not be appropriate
since evidence as to common ownership at the time
the claimed invention was made might not be available
to the patent examiner or the defendant in litigation,
but such evidence, if it exists, should be readily
available to the patent applicant or the patentee.


7.This form paragraph must be preceded by either of form
In view of 35 U.S.C. 103(c), the Director has reinstituted
paragraphs 7.12 or 7.12.01.
in appropriate circumstances the practice of
 
rejecting claims in commonly owned applications of
8.Patent application publications may only be used if this form
different
paragraph was preceded by form paragraph 7.12.
inventive entities on the grounds of double
 
patenting. Such rejections can be overcome in appropriate
¶ 7.15.03 Rejection, 35 U.S.C. 102(e), No Common
circumstances by the filing of terminal disclaimers.  
Assignee or Inventor(s)
This practice has been judicially authorized.  
 
See In re Bowers, 359 F.2d 886, 149 USPQ 57 (CCPA
Claim [1] rejected under 35 U.S.C. 102(e) as being [2] by [3].
1966). The use of double patenting rejections which
then could be overcome by terminal disclaimers preclude
patent protection from being improperly
extended while still permitting inventors and their
assignees to obtain the legitimate benefits from their
contributions. See also MPEP § 804.


Examiner Note:
The following examples are provided for illustration
only:
<div style="margin-left: 2em;">
'''Example 1'''


1.This form paragraph is used to reject over a patent or patent
Parent Company owns 100% of Subsidiaries A
application publication with an earlier filing date that discloses
and B
but does not claim the same invention. The patent or patent application
publication is not required to have a common assignee nor
a common inventor.


2.35 U.S.C. 102(e) as amended by the American Inventors
- inventions of A and B are commonly owned by  
Protection Act of 1999 (AIPA) and the Intellectual Property and
the Parent Company.
High Technology Technical Amendments Act of 2002 (form paragraph
7.12) must be applied if the reference is one of the following:


'''Example 2'''


a.a U.S. patent or a publication of a U.S. application for patent
Parent Company owns 100% of Subsidiary A and
filed under 35 U.S.C. 111(a);
90% of Subsidiary B


b.a U.S. patent issued directly or indirectly from, or a U.S. or
- inventions of A and B are not commonly owned
WIPO publication of, an international application if the international
by the Parent Company.
application has an international filing date on or after
November 29, 2000.


'''Example 3'''


If same person owns subject matter and invention
at time invention was made, license to another
may be made without the subject matter becoming
prior art.


'''Example 4'''


Different Government inventors retaining certain
rights (e.g. foreign filing rights) in separate inventions
owned by Government precludes common
ownership of inventions.


See the Examiner Notes for form paragraph 7.12 to assist in the
'''Example 5'''
determination of the 35 U.S.C. 102(e) date of the reference.


3. Pre-AIPA 35 U.S.C 102(e) (form paragraph 7.12.01) must
Company A and Company B form joint venture
be applied if the reference is a U.S. patent issued directly, or indirectly,  
Company C. Employees of A, while working for C
from an international application filed prior to November
with an obligation to assign inventions to C, invent
29, 2000. See the Examiner Notes for form paragraph 7.12.01 to  
invention #1; employees of B while working for C
assist in the determination of the 35 U.S.C. 102(e) date of the reference.
with an obligation to assign inventions to C, invent
invention #2, with knowledge of #1.  


Question: Are #1 and #2 commonly owned at the
time the later invention was made so as to preclude
a rejection under 35 U.S.C. 102(e), (f) or (g) in
view of 35
U.S.C. 103?


4.In determining the 35 U.S.C. 102(e) date, consider priority/
Answer: Yes- If the required evidence of common
benefit claims to earlier-filed U.S. provisional applications under
ownership is made of record in the patent application  
35 U.S.C. 119(e), U.S. nonprovisional applications under 35
file. If invention #1 was invented by employees
U.S.C. 120 or 121, and international applications under 35 U.S.C.
of Company A not working for Company C  
120, 121 or 365(c) if the subject matter used to make the rejection
and Company A maintained sole ownership of  
is appropriately supported in the relied upon earlier-filed application’s
invention #1 at the time invention #2 was made,  
disclosure (and any intermediate application(s)). A benefit
inventions #1 and #2 would not be commonly
claim to a U.S. patent of an earlier-filed international application,
owned as required by 35 U.S.C. 103(c).
which has an international filing date prior to November29, 2000,
may only result in an effective U.S. filing date as of the date the
requirements of 35 U.S.C. 371(c)(1), (2) and (4) were fulfilled.
Do NOT consider any priority/benefit claims to U.S. applications
which are filed before an international application that has an
international filing date prior to November 29, 2000. Do NOT
consider foreign priority claims under 35 U.S.C. 119(a)-(d) and  
365(a).
 
5.If the reference is a publication of an international application
(including voluntary U.S. publication under 35 U.S.C. 122 of  
the national stage or a WIPO publication) that has an international
filing date prior to November 29, 2000, did not designate the
United States or was not published in English by WIPO, do not
use this form paragraph. Such a reference is not a prior art reference
under 35 U.S.C. 102(e). The reference may be applied under
35 U.S.C. 102(a) or (b) as of its publication date. See form paragraphs
7.08 and 7.09.
 
6.In bracket 2, insert either --clearly anticipated-- or --anticipated--
with an explanation at the end of the paragraph.  


7.In bracket 3, insert the prior art relied upon.
'''Example 6'''


8.This form paragraph must be preceded by either of form
Company A owns 40% of invention #1 and 60% of
paragraphs 7.12 or 7.12.01.
invention #2, and Company B owns 60% of invention
#1 and 40% of invention #2 at the time invention
#2 was made.


9.Patent application publications may only be used if this form
-inventions #1 and #2 are commonly owned.
paragraph was preceded by form paragraph 7.12.


7.16 Rejection, 35 U.S.C. 102(b), Public Use or on Sale
'''Example 7'''


Claim [1] rejected under 35 U.S.C. 102(b) based upon a public
Company B has a joint research project with University
use or sale of the invention. [2]
A. Under the terms of the joint research
project, University A has agreed that all of its patents
will be jointly owned by Company B and University
A. Professor X, who works for University
A, has an employee agreement with University A
assigning all his patents only to University A.  
After the joint research project agreement is exe
cuted, University A files patent application #1 for
the invention of Professor X, before Company B
files patent application #2 on a similar invention.  


Examiner Note:
- inventions #1 and #2 are commonly owned
because Professor X’s obligation to assign patents
to University A who has an obligation to assign
patents to the A-B joint venture legally establishes
Professor X’s obligation to assign patents to the A-
B joint venture.


1.This form paragraph must be preceded either by form paragraphs
'''Example 8'''
7.07 and 7.09 or by form paragraph 7.103.


2.A full explanation of the evidence establishing a public use
Inventor X working at Company A invents and
or sale must be provided in bracket 2.
files patent application #1 on technology T, owned
by Company A. After application #1 is filed, Company
A spins off a 100% owned Subsidiary B for
technology T including the transfer of the ownership
of patent application #1 to Subsidiary B. After
Subsidiary B is formed, inventor Y (formerly a  
Company A employee, but now an employee of
Subsidiary B obligated to assign to Subsidiary B)
jointly files application #2 with inventor X (now
also an employee of Subsidiary B with an obligation
to assign to Subsidiary B), which is directed to
a possibly unobvious improvement to technology
T.  


¶ 7.17 Rejection, 35 U.S.C. 102(c), Abandonment of  
- the inventions of applications #1 and #2 are commonly
Invention
owned since Subsidiary B is a wholly
 
owned subsidiary of Company A.
Claim [1] rejected under 35 U.S.C. 102(c) because the invention  
</div>
has been abandoned. [2]
The examiner must examine the application as to
 
all grounds except 35 U.S.C. 102(e), (f) and (g) as
Examiner Note:
they apply through 35 U.S.C. 103 only if the application
 
file(s) establishes common ownership at the time
1.This form paragraph must be preceded either by form paragraph
the later invention was made. Thus, it is necessary to
7.07 and 7.10 or by form paragraph 7.103.
look to the time at which common ownership exists. If
common ownership does not exist at the time the later
invention was made, the earlier invention is not disqualified
as potential prior art under 35  
U.S.C. 102(e),  
(f) and (g) as they apply through 35
U.S.C. 103. An
invention is “made” when conception is complete as
defined in Mergenthaler v. Scudder, 11 App. D.C.
264, 81 O.G. 1417, 1897 C.D. 724 (D.C. Cir. 1897); In
re Tansel, 253 F.2d 241, 117 USPQ 188 (CCPA 1958).
See Pfaff v. Wells Elecs., 525 U.S. 55, 119 S. Ct. 304,
312, 48 USPQ2d 1641, 1647 (1998) (“the invention
must be ready for patenting . . . . by proof that prior to
the critical date the inventor had prepared drawing or
other descriptions of the invention that were sufficiently
specific to enable a person skilled in the art to
practice the invention.”) Common ownership at the
time the invention was made for
purposes of obviating
a 35 U.S.C. 102(e)/35 U.S.C. 103, 35
U.S.C. 102(f)/35 U.S.C. 103 or 35 U.S.C. 102(g)/35 U.S.C.
103 rejection may be established irrespective of
whether the invention was made in the United States
or abroad. The provisions of 35 U.S.C. 104, however,
will continue to apply to other proceedings in the U.S.
Patent and Trademark Office, e.g. in an interference
proceeding, with regard to establishing a date of
invention by knowledge or use thereof, or other activity
with respect thereto, in a foreign country. The foreign
filing date will continue to be used for
interference purposes under 35
U.S.C. 119(a)-(d) and  
35 U.S.C. 365.


2.In bracket 2, insert a full explanation of the evidence establishing
======II. EVIDENCE REQUIRED TO ESTABLISH COMMON OWNERSHIP======
abandonment of the invention. See MPEP § 2134.


¶ 7.18 Rejection, 35 U.S.C. 102(d), Foreign Patenting
It is important to recognize just what constitutes
sufficient evidence to establish common ownership at
the time the invention was made. The common ownership
must be shown to exist at the time the later
invention was made. A statement of present common
ownership is not sufficient. In re Onda, 229 USPQ
235 (Comm’r Pat. 1985).


Claim [1] rejected under 35 U.S.C. 102(d) as being barred by
The following statement is sufficient evidence to
applicants [2].
establish common ownership of, or an obligation for
assignment to, the same person(s) or organizations(s):


[3]
Applications and references (whether patents, patent applications,
patent application publications, etc.) will be considered
by the examiner to be owned by, or subject to an
obligation of assignment to the same person, at the time the
invention was made, if the applicant(s) or an attorney or
agent of record makes a statement to the effect that the
application and the reference were, at the time the invention
was made, owned by, or subject to an obligation of assignment
to, the same person.


Examiner Note:
See “Guidelines Setting Forth a Modified Policy
Concerning the Evidence of Common Ownership, or
an Obligation of Assignment to the Same Person, as
Required by 35 U.S.C. 103(c),” 1241 O.G. 96
(December 26, 2000). The applicant(s) or the representative(
s) of record have the best knowledge of the
ownership of their application(s) and reference(s), and
their statement of such is sufficient evidence because
of their paramount obligation of candor and good
faith to the USPTO.


1.This form paragraph must be preceded either by form paragraphs
The statement concerning common ownership
7.07 and 7.11 or by form paragraph 7.103.
should be clear and conspicuous (e.g., on a separate
piece of paper or in a separately labeled section) in
order to ensure that the examiner quickly notices the
statement. Applicants may, but are not required to,
submit further evidence, such as assignment records,
affidavits or declarations by the common owner, or
court decisions, in addition to the above-mentioned
statement concerning common ownership.


2.In bracket 3, insert an explanation of this rejection which  
For example, an attorney or agent of record
must include appropriate dates and how they make the foreign
receives an Office action for Application X in which  
patent available under 35 U.S.C. 102(d).
all the claims are rejected under 35 U.S.C. 103(a)
using Patent A in view of Patent B wherein Patent A
is only available as prior art under 35 U.S.C. 102(e),
(f), and/or (g). In her response to the Office action, the
attorney or agent of record for Application X states, in
a clear and conspicuous manner, that:


3.Refer to MPEP § 2135 for applicable 35 U.S.C. 102(d) prior
"Application X and Patent A were, at the time the invention
art.
of Application X was made, owned by Company Z."


¶ 7.19 Rejection, 35 U.S.C. 102(f), Applicant Not the  
This statement alone is sufficient evidence to disqualify
Inventor
Patent A from being used in a rejection under
35 U.S.C. 103(a) against the claims of Application X.


Claim [1] rejected under 35 U.S.C. 102(f) because the applicant
In rare instances, the examiner may have independent
did not invent the claimed subject matter. [2]
evidence that raises a material doubt as to the
 
accuracy of applicant’s representation of either (1) the
Examiner Note:
common ownership of, or (2) the existence of an obligation
 
to commonly assign, the application being
1.This paragraph must be preceded either by paragraphs 7.07and 7.13 or by paragraph 7.103.
examined and the applied U.S. patent or U.S. patent
 
application publication reference. In such cases, the
2.In bracket 2, insert an explanation of the supporting evidence  
examiner may explain why the accuracy of the representation
establishing that applicant was not the inventor. See MPEP §
is doubted, and require objective evidence  
2137.
of common ownership of, or the existence of an obligation
 
to assign, the application being examined and
706.02(j)Contents of a 35 U.S.C. 103
the applied reference as of the date of invention of the
Rejection
application being examined. As mentioned above,
applicant(s) may submit, in addition to the above-
mentioned statement regarding common ownership,
the following objective evidence:


35 U.S.C. 103 authorizes a rejection where, to meet
(A) Reference to assignments recorded in the U.S.  
the claim, it is necessary to modify a single reference
Patent and Trademark Office in accordance with  
or to combine it with one or more other references.
37 CFR Part 3 which convey the entire rights in the  
After indicating that the rejection is under 35 U.S.C.
applications to the same person(s) or organization(s);
103, the examiner should set forth in the Office
action:


(A)the relevant teachings of the prior art relied
(B) Copies of unrecorded assignments which convey
upon, preferably with reference to the relevant column
the entire rights in the applications to the same
or page number(s) and line number(s) where
person(s) or organization(s) are filed in each of the
appropriate,
applications;


(B)the difference or differences in the claim over
(C) An affidavit or declaration by the common
the applied reference(s),
owner is filed which states that there is common ownership
and states facts which explain why the affiant
or declarant believes there is common ownership,
which affidavit or declaration may be signed by an
official of the corporation or organization empowered
to act on behalf of the corporation or organization
when the common owner is a corporation or other
organization; and


(C)the proposed modification of the applied reference(
(D) Other evidence is submitted which establishes
s) necessary to arrive at the claimed subject
common ownership of the applications.  
matter, and
 
(D)an explanation why one of ordinary skill in
the art at the time the invention was made would have
been motivated to make the proposed modification.  


======III.EVIDENCE REQUIRED TO ESTABLISH A JOINT RESEARCH AGREEMENT======


Once an examiner has established a prima faciecase of obviousness under 35 U.S.C. 103(a), the burden
of overcoming the rejection by invoking the joint
research agreement provisions of 35 U.S.C. 103(c) as
amended by the CREATE Act is on the applicant or
the patentee. 35 U.S.C. 103(c)(3) defines a “joint
research agreement” as a written contract, grant, or
cooperative agreement entered into by two or more
persons or entities for the performance of experimental,
developmental, or research work in the field of the
claimed invention, that was in effect on or before the
date the claimed invention (under examination or
reexamination) was made.


Like the common ownership or assignment provision,
the joint research agreement must be shown to
be in effect on or before the time the later invention
was made. The joint research agreement may be in
effect prior to the effective date (December 10, 2004)
of the CREATE Act. In addition, the joint research
agreement is NOT required to be in effect on or before
the prior art date of the reference that is sought to be
disqualified.


To overcome a rejection under 35 U.S.C. 103(a)
based upon subject matter (whether a patent document,
publication, or other evidence) which qualifies
as prior art under only one or more of 35 U.S.C.
102(e), (f), or (g) via the CREATE Act, the applicant
must comply with the statute and the rules of practice
in effect.
 
{{Statute|37 CFR 1.71. Detailed description and specification of the invention.}}
{{Ellipsis}}
(g)
{{tab1}}(1) The specification may disclose or be amended to disclose the names of the parties to a joint research agreement (35 U.S.C. 103(c)(2)(C)).</p>
 
{{tab1}}(2) An amendment under paragraph (g)(1) of this section must be accompanied by the processing fee set forth § 1.17(i) if not filed within one of the following time periods:</p>


To establish a prima facie case of obviousness,
{{tab2}}(i) Within three months of the filing date of a national application;</p>
three basic criteria must be met. First, there must be
some suggestion or motivation, either in the references
themselves or in the knowledge generally available
to one of ordinary skill in the art, to modify the
reference or to combine reference teachings. Second,
there must be a reasonable expectation of success.
Finally, the prior art reference (or references when
combined) must teach or suggest all the claim limitations.
The teaching or suggestion to make the claimed
combination and the reasonable expectation of success
must both be found in the prior art and not based
on applicant’s disclosure. In re Vaeck, 947 F.2d 488,
20
USPQ2d 1438 (Fed. Cir. 1991). See MPEP § 2143- §
2143.03 for decisions pertinent to each of these
criteria.


The initial burden is on the examiner to provide
{{tab2}}(ii) Within three months of the date of entry of the national stage as set forth in § 1.491 in an international application; </p>
some suggestion of the desirability of doing what the
inventor has done. “To support the conclusion that the  
claimed invention is directed to obvious subject matter,
either the references must expressly or impliedly
suggest the claimed invention or the examiner must
present a convincing line of reasoning as to why the
artisan would have found the claimed invention to
have been obvious in light of the teachings of the references.”
Ex parte Clapp, 227 USPQ 972, 973 (Bd.
Pat. App. & Inter. 1985). See MPEP § 2144 -
§
2144.09 for examples of reasoning supporting obviousness
rejections.  


Where a reference is relied on to support a rejection,
{{tab2}}(iii) Before the mailing of a first Office action on the merits; or</p>
whether or not in a minor capacity, that reference
should be positively included in the statement of the
rejection. See In re Hoch, 428 F.2d 1341, 1342 n.3
166 USPQ 406, 407 n. 3 (CCPA 1970).


It is important for an examiner to properly communicate
{{tab2}}(iv) Before the mailing of a first Office action after the filing of a request for continued examination under § 1.114.</p>
the basis for a rejection so that the issues can be
identified early and the applicant can be given fair
opportunity to reply. Furthermore, if an initially
rejected application issues as a patent, the rationale
behind an earlier rejection may be important in interpreting
the scope of the patent claims. Since issued
patents are presumed valid (35 U.S.C. 282) and constitute
a property right (35 U.S.C. 261), the written
record must be clear as to the basis for the grant. Since
patent examiners cannot normally be compelled to
testify in legal proceedings regarding their mental
processes (see MPEP § 1701.01), it is important that
the written record clearly explain the rationale for
decisions made during prosecution of the application.


See MPEP § 2141 - § 2144.09 generally for guidance
{{tab1}}(3) If an amendment under paragraph (g)(1) of this section is filed after the date the issue fee is paid, the patent as issued may not necessarily include the names of the parties to the joint research agreement. If the patent as issued does not include the names of the parties to the joint research agreement, the patent must be corrected to include the names of the parties to the joint research agreement by a certificate of correction under 35 U.S.C. 255 and § 1.323 for the amendment to be effective.</p>
on patentability determinations under 35 U.S.C.
|}
103, including a discussion of the requirements of  
Graham v. John Deere, 383 U.S. 1, 148 USPQ 459
(1966). See MPEP §
2145 for consideration of applicant’s
rebuttal arguments. See MPEP § 706.02(l) -
§
706.02(l)(3) for a discussion of prior art disqualified
under 35 U.S.C. 103(c).


706.02(k)Provisional Rejection (Obviousness)
Under 35 U.S.C. 102(e)/103[R-5]


Effective November 29, 1999, subject matter which
{{Statute|37 CFR 1.104. Nature of examination.}}
was prior art under former 35 U.S.C. 103 via
{{Ellipsis}}
35
(c) Rejection of claims.
U.S.C. 102(e) was disqualified as prior art against
the claimed invention if that subject matter and the
claimed invention “were, at the time the invention
was made, owned by the same person or subject to an
obligation of assignment to the same person.” This
amendment to 35 U.S.C. 103(c) was made pursuant to
section 4807 of the American Inventors Protection
Act of 1999 (AIPA); see Pub. L. 106-113, 113 Stat.
1501, 1501A-591 (1999). The changes to 35 U.S.C.  
102(e) in the Intellectual Property and High Technology
Technical Amendments Act of 2002 (Pub. L. 107-
273, 116 Stat. 1758 (2002)) did not affect the exclusion
under 35 U.S.C. 103(c) as amended on November
29, 1999. Subsequently, the Cooperative Research
and Technology Enhancement Act of 2004 (CREATE
Act) (Pub. L. 108-453, 118 Stat. 3596 (2004)) further
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 three conditions are met:


(A)the claimed invention was made by or on
{{tab1}}(4) Subject matter which is developed by another person
behalf of parties to a joint research agreement that
which qualifies as prior art only under 35 U.S.C. 102(e), (f) or (g)
was in effect on or before the date the claimed invention  
may be used as prior art under 35 U.S.C. 103 against a claimed
was made;
invention unless the entire rights to the subject matter and the
claimed invention were commonly owned by the same person or  
subject to an obligation of assignment to the same person at the
time the claimed invention was made.</p>


{{tab2}}(i) Subject matter developed by another person and a claimed invention shall be deemed to have been commonly owned by the same person or subject to an obligation of assignment to the same person in any application and in any patent granted on or after December 10, 2004, if: </p>


{{tab3}}(A) The claimed invention and the subject matter was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made;</p>


{{tab3}}(B) The claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and</p>


{{tab3}}(C) The application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.</p>


(B)the claimed invention was made as a result of  
{{tab2}}(ii) For purposes of paragraph (c)(4)(i) of this section, the term “joint research agreement” means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.</p>
activities undertaken within the scope of the joint
research agreement; and


(C)the application for patent for the claimed  
{{tab2}}(iii) To overcome a rejection under 35 U.S.C. 103(a) based upon subject matter which qualifies as prior art under only one or more of 35 U.S.C. 102(e), (f) or (g) via 35 U.S.C. 103(c)(2), the applicant must provide a statement to the effect that the prior art and the claimed invention were made by or on the behalf of parties to a joint research agreement, within the meaning of 35 U.S.C. 103(c)(3) and paragraph (c)(4)(ii) of this section, that was in effect on or before the date the claimed invention was made, and that the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement.</p>
invention discloses or is amended to disclose the  
|}
names of the parties to the joint research agreement  
(hereinafter “joint research agreement disqualification”).


37 CFR 1.71(g) provides for the situation in which
an application discloses or is amended to disclose the
names of the parties to a joint research agreement to
invoke the “safe harbor” provision of 35 U.S.C.
103(c) as amended by the CREATE Act. 37 CFR
1.71(g)(1) specifically provides that the specification
may disclose or be amended to disclose the name of
each party to the joint research agreement because
this information is required by 35 U.S.C.
103(c)(2)(C).


These changes to 35 U.S.C. 103(c) apply to all
37 CFR 1.71(g)(2) provides that an amendment
patents (including reissue patents) granted on or after
under 37 CFR 1.71(g)(1) must be accompanied by the  
December 10, 2004. The amendment to 35 U.S.C.
processing fee set forth in 37 CFR 1.17(i) if it is not
103(c) made by the AIPA to change “subsection (f) or
filed within one of the following time periods: (1)  
(g)” to “one of more of subsections (e), (f), or (g)”
within three months of the filing date of a national
applies to applications filed on or after November 29,
application; (2) within three months of the date of
1999. It is to be noted that, for all applications
entry of the national stage as set forth in 37 CFR
(including reissue applications), if the application is
1.491 in an international application; (3) before the
pending on or after December 10, 2004, the 2004
mailing of a first Office action on the merits; or (4)  
changes to 35 U.S.C. 103(c), which effectively
before the mailing of a first Office action after the filing
include the 1999 changes, apply; thus, the November
of a request for continued examination under 37
29, 1999 date of the prior revision to 35 U.S.C. 103(c)
CFR 1.114.
is no longer relevant. In a reexamination proceeding,
however, one must look at whether or not the patent
being reexamined was granted on or after December
10, 2004 to determine whether 35 U.S.C. 103(c), as
amended by the CREATE Act, applies. For a reexamination
proceeding of a patent granted prior to
December 10, 2004 on an application filed on or after
November 29, 1999, it is the 1999 changes to 35
U.S.C. 103(c) that are applicable to the disqualifying
commonly assigned/owned prior art provisions of 35
U.S.C. 103(c). See MPEP § 706.02(l)(1) for additional
information regarding disqualified prior art
under 35 U.S.C. 102(e)/103. For a reexamination proceeding
of a patent granted prior to December 10,
2004 on an application filed prior to November 29,
1999, neither the 1999 nor the 2004 changes to 35
U.S.C. 103(c) are applicable. Therefore, only prior art
under 35 U.S.C. 102(f) or (g) used in a rejection under
35 U.S.C. 103(a) may be disqualified under the commonly
assigned/owned prior art provision of 35
U.S.C. 103(c).


Where two applications of different inventive entities
37 CFR 1.71(g)(3) provides that if an amendment
are copending, not published under 35 U.S.C.
under 37 CFR 1.71(g)(1) is filed after the date the
122(b), and the filing dates differ, a provisional rejection
issue fee is paid, the patent as issued may not necessarily
under 35 U.S.C. 102(e)/103 should be made in
include the names of the parties to the joint
the later filed application unless the application has
research agreement. 37 CFR 1.71(g)(3) also provides
been excluded under 35 U.S.C. 103(c), including the
that if the patent as issued does not include the names
new provisions added by the CREATE Act. See
of the parties to the joint research agreement, the
MPEP § 706.02(l)(3) for examination procedure with
patent must be corrected to include the names of the
respect to 35 U.S.C. 103(c). See also MPEP
parties to the joint research agreement by a certificate
§
of correction under 35 U.S.C. 255 and 37 CFR 1.323
for the amendment to be effective. The requirements
706.02(f) for examination procedure in determining
of 37 CFR 1.71(g)(3) (correction of the patent by a
when provisional rejections are appropriate. Otherwise
certificate of correction under 35 U.S.C. 255 and 37
the confidential status of unpublished application,
CFR 1.323) also apply in the situation in which such
or any part thereof, under 35 U.S.C. 122 must be
an amendment is not filed until after the date the
maintained. Such a rejection alerts the applicant that
patent was granted (in a patent granted on or after
he or she can expect an actual rejection on the same
December 10, 2004). It is unnecessary to file a reissue
ground if one of the applications issues and also lets
application or request for reexamination of the patent
applicant know that action must be taken to avoid the  
to submit the amendment and other information necessary
rejection.
to take advantage of 35 U.S.C. 103(c) as
amended by the CREATE Act. See H.R. Rep. No.  
108-425, at 9 (“[t]he omission of the names of parties
to the agreement is not an error that would justify
commencement of a reissue or reexamination proceeding”).


This gives applicant the opportunity to analyze the  
The submission of such an amendment remains
propriety of the rejection and possibly avoid the loss
subject to the rules of practice: e.g., 37 CFR 1.116,
of rights to desired subject matter. Provisional rejections
1.121, and 1.312. For example, if an amendment
of the obviousness type under 35 U.S.C. 102(e)/
under 37 CFR 1.71(g) is submitted in an application
103 are rejections applied to copending applications
under final rejection to overcome a rejection under 35  
having different effective filing dates wherein each
U.S.C. 103(a) based upon a U.S. patent which qualifies
application has a common assignee or a common
as prior art only under 35 U.S.C. 102(e), the
inventor. The earlier filed application, if patented or
examiner may refuse to enter the amendment under
published, would constitute prior art under 35  
37 CFR 1.71(g) if it is not accompanied by an appropriate
U.S.C.  
terminal disclaimer (37 CFR 1.321(d)). This is
102(e). The rejection can be overcome by:
because such an amendment may necessitate the
reopening of prosecution (e.g., for entry of a double
patenting rejection).


(A)Arguing patentability over the earlier filed  
If an amendment under 37 CFR 1.71(g) is submitted
application;
to overcome a rejection under 35 U.S.C. 103(a)
based upon a U.S. patent or U.S. patent application
publication which qualifies as prior art only under 35
U.S.C. 102(e), and the examiner withdraws the rejection
under 35 U.S.C. 103(a), the examiner may need
to issue an Office action containing a new double patenting
rejection based upon the disqualified patent or
patent application publication. In these situations,
such Office action can be made final, provided that
the examiner introduces no other new ground of rejection
that was not necessitated by either amendment or
an information disclosure statement filed during the
time period set forth in 37 CFR 1.97(c) with the fee
set forth in 37 CFR 1.17(p). The Office action is properly
made final because the new double patenting
rejection was necessitated by amendment of the application  
by applicant. This is the case regardless of
whether the claims themselves have been amended.


(B)Combining the subject matter of the copending
In addition to amending the specification to disclose
applications into a single application claiming
the names of the parties to the joint research
benefit under 35 U.S.C. 120 of the prior applications
agreement, applicant must submit the required statement
and abandoning the copending applications (Note that
to invoke the prior art disqualification under the
a claim in a subsequently filed application that relies
CREATE Act. 37 CFR 1.104(c)(4) sets forth the  
on a combination of prior applications may not be
requirement for the statement, which includes a statement
entitled to the benefit of an earlier filing date under
to the effect that the prior art and the claimed
35  
invention were made by or on the behalf of parties to
U.S.C. 120 since 35 U.S.C. 120 requires that the  
a joint research agreement, within the meaning of 35  
earlier filed application contain a disclosure which
U.S.C. 103(c)(3), which was in effect on or before the
complies with 35 U.S.C. 112, first paragraph for each
date the claimed invention was made, and that the  
claim in the subsequently filed application. Studiengesellschaft
claimed invention was made as a result of activities
Kohle m.b.H. v. Shell Oil Co., 112 F.3d
undertaken within the scope of the joint research
1561, 42 USPQ2d 1674 (Fed. Cir. 1997).);
agreement. The statement should either be on or begin
on a separate sheet and must not be directed to other
matters (37 CFR 1.4(c)). The statement must be
signed in accordance with 37 CFR 1.33(b).


(C)Filing an affidavit or declaration under
If the applicant disqualifies the subject matter relied
37
upon by the examiner in accordance with 35 U.S.C.
CFR 1.132 showing that any unclaimed invention
103(c) as amended by the CREATE Act and the procedures
disclosed in the copending application was derived
set forth in the rules, the examiner will treat
from the inventor of the other application and is thus
the application under examination and the 35 U.S.C.
not invention “by another” (see MPEP § 715.01(a),  
102(e), (f), or (g) prior art as if they are commonly
§
owned for purposes of 35 U.S.C. 103(a).
715.01(c), and § 716.10);


(D)Filing an affidavit or declaration under
The following examples are provided for illustration
37
only:
CFR 1.131 showing a date of invention prior to the
<div style="margin-left: 2em;">
effective U.S. filing date of the copending application.
'''Example 1'''
See MPEP §
715; or


Company A and University B have a joint research
agreement (JRA) in place prior to the date invention
X’ was made. Professor BB from University
B communicates invention X to Company A. On
November 12, 2004, University B filed a patent
application on invention X. On December 13,
2004, Company A filed a patent application disclosing
and claiming invention X’, which is
an
obvious variant of invention X. Invention X’
was made as a result of the activities undertaken
within the scope of the JRA. University B retains
ownership of invention X and Company A retains
ownership of invention X’, without any obligation
to assign the inventions to a common owner. Company
A could invoke the joint research agreement
provisions of 35 U.S.C. 103(c) to disqualify University
B’s application as prior art in a rejection
under 35 U.S.C. 103(a).




'''Example 2'''


Professor BB from University B communicates
 
invention X to Company A. On November 12,
(E)For an application that is pending on or after
2004, University B filed a patent application on  
December 10, 2004, a showing that (1) the prior art
invention X. On December 13, 2004, Company A
and the claimed invention were, at the time the invention  
filed a patent application disclosing and claiming
was made, owned by the same person or subject
invention X’, which is an obvious variant of invention
to an obligation of assignment to the same person, or
X. Company A and University B have a joint
(2) the subject matter is disqualified under the amendment
research agreement (JRA), which goes into effect
to 35 U.S.C. 103(c) made by the CREATE Act
on December 20, 2004. University B retains ownership
(i.e., joint research agreement disqualification).
of invention X and Company A retains
ownership of invention X’, without any obligation
to assign the inventions to a common owner. Company
A could not invoke the joint research agreement
provisions of 35 U.S.C. 103(c) to disqualify
University B’s application as prior art in a rejection
under 35 U.S.C. 103(a) because the JRA was
not in effect until after the later invention was
made.


Where the applications are claiming the same patentable
'''Example 3'''
invention, a terminal disclaimer and an affidavit
or declaration under 37 CFR 1.130 may be used to
overcome a rejection under 35 U.S.C. 103 in a common
ownership situation if the earlier filed application
has been published or matured into a patent. See
MPEP § 718.


If a provisional rejection is made and the copending
Company A and University B have a joint research
applications are combined into a single application  
agreement (JRA) in place prior to the date invention
and the resulting single application is subject to a
X’ was made but the JRA is limited to activities
restriction requirement, the divisional application
for invention Y, which is distinct from
would not be subject to a provisional or actual rejection
invention X. Professor BB from University B
under 35 U.S.C. 102(e)/103 since the provisions  
communicates invention X to Company A. On
of 35 U.S.C. 121 preclude the use of a patent issuing
November 12, 2004, University B filed a patent
therefrom as a reference against the other application.
application on invention X. On December 13,
Additionally, the resulting continuation-in-part is entitled
2004, Company A filed a patent application disclosing
to 35 U.S.C. 120 benefit of each of the prior
and claiming invention X’, which is an
applications. This is illustrated in Example 2, below.
obvious variant of invention X. University B
 
retains ownership of invention X and Company A
The following examples are instructive as to the  
retains ownership of invention X’, without any
application of 35 U.S.C. 102(e)/103 in applications
obligation to assign the inventions to a common
filed prior to November 29, 1999 for which a patent
owner. Company A could not invoke the joint
was granted prior to December 10, 2004:
research agreement provisions of 35 U.S.C. 103(c)
to disqualify University B’s application as prior art
in a rejection under 35 U.S.C. 103(a) because the  
claimed invention was not made as a result of the  
activities undertaken within the scope of the JRA.
</div>


Example 1. Assumption: Employees A and B
=====706.02(l)(3)Examination Procedure With Respect to 35 U.S.C. 103(c)=====
work for C, each with knowledge of the other’s
work, and with obligation to assign inventions to C  
while employed.


SITUATIONS
Applications and patents will be considered to be
owned by, or subject to an obligation of assignment
to, the same person, at the time the invention was
made, if the applicant(s) or an attorney or agent of
record makes a statement to the effect that the application
and the reference were, at the time the invention
was made, owned by, or subject to an obligation of
assignment to, the same person(s) or organization(s).
In order to overcome a rejection under 35 U.S.C.
103(a) based upon a reference which qualifies as prior
art under only one or more of 35 U.S.C. 102(e), (f), or
(g), via the CREATE Act, the applicant must comply
with the statute and the rules of practice in effect.


RESULTS
See MPEP § 706.02(l)(2) for additional information
pertaining to establishing common ownership.


1. A invents X and later files application.  
======I. DOUBLE PATENTING REJECTIONS======


This is permissible.
* Commonly owned applications of different inventive entities may be rejected on the ground of double patenting, even if the later filed application claims 35 U.S.C. 120 benefit to the earlier pplication.


2. B modifies X to XY. B files application before A’s
* For purposes of double patenting analysis, the application or patent and the subject matter disqualified under 35 U.S.C. 103(c) as amended by the CREATE Act will be treated as if commonly owned.
filing.  


No 35 U.S.C. 102(f)/103 or 102(g)/103 rejection;
A rejection based on a pending application would
provisional 35 U.S.C. 102(e)/103 rejection applies.  
be a provisional rejection. The practice of rejecting
Provisional double patenting rejection made.
claims on the ground of double patenting in commonly
 
owned applications of different inventive entities
3. B’s patent issues.
is in accordance with existing case law and
 
prevents an organization from obtaining two or more
A’s claims rejected under 35 U.S.C. 102(e)/103 and
patents with different expiration dates covering nearly
double patenting.
identical subject matter. See [[MPEP 804]] for guidance
 
on double patenting issues. In accordance with
4. A files 37 CFR 1.130 affidavit to disqualify B’s
established patent law doctrines, double patenting  
patent as prior art where the same patentable invention
rejections can be overcome in
is being claimed. Terminal disclaimer filed under
certain circumstances
37 CFR 1.321(c).  
by disclaiming, pursuant to the existing provisions of
 
37 CFR 1.321, the terminal portion of the term of the
Rejection under 35 U.S.C. 102(e)/103 may be overcome
later patent and including in the disclaimer a provision
and double patenting rejection may be overcome
that the patent shall be enforceable only for and
if inventions X and XY are commonly owned
during the period the patent is commonly owned with
and all requirements of 37 CFR 1.130 and 1.321 are
the application or patent which formed the basis
met.
for the rejection, thereby eliminating the problem
 
of extending patent life. For a double patenting
 
rejection based on a non-commonly owned patent
 
(treated as if commonly owned pursuant to the CREATE
 
Act), the double patenting rejection may be obviated
 
by filing a terminal disclaimer in accordance
In situation (2.) above, the result is a provisionalrejection by the examiner under 35 U.S.C. 102(e)/
with 37 CFR 1.321(d). See MPEP § 804 and
103. The rejection is provisional since the subject
§ 804.02.
matter and the prior art are pending applications.  


Example 2. Assumption: Employees A and B
====706.02(n)Biotechnology Process Applications; 35 U.S.C. 103(b)====
work for C, each with knowledge of the other’s
work, and with obligation to assign inventions to C  
while employed.


{{Statute|35 U.S.C. 103. Conditions for patentability; non-obvious subject matter.}}
{{Ellipsis}}
(b)(1) Notwithstanding subsection (a), and upon timely election
by the applicant for patent to proceed under this subsection, a
biotechnological process using or resulting in a composition of
matter that is novel under section 102 and nonobvious under subsection
(a) of this section shall be considered nonobvious if-


(A)claims to the process and the composition of matter
are contained in either the same application for patent or in separate
applications having the same effective filing date; and


(B)the composition of matter, and the process at the time
it was invented, were owned by the same person or subject to an
obligation of assignment to the same person.


(2)A patent issued on a process under paragraph (1)-


SITUATIONS
(A)shall also contain the claims to the composition of
matter used in or made by that process, or


RESULTS
(B)shall, if such composition of matter is claimed in
another patent, be set to expire on the same date as such other
patent, notwithstanding section 154.


1. A invents X and files application.
(3)For purposes of paragraph (1), the term “biotechnological
process” means-


This is permissible.
(A)a process of genetically altering or otherwise
inducing a single- or multi-celled organism to-


2. B modifies X to XY after A’s application is filed.
(i)express an exogenous nucleotide sequence,
B files application establishing that A and B were
both under obligation to assign inventions to C at the
time the inventions were made.


Provisional 35 U.S.C. 102(e)/103 rejection made;
(ii)inhibit, eliminate, augment, or alter expression
provisional double patenting rejection made; no 35
of an endogenous nucleotide sequence, or
U.S.C. 102(f)/103 or 102(g)/103 rejection made.


3. A and B file continuing application claiming priority
(iii)express a specific physiological characteristic
to both their earlier applications and abandon the
not naturally associated with said organism;
earlier applications.


Assume it is proper that restriction be required
(B)cell fusion procedures yielding a cell line that  
between X and XY.
expresses a specific protein, such as a monoclonal antibody; and


4. X is elected and patent issues on X with divisional
(C)a method of using a product produced by a process
application being timely filed on XY.
defined by subparagraph (A) or (B), or a combination of subparagraphs
(A) and (B).
{{Ellipsis}}
|}


No rejection of divisional application under 35  
35 U.S.C. 103(b) is applicable to biotechnological
U.S.C. 102(e)/103 in view of 35 U.S.C. 121.
processes only. 35 U.S.C. 103(b) precludes a rejection
of process claims which involve the use or making of
certain nonobvious biotechnological compositions of  
matter under 35 U.S.C. 103(a).


35 U.S.C. 103(b) requires that:


(A)the biotechnological process and composition
of matter be contained in either the same application
or in separate applications having the same effective
filing date;


(B)both the biotechnological process and composition
of matter be owned or subject to an assignment
to the same person at the time the process was
invented;


(C)a patent issued on the process also contain the
claims to the composition of matter used in or made
by the process, or, if the process and composition of
matter are in different patents, the patents expire on
the same date;


The following examples are instructive as to rejections
(D)the biotechnological process falls within the
under 35 U.S.C. 102(e)/103 in applications that
definition set forth in 35 U.S.C. 103(b); and
are pending on or after December 10, 2004:


Example 3. Assumption: Employees A and B
(E)a timely election be made to proceed under
work for C, each with knowledge of the other’s
the provisions of 35 U.S.C. 103(b).
work, and with obligation to assign inventions to C  
while employed. Employee A’s application, which
is pending on or after December 10, 2004, is being
examined.


SITUATIONS
An election to proceed under 35 U.S.C. 103(b)
shall be made by way of petition under 37 CFR 1.182.
The petition must establish that all the requirements
set forth in 35
U.S.C. 103(b) have been satisfied.


RESULTS
An election will normally be considered timely if it
is made no later than the earlier of either the payment
of the issue fee or the filing of an appeal brief in an
application which contains a composition of matter
claim which has not been rejected under 35 U.S.C.
102 or 103.


1. A invents X and later files application.
In an application where at least one composition of
 
matter claim has not been rejected under 35 U.S.C.
This is permissible.
102 or 103, a 35 U.S.C. 103(b) election may be
made
by submitting the petition and an amendment
requesting entry of process claims which correspond
to the composition of matter claim.


2. B modifies X to XY. B files application before A’s
For applications pending on or after November 1,
filing. A files an application on invention X.
1995, in which the issue fee has been paid prior to
March 26, 1996, the timeliness requirement for an
election under 35
U.S.C. 103(b) will be considered
satisfied if the conditions of 37 CFR 1.312(b) are met.  
However, if a patent is granted on an application entitled
to the benefit of 35
U.S.C. 103(b) without an  
election having been made as a result of error without
deceptive intent, patentees may file a reissue application  
to permit consideration of process claims which
qualify for 35 U.S.C. 103(b) treatment.


Provisional 35 U.S.C. 102(e)/103 rejection and a
===706.03 Rejections Not Based on Prior Art===
provisional double patenting rejection are made.  


3. B’s patent issues.
The primary object of the examination of an application
is to determine whether or not the claims are
patentable over the prior art. This consideration
should not be relegated to a secondary position while
undue emphasis is given to nonprior art or “technical”
rejections. Effort in examining should be concentrated
on truly essential matters, minimizing or eliminating
effort on technical rejections which are not really critical.
Where a major technical rejection is proper (e.g.,
lack of proper disclosure, undue breadth, utility, etc.)
such rejection should be stated with a full development
of the reasons rather than by a mere conclusion
coupled with some stereotyped expression.


A’s claims are rejected under 35 U.S.C. 102(e)/103
Rejections based on nonstatutory subject matter
and double patenting.
are  
 
explained in MPEP § 706.03(a), § 2105, § 2106 -
4. A files evidence of common ownership of inventions
§ 2106.02, and § 2107 - § 2107.02. Rejections
X and XY at the time invention XY was made
based on subject matter barred by the Atomic
to disqualify B’s patent as prior art. In addition, A
Energy Act are explained in MPEP § 706.03(b). Rejections
files a terminal disclaimer under 37 CFR 1.321(c).
based on duplicate claims are addressed
 
in MPEP § 706.03(k), and double patenting rejections
Rejection under 35 U.S.C. 102(e)/103 will be withdrawn
are addressed in MPEP § 804. See MPEP § 706.03(o)
and double patenting rejection will be obviated
for rejections based on new matter. Foreign
if inventions X and XY are commonly owned at
filing without a license is discussed in MPEP
the time invention XY was made and all requirements
§ 706.03(s). Disclaimer, after interference or
of 37 CFR 1.321 are met.
public use proceeding, res judicata, and reissue are
explained in MPEP § 706.03(u) to § 706.03(x). Rejections
based on 35 U.S.C. 112 are discussed in MPEP
§ 2161 - § 2174. IF THE LANGUAGE IN THE
FORM PARAGRAPHS IS INCORPORATED IN
THE OFFICE ACTION TO STATE THE REJECTION,
THERE WILL BE LESS CHANCE OF A
MISUNDERSTANDING AS TO THE GROUNDS
OF REJECTION.


====706.03(a)Rejections Under 35 U.S.C. 101====


I.SUBJECT MATTER ELIGIBILITY


Patents are not granted for all new and useful
inventions and discoveries. The subject matter of the
invention or discovery must come within the boundaries
set forth by 35
U.S.C. 101, which permits patents
to be granted only for “any new and useful
process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof.”


The term “process” as defined in 35 U.S.C. 100,
means process, art or method, and includes a new use
of a known process, machine, manufacture, composition
of matter, or material.


In situation (2.) above, the result is a provisionalrejection by the examiner under 35 U.S.C. 102(e)/
See MPEP § 2105 for patent eligibility of living
103. The rejection is provisional since the subject  
subject matter and MPEP § 2106 for guidelines
matter and the prior art are pending applications.  
pertaining to subject matter eligibility in general.


Decisions have determined the limits of the statutory
classes. Examples of subject matter not patentable
under the statute follow:


A.Printed Matter


For example, a mere arrangement of printed matter,
though seemingly a “manufacture,” is rejected as not
being within the statutory classes. See In re Miller,
418 F.2d 1392, 164 USPQ 46 (CCPA 1969); Ex parte
Gwinn, 112 USPQ 439 (Bd. App. 1955); and In re
Jones, 373 F.2d 1007, 153 USPQ 77 (CCPA 1967).


B.Naturally Occurring Article


Example 4. Assumption: Employees A and B
Similarly, a thing occurring in nature, which is substantially
work for C, each with knowledge of the other’s
unaltered, is not a “manufacture.” A shrimp
work, and with obligation to assign inventions to C
with the head and digestive tract removed is an example.  
while employed. Employee B’s application, which
Ex parte Grayson, 51 USPQ 413 (Bd. App.
is pending on or after December 10, 2004, is being
1941).  
examined.


SITUATIONS
C.Scientific Principle


RESULTS
A scientific principle, divorced from any tangible
structure, can be rejected as not within the statutory
classes. O'Reilly v. Morse, 56 U.S. (15 How.)
62 (1854).


1. A invents X and files application.  
This subject matter is further limited by the Atomic
Energy Act explained in MPEP § 706.03(b).  


This is permissible.
II.UTILITY


2. B modifies X to XY after A’s application is filed.  
A rejection on the ground of lack of utility
B files evidence establishing that A and B were both
includes
under obligation to assign inventions to C at the time
the more specific grounds of inoperativeness,
the invention XY was made.
involving perpetual motion. A rejection under 35
 
U.S.C. 101 for lack of utility should not be based on
Provisional 35 U.S.C. 102(e)/103 rejection cannot be
grounds that the invention is frivolous, fraudulent or
made; provisional double patenting rejection is made;
against public policy. See Juicy Whip Inc. v. Orange
no 35 U.S.C. 102(f)/103 or 102(g)/103 rejection
Bang Inc., 185 F.3d 1364, 1367-68, 51 USPQ2d 1700,
made.  
1702-03 (Fed. Cir. 1999) (“[Y]ears ago courts invalidated
patents on gambling devices on the ground that  
they were immoral…, but that is no longer the
law…Congress never intended that the patent laws
should displace the police powers of the States, meaning
by that term those powers by which the health,
good order, peace and general welfare of the community
are promoted…we find no basis in section 101 to  
hold that inventions can be ruled unpatentable for lack
of utility simply because they have the capacity to  
fool some members of the public.”). The statutory
basis for this rejection is 35 U.S.C. 101. See MPEP §
2107 for guidelines governing rejections for lack of
utility. See MPEP § 2107.01 - § 2107.03 for legal precedent
governing the utility requirement.


3. B files a terminal disclaimer under 37 CFR
====706.03(b) Barred by Atomic Energy Act====
1.321(c).


The provisional double patenting rejection made in
A limitation on what can be patented is imposed by
B’s application would be obviated if all requirements
the Atomic Energy Act of 1954. Section 151(a)
of 37 CFR 1.321 are met.
(42 U.S.C. 2181(a)) thereof reads in part as follows:


No patent shall hereafter be granted for any invention
or discovery which is useful solely in the utilization
of special nuclear material or atomic energy in an
atomic weapon.


The terms “atomic energy” and “special nuclear
material” are defined in Section 11 of the Act
(42 U.S.C. 2014).


Sections 151(c) and 151(d) (42 U.S.C. 2181(c) and
(d)) set up categories of pending applications relating
to atomic energy that must be brought to the attention
of the Department of Energy. Under 37 CFR
1.14(d), applications for patents which disclose or
which appear to disclose, or which purport to disclose,
inventions or discoveries relating to atomic
energy are reported to the Department of Energy and
the Department will be given access to such applications,
but such reporting does not constitute a determination
that the subject matter of each application so
reported is in fact useful or an invention or discovery
or that such application in fact discloses subject matter
in categories specified by the Atomic Energy Act.


All applications received in the U.S. Patent and
Trademark Office are screened by Technology Center
(TC) work group 3640 personnel, under 37 CFR
1.14(d), in order for the Director to fulfill his
or her responsibilities under section 151(d) (42 U.S.C.
2181(d)) of the Atomic Energy Act. Papers subsequently
added must be inspected promptly by the
examiner when received to determine whether the
application has been amended to relate to atomic
energy and those so related must be promptly forwarded
to Licensing and Review in TC work group
3640.


Example 5. Assumption: Employee A works for
All rejections based upon sections 151(a)(42
assignee I and Employee B works for assignee J.
U.S.C. 2181(a)), 152 (42 U.S.C. 2182), and  
There is a joint research agreement, pursuant to 35
155 (42 U.S.C. 2185) of the Atomic Energy Act must
U.S.C. 103(c), between assignees I and J. Employees
be made only by TC work group 3640 personnel.
A and B each filed an application as set forth
below. Employee B’s invention claimed in his
application was made after the joint research
agreement was entered into, and it was made as a
result of activities undertaken within the scope of
the joint agreement. Employee B’s application discloses
assignees I and J as the parties to the joint
research agreement. Employee B’s application,
which is pending on or after December 10, 2004, is
being examined.
 
SITUATIONS


RESULTS
====706.03(c) Rejections Under 35 U.S.C. 112, First Paragraph====


1. A invents X and files application.  
Rejections based on the first paragraph of
35 U.S.C. 112 are discussed in MPEP § 2161 -
§ 2165.04. For a discussion of the utility requirements
of 35 U.S.C. 112, first paragraph, and 35 U.S.C. 101,
see MPEP § 2107 - § 2107.03.


This is permissible.
====706.03(d) Rejections Under 35 U.S.C. 112, Second Paragraph====


2. B modifies X to XY after A’s application is filed.
Rejections under 35 U.S.C. 112, second paragraph,
B files evidence establishing a joint research agreement
are discussed in MPEP § 2171 - § 2174.
in compliance with 35 U.S.C. 103(c).


Provisional 35 U.S.C. 102(e)/103 rejection cannot be
====706.03(k) Duplicate Claims====
made; provisional double patenting rejection is made;
no 35 U.S.C. 102(f)/103 or 102(g)/103 rejection
made.


3. B files a terminal disclaimer under 37 CFR 1.321.
Inasmuch as a patent is supposed to be limited to
only one invention or, at most, several closely related
indivisible inventions, limiting an application to a single
claim, or a single claim to each of the related
inventions might appear to be logical as well as convenient.
However, court decisions have confirmed
applicant’s right to restate (i.e., by plural claiming) the
invention in a reasonable number of ways. Indeed, a
mere difference in scope between claims has been
held to be enough.


The provisional double patenting rejection made in  
Nevertheless, when two claims in an application
B’s application would be obviated if all requirements
are duplicates, or else are so close in content that they
of 37 CFR 1.321 are met.
both cover the same thing, despite a slight difference
in wording, it is proper after allowing one claim to
object to the other claim under 37 CFR 1.75 as being a
substantial duplicate of the allowed claim.


See MPEP § 804 for double patenting rejections of
inventions not patentable over each other.


====706.03(m) Nonelected Inventions====


See MPEP § 821 to § 821.03 for treatment of
claims held to be drawn to nonelected inventions.


====706.03(o) New Matter====


{{Statute|35 U.S.C. 132. Notice of rejection; reexamination.}}
(a)Whenever, on examination, any claim for a patent is
rejected, or any objection or requirement made, the Director shall
notify the applicant thereof, stating the reasons for such rejection,
or objection or requirement, together with such information and
references as may be useful in judging of the propriety of continuing
the prosecution of his application; and if after receiving such
notice, the applicant persists in his claim for a patent, with or
without amendment, the application shall be reexamined. No
amendment shall introduce new matter into the disclosure of the
invention.
|}


In amended cases, subject matter not disclosed in
the original application is sometimes added and a
claim directed thereto. Such a claim is rejected on the
ground that it recites elements without support in the
original disclosure under 35 U.S.C. 112, first paragraph,
Waldemar Link, GmbH & Co. v. Osteonics
Corp. 32 F.3d 556, 559, 31
USPQ2d 1855, 1857
(Fed. Cir. 1994); In re Rasmussen, 650 F.2d 1212, 211
USPQ 323 (CCPA 1981). See MPEP § 2163.06 -
§ 2163.07(b) for a discussion of the relationship of
new matter to 35 U.S.C. 112, first paragraph. New
matter includes not only the addition of wholly unsupported
subject matter, but may also include adding
specific percentages or compounds after a broader
original disclosure, or even the omission of a step
from a method. See MPEP § 608.04 to § 608.04(c).
See In re Wertheim, 541 F.2d 257, 191 USPQ 90
(CCPA 1976) and MPEP § 2163.05 for guidance in
determining whether the addition of specific percentages
or compounds after a broader original disclosure
constitutes new matter.


In the examination of an application following
amendment thereof, the examiner must be on the alert
to detect new matter. 35 U.S.C. 132 (a) should be
employed as a basis for objection to amendments to
the abstract, specification, or drawings attempting to
add new disclosure to that originally disclosed on filing.


If subject matter capable of illustration is originally
claimed and it is not shown in the drawing, the claim
is not rejected but applicant is required to add it to the
drawing. See MPEP § 608.01(l).


EXAMINATION OF CONTINUING APPLICATION
====706.03(s) Foreign Filing Without License====
COMMONLY OWNED WITH ABANDONED
PARENT APPLICATION TO WHICH
BENEFIT IS CLAIMED UNDER 35 U.S.C. 120


An application claiming the benefit of a prior filed
{{Statute|35 U.S.C. 182. Abandonment of invention for unauthorized disclosure.}}
copending national or international application under
The invention disclosed in an application for patent subject to
35 U.S.C. 120 must name as an inventor at least one
an order made pursuant to section 181 of this title may be held
inventor named in the prior filed application. The  
abandoned upon its being established by the Commissioner
prior filed application must also disclose the named
of Patents that in violation of said order the invention has been
inventor’s invention claimed in at least one claim of
published or disclosed or that an application for a patent therefor
the later filed application in the manner provided by
has been filed in a foreign country by the inventor, his successors,
the first paragraph of 35 U.S.C. 112. This practice
assigns, or legal representatives, or anyone in privity with him or
contrasts with the practice in effect prior to November
them, without the consent of the Commissioner of Patents. The
8, 1984 (the date of enactment of Public Law 98-622)
abandonment shall be held to have occurred as of the time of violation.  
where the inventorship entity in each of the applications
The consent of the Commissioner of Patents shall not be
was required to be the same for benefit under
given without the concurrence of the heads of the departments and  
35
the chief officers of the agencies who caused the order to be
U.S.C. 120.
issued. A holding of abandonment shall constitute forfeiture by
 
the applicant, his successors, assigns, or legal representatives, or  
So long as the applications have at least one inventor  
anyone in privity with him or them, of all claims against the
in common and the other requirements are met, the
United States based upon such invention.
Office will permit a claim for 35 U.S.C. 120 benefit
|}
without any additional submissions or notifications
from applicants regarding inventorship differences.
 
In addition to the normal examination conducted by
the examiner, he or she must examine the earlier filed
application to determine if the earlier and later applications
have at least one inventor in common and that
the other 35 U.S.C. 120 and 37 CFR 1.78 requirements
are met. The claim for 35 U.S.C. 120 benefit
will be permitted without examination of the earlier
application for disclosure and support of at least one
claim of the later filed application under 35 U.S.C.  
112, first paragraph unless it becomes necessary to do
so, for example, because of an intervening reference.
 
706.02(l)Rejections Under 35 U.S.C.
103(a) Using Prior Art Under
Only 35 U.S.C. 102 (e), (f), or  
(g) [R-3]
 
35 U.S.C. 103. Conditions for patentability; non-obvious
subject matter.




{{Statute|35 U.S.C. 184. Filing of application in foreign country.}}
Except when authorized by a license obtained from the Commissioner
of Patents a person shall not file or cause or authorize to
be filed in any foreign country prior to six months after filing in
the United States an application for patent or for the registration of
a utility model, industrial design, or model in respect of an invention
made in this country. A license shall not be granted with
respect to an invention subject to an order issued by the Commissioner
of Patents pursuant to section 181 of this title without the
concurrence of the head of the departments and the chief officers
of the agencies who caused the order to be issued. The license
may be granted retroactively where an application has been filed
abroad through error and without deceptive intent and the application
does not disclose an invention within the scope of section 181 of this title.
|}


The term "application" when used in this chapter includes
applications and any modifications, amendments, or supplements
thereto, or divisions thereof.


The scope of a license shall permit subsequent modifications,
amendments, and supplements containing additional subject matter
if the application upon which the request for the license is
based is not, or was not, required to be made available for inspection
under section 181 of this title and if such modifications,
amendments, and supplements do not change the general nature of
the invention in a manner which would require such application to
be made available for inspection under such section 181. In any
case in which a license is not, or was not, required in order to file
an application in any foreign country, such subsequent modifications,
amendments, and supplements may be made, without a
license, to the application filed in the foreign country if the United
States application was not required to be made available for
inspection under section 181 and if such modifications, amendments,
and supplements do not, or did not, change the general
nature of the invention in a manner which would require the
United States application to have been made available for inspection
under such section 181.


(c)(1) Subject matter developed by another person, which
{{Statute|35 U.S.C. 185. Patent barred for filing without license.}}
qualifies as prior art only under one or more of subsections (e), (f),  
Notwithstanding any other provisions of law any person, and
and (g) of section 102 of this title, shall not preclude patentability
his successors, assigns, or legal representatives, shall not receive a
under this section where the subject matter and the claimed invention  
United States patent for an invention if that person, or his successors,
were, at the time the claimed invention was made, owned by
assigns, or legal representatives shall, without procuring the
the same person or subject to an obligation of assignment to the
license prescribed in section 184 of this title, have made, or consented
same person.
to or assisted another’s making, application in a foreign
country for a patent or for the registration of a utility model,
industrial design, or model in respect of the invention. A United
States patent issued to such person, his successors, assigns, or
legal representatives shall be invalid, unless the failure to procure
such license was through error and without deceptive intent, and
the patent does not disclose subject matter within the scope of section
181 of this title.
|}


(2)For purposes of this subsection, subject matter developed
If, upon examining an application, the examiner
by another person and a claimed invention shall be deemed
learns of the existence of a corresponding foreign
to have been owned by the same person or subject to an obligation
application which appears to have been filed before
of assignment to the same person if —
the United States application had been on file for 6
 
months, and if the invention apparently was made in
(A)the claimed invention was made by or on behalf of  
this country, he or she shall refer the application to  
parties to a joint research agreement that was in effect on or before
Licensing and Review Section of Technology Center
the date the claimed invention was made;
(TC) working group 3640, calling attention to the foreign
application. Pending investigation of the possible
violation, the application may be returned to the TC
for prosecution on the merits. When it is otherwise in
condition for allowance, the application will be again
submitted to Licensing and Review Section of TC
work group 3640 unless the latter has already reported
that the foreign filing involves no bar to the United
States application.


(B)the claimed invention was made as a result of  
If it should be necessary to take action under
activities undertaken within the scope of the joint research agreement;
35 U.S.C. 185, Licensing and Review Section of TC
and
work group 3640 will request transfer of the application
to it.


(C)the application for patent for the claimed invention
====706.03(u) Disclaimer====
discloses or is amended to disclose the names of the parties to the
joint research agreement.


(3)For purposes of paragraph (2), the term “joint
Claims may be rejected on the ground that applicant
research agreement” means a written contract, grant, or cooperative
has disclaimed the subject matter involved. Such
agreement entered into by two or more persons or entities for
disclaimer may arise, for example, from the applicant’s
the performance of experimental, developmental, or research
failure to:
work in the field of the claimed invention.


(A)make claims suggested for interference with
another application under 37 CFR 41.202(c) (See
MPEP Chapter 2300),


(B)copy a claim from a patent when suggested
by the examiner (MPEP Chapter 2300), or


(C)respond or appeal, within the time limit fixed,
to the examiner’s rejection of claims copied from a
patent (see MPEP Chapter 2300).


The rejection on disclaimer applies to all claims not
patentably distinct from the disclaimed subject matter
as well as to the claims directly involved.


It is important to recognize that 35 U.S.C. 103(c)
====706.03(v) After Interference or PublicUse Proceeding====
applies only to consideration of prior art for purposes
of obviousness 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.
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).


A patent applicant or patentee urging that subject
For rejections following an interference, see MPEP  
matter is disqualified has the burden of establishing
Chapter 2300.
that the prior art is disqualified under 35 U.S.C.
103(c). Absent proper evidence of disqualification,  
the appropriate rejection under 35 U.S.C. 103(a) with
applying prior art under 35 U.S.C. 102(e), (f), or (g)
should be made. See MPEP § 706.02(l)(2) for information
pertaining to establishing prior art exclusions
due to common ownership or joint research agreements.


The outcome of public use proceedings may also be
the basis of a rejection. See 37 CFR 1.292 and In re
Kaslow, 707 F.2d 1366, 217 USPQ 1089 (Fed. Cir.
1983).


The term “subject matter” will be construed
Upon termination of a public use proceeding
broadly, in the same manner the term is construed in
including a case also involved in an interference, in  
the remainder of 35 U.S.C. 103. The term “another”
order for a prompt resumption of the interference proceedings,
as used in 35 U.S.C. 103 means any inventive entity
a notice should be sent to the Board of  
other than the inventor and would include the inventor
Patent Appeals and Interferences notifying them of
and any other persons. The term “developed” is to be
the disposition of the public use proceeding.
read broadly and is not limited by the manner in
which the development occurred. The term “commonly
owned” means wholly owned by the same person(
s) or organization(s) at the time the invention was
 


====706.03(w) Res Judicata====


Res judicata may constitute a proper ground for
rejection. However, as noted below, the Court of Customs
and Patent Appeals has materially restricted the
use of res judicata rejections. It should be applied
only when the earlier decision was a decision of the
Board of Appeals or any one of the reviewing courts
and when there is no opportunity for further court
review of the earlier decision.


The timely filing of a second application copending
with an earlier application does not preclude the use
of res judicata as a ground of rejection for the second
application claims.


made. The term “joint research agreement” means a  
When making a rejection on res judicata, action
written contract, grant, or cooperative agreement
should ordinarily be made also on the basis of prior
entered into by two or more persons or entities for the  
art, especially in continuing applications. In most situations
performance of experimental, developmental, or
the same prior art which was relied upon in the  
research work in the field of the claimed invention.
earlier decision would again be applicable.
See MPEP § 706.02(l)(2).


FOR APPLICATIONS FILED PRIOR TO NOVEMBER
====706.03(x) Reissue====
29, 1999 AND GRANTED AS PATENTS
PRIOR TO DECEMBER 10, 2004


Prior to November 29, 1999, 35 U.S.C. 103(c) provided
The examination of reissue applications is covered
that subject matter developed by another which
in MPEP Chapter 1400.
qualifies as “prior art” only under subsections
35
U.S.C. 102(f) or 35 U.S.C. 102(g) is not to be considered
when determining whether an invention
sought to be patented is obvious under 35 U.S.C. 103,
provided the subject matter and the claimed invention
were commonly owned at the time the invention was
made. See MPEP § 706.02(l)(1) for information
regarding when prior art under 35 U.S.C. 102(e)/103is disqualified under 35 U.S.C. 103(c).  


For applications filed prior to November 29, 1999
35 U.S.C. 251 forbids the granting of a reissue
and granted as patents prior to December 10, 2004,
“enlarging the scope of the claims of the original
the subject matter that is disqualified as prior art
patent” unless the reissue is applied for within 2 years
under 35  
from the grant of the original patent. This is an absolute
U.S.C. 103(c) is strictly limited to subject
bar and cannot be excused. This prohibition has
matter that A) qualifies as prior art only under
been interpreted to apply to any claim which is
35
broader in any respect than the claims of the original
U.S.C. 102(f) or 35
patent. Such claims may be rejected as being barred
U.S.C. 102(g), and B) was
by 35 U.S.C. 251. However, when the reissue is
commonly owned with the claimed invention at the  
applied for within 2 years or properly claims the  
time the invention was made. If
benefit of a broadening reissue application filed
the subject matter that
within 2 years of the patent grant, the examiner does
qualifies as prior art only under 35
not go into the question of undue delay.
U.S.C. 102(f) or
35 U.S.C. 102(g) was not commonly owned at the  
time of the invention, the subject matter is not disqualified
as prior art under 35  
U.S.C. 103(c). See
OddzOn Products, Inc. v. Just Toys, Inc., 122 F.3d
1396, 1403-04, 43 USPQ2d 1641, 1646 (Fed. Cir.
1997) (“We therefore hold that subject matter derived
from another not only is itself unpatentable to the  
party who derived it under § 102(f), but, when combined
with other prior art, may make a resulting obvious
invention unpatentable to that party under a  
combination of §§ 102(f) and 103.”) Therefore, in
these applications, information learned from or transmitted
to persons outside the organization is not disqualified
as prior art.  


The same section permits the filing of a reissue
application by the assignee of the entire interest only
in cases where it does not “enlarge the scope of the
claims of the original patent.” Such claims which do
enlarge the scope may also be rejected as barred by
the statute. In In re Bennett, 766 F.2d 524, 226 USPQ
413 (Fed. Cir. 1985), however, the court permitted the
erroneous filing by the assignee in such a case to be
corrected.


A defective reissue oath affords a ground for rejecting
all the claims in the reissue application. See
MPEP § 1444.


Inventors of subject matter not commonly owned at
Note that a reissue application is “special” and
the time of the invention, but currently commonly
remains so even if applicant does not make a prompt
owned, may file as joint inventors in a single application.
reply.
However, the claims in such an application are
 
not protected from a 35
===706.04 Rejection of Previously Allowed Claims===
 
U.S.C. 102(f)/103 or
A claim noted as allowable shall thereafter be
35
rejected only after the proposed rejection has been
U.S.C. 102(g)/103 rejection. Applicants in such
submitted to the primary examiner for consideration
cases have an obligation pursuant to 37
of all the facts and approval of the proposed action.
CFR 1.56 to
point out the inventor and invention dates of each
claim and the lack of common ownership at the time
the later invention was made to enable the examiner  
to consider the applicability of a 35 U.S.C. 102(f)/103or 35
U.S.C. 102(g)/103 rejection. The examiner will
assume, unless there is evidence to the contrary, that
applicants are complying with their duty of disclosure.


Great care should be exercised in authorizing such
a rejection. See Ex parte Grier, 1923 C.D. 27,
309 O.G. 223 (Comm’r Pat. 1923); Ex parte Hay,
1909 C.D. 18, 139 O.G. 197 (Comm’r Pat. 1909).


Foreign applicants will sometimes combine the
PREVIOUS ACTION BY DIFFERENT EXAMINER
subject matter of two or more related applications
with different inventors into a single U.S. application
naming joint inventors. The examiner will make the
assumption, absent contrary evidence, that the applicants
are complying with their duty of disclosure if no
information is provided relative to invention dates and
common ownership at the time the later invention was
made. Such a claim for 35 U.S.C. 119(a)-(d) priority
based upon the foreign filed applications is
appropriate and 35 U.S.C. 119(a)-(d) priority can
be accorded based upon each of the foreign filed
applications.


For rejections under 35 U.S.C. 103(a) using prior  
Full faith and credit should be given to the search
art under 35 U.S.C. 102(f) or (g) in applications pending
and action of a previous examiner unless there is a  
on or after December 10, 2004, see MPEP §
clear error in the previous action or knowledge of
706.02(l)(1).
other prior art. In general, an examiner should not
take an entirely new approach or attempt to reorient
the point of view of a previous examiner, or make a
new search in the mere hope of finding something.
Amgen, Inc. v. Hoechst Marion Roussel, Inc., 126 F.
Supp. 2d 69, 139, 57 USPQ2d 1449, 1499-50 (D.
Mass. 2001).


706.02(l)(1)Rejections Under 35 U.S.C.
===706.05 Rejection After Allowance of Application===
103(a) Using Prior Art
Under 35 U.S.C. 102(e), (f),
or (g); Prior Art Disquali-
fication Under 35 U.S.C.
103(c) [R-3]


35 U.S.C. 103. Conditions for patentability; non-obvious
See [[MPEP 1300|MPEP § 1308.01]] for a rejection based on a reference
subject matter.  
after allowance.  


===706.06 Rejection of Claims Copied From Patent===


See [[MPEP 2300|MPEP Chapter 2300]].


===706.07 Final Rejection===


{{Statute|37 CFR 1.113. Final rejection or action.}}


(c)(1) Subject matter developed by another person, which
(a) On the second or any subsequent examination or consideration
qualifies as prior art only under one or more of subsections (e), (f),  
by the examiner the rejection or other action may be made
and (g) of section 102 of this title, shall not preclude patentability
final, whereupon applicant’s, or for ex parte reexaminations filed
under this section where the subject matter and the claimed invention
under § 1.510, patent owner’s reply is limited to appeal in the case
were, at the time the claimed invention was made, owned by
of rejection of any claim (§ 41.31 of this title), or to amendment as
the same person or subject to an obligation of assignment to the
specified in § 1.114 or § 1.116. Petition may be taken to the Director
same person.
in the case of objections or requirements not involved in the  
rejection of any claim (§ 1.181). Reply to a final rejection or
action must comply with § 1.114 or paragraph (c) of this section.
For final actions in an inter partes reexamination filed under §
1.913, see § 1.953.


(b)In making such final rejection, the examiner shall repeat
or state all grounds of rejection then considered applicable to the
claims in the application, clearly stating the reasons in support
thereof.


(c)Reply to a final rejection or action must include cancellation
of, or appeal from the rejection of, each rejected claim. If any
claim stands allowed, the reply to a final rejection or action must
comply with any requirements or objections as to form.
|}


STATEMENT OF GROUNDS


In making the final rejection, all outstanding
grounds of rejection of record should be carefully
reviewed, and any such grounds relied on in the final
rejection should be reiterated. They must also be
clearly developed to such an extent that applicant may
readily judge the advisability of an appeal unless a
single previous Office action contains a complete
statement supporting the rejection.


(2)For purposes of this subsection, subject matter developed
====706.07(a) Final Rejection, When Proper on Second Action====
by another person and a claimed invention shall be deemed
to have been owned by the same person or subject to an obligation
of assignment to the same person if —


(A)the claimed invention was made by or on behalf of
A second or any subsequent action on the merits shall be final, except where the
parties to a joint research agreement that was in effect on or before
examiner introduces a new ground of rejection that is
the date the claimed invention was made;
neither necessitated by applicant’s amendment of the
claims nor based on information submitted in an
information disclosure statement filed during the  
period set forth in 37 CFR 1.97(c) with the fee set
forth in 37 CFR 1.17(p).


(B)the claimed invention was made as a result of  
Where information is submitted
activities undertaken within the scope of the joint research agreement;
in an information disclosure statement during
and
the period set forth in 37 CFR 1.97(c) with a fee, the  
examiner may use the information submitted, e.g., a
printed publication or evidence of public use, and
make the next Office action final whether or not the
claims have been amended, provided that no other
new ground of rejection which was not necessitated
by amendment to the claims is introduced by the
examiner. See MPEP § 609.04(b). Furthermore, a second
or any subsequent action on the merits in any
application or patent undergoing reexamination proceedings
will not be made final if it includes a rejection,
on newly cited art, other than information
submitted in an information disclosure statement filed
under 37 CFR 1.97(c) with the fee set forth in 37 CFR
1.17(p), of any claim not amended by applicant or
patent owner in spite of the fact that other claims may
have been amended to require newly cited art. Where
information is submitted in a reply to a requirement
under 37
CFR
1.105, the examiner may NOT make
the next Office action relying on that art final unless
all instances of the application of such art are necessitated
by amendment.


(C)the application for patent for the claimed invention
A second or any subsequent action on the merits in
discloses or is amended to disclose the names of the parties to the  
any application or patent involved in reexamination
joint research agreement.  
proceedings should not be made final if it includes a
rejection, on prior art not of record, of any claim
amended to include limitations which should reasonably
have been expected to be claimed. See MPEP
§ 904 et seq. For example, one would reasonably
expect that a rejection under 35 U.S.C. 112 for the  
reason of incompleteness would be replied to by an
amendment supplying the omitted element.


(3)For purposes of paragraph (2), the term “joint
A second or any subsequent action on the merits in
research agreement” means a written contract, grant, or cooperative
any application or patent involved in reexamination
agreement entered into by two or more persons or entities for
proceedings may not be made final if it contains a
the performance of experimental, developmental, or research
new ground of rejection necessitated by the amendments
work in the field of the claimed invention.
to 35 U.S.C. 102(e) by the Intellectual Property
and High Technology Technical Amendments Act of
2002 (Pub. L. 107-273, 116 Stat. 1758 (2002)), unless
the new ground of rejection was necessitated by an
amendment to the claims or as a result of information
submitted in an information disclosure statement
under 37 CFR 1.97(c) with the fee set forth in 37 CFR
1.17(p).


When applying any 35 U.S.C. 102(e)/103 references
against the claims of an application  the
examiner should anticipate that a statement averring
common
ownership at the time the invention was
made
may disqualify any patent or application applied
in a
rejection under 35
U.S.C. 103 based on 35 U.S.C.
102(e). If such a statement is filed in reply to the
35
U.S.C. 102(e)/103 rejection and the claims are not
amended, the examiner may not make the next Office
action final if a new rejection is made. See MPEP §
706.02(l)(3). If a reference is disqualified under the
joint research agreement provision of 35 U.S.C.
103(c) and a new subsequent double patenting rejection
based upon the disqualified reference is applied,
the next Office action, which contains the new double
patenting rejection, may be made final even if applicant
did not amend the claims (provided that the
examiner introduces no other new ground of rejection
that was not necessitated by either amendment or an
information disclosure statement filed during the time
period set forth in 37 CFR 1.97(c) with the fee set
forth in 37 CFR 1.17(p)). The Office action is properly
made final because the new double patenting
rejection was necessitated by amendment of the application
by applicant.


See MPEP § 809.02(a) for actions which indicate
generic claims as not allowable.


I.COMMON OWNERSHIP OR ASSIGNEE
In the consideration of claims in an amended case
PRIOR ART EXCLUSION UNDER 35
where no attempt is made to point out the patentable
U.S.C. 103(c)
novelty, the examiner should be on guard not to allow
such claims. See MPEP § 714.04. The claims may be
finally rejected if, in the opinion of the examiner, they
are clearly open to rejection on grounds of record.


Enacted on November 29, 1999, the American
====706.07(b) Final Rejection, When Properon First Action====
Inventors Protection Act (AIPA) added subject
 
matter which was prior art under former 35 U.S.C.
The claims of a new application may be finally
103 via 35 U.S.C. 102(e) as disqualified  prior
rejected in the first Office action in those situations
art against the claimed invention if that subject matter
where (A) the new application is a continuing application
and the claimed invention “were, at the time the
of, or a substitute for, an earlier application, and  
invention was made, owned by the same person or
(B) all claims of the new application (1) are drawn to  
subject to an obligation of assignment to the same
the same invention claimed in the earlier application,  
person.” The 1999 change to 35 U.S.C. 103(c)  
and (2) would have been properly finally rejected on  
only applied to all utility, design and plant patent
the grounds and art of record in the next Office action
applications filed on or after November 29, 1999.
if they had been entered in the earlier application.
The Cooperative Research and Technology Enhancement
Act of 2004 (CREATE Act), in part, redesignated
the former 35 U.S.C. 103(c) to 35 U.S.C.
103(c)(1) and made this provision effective to all
applications in which the patent is granted on or after
December 10, 2004. Therefore, the provision of 35
U.S.C. 103(c)(1) is effective for all applications pending
on or after December 10, 2004, including applications
filed prior to November 29, 1999. In addition,
this provision applies to all patent applications,
including utility, design, plant and reissue applications.
The amendment to 35 U.S.C. 103(c)(1) does not
affect any application filed before November 29, 1999
and issued as a patent prior to December 10, 2004.


In a reexamination proceeding, however, one must
A first Office action in a continuing or substitute
look at whether or not the patent being reexamined
application may not be made final if it contains a new
was granted on or after December 10, 2004 to determine
ground of rejection necessitated by the amendments
whether 35 U.S.C. 103(c), as amended by the
to 35 U.S.C. 102(e) by the Intellectual Property and
CREATE Act, applies. For a reexamination proceeding
High Technology Technical Amendments of 2002
of a patent granted prior to December 10, 2004 on
(Pub. L. 107-273, 116 Stat. 1758 (2002)).
an application filed on or after November 29, 1999, it  
is the 1999 changes to 35 U.S.C. 103(c) that are applicable
to the disqualifying commonly assigned/owned
prior art provisions of 35 U.S.C. 103(c). For a reexamination
proceeding of a patent granted prior to
December 10, 2004 on an application filed prior to
November 29, 1999, neither the 1999 nor the 2004
changes to 35 U.S.C. 103(c) are applicable. Therefore,
only prior art under 35 U.S.C. 102(f) or (g) used
in a rejection under 35 U.S.C. 103(a) may be disqualified
under the commonly assigned/owned prior art
provisions of 35 U.S.C. 103(c).


For reissue applications, the doctrine of recapture
However, it would not be proper to make final a
may prevent the presentation of claims in the
first Office action in a continuing or substitute application
reissue applications that were amended or cancelled
where that application contains material which  
from the application which matured into the patent for
was presented in the earlier application after final
which reissue is being sought, if the claims were
rejection or closing of prosecution but was denied
amended or cancelled to distinguish the claimed
entry because (A) new issues were raised that required
invention from 35
further consideration and/or search, or (B) the issue of  
U.S.C. 102(e)/103 prior art which
new matter was raised.
was not able to be excluded under 35 U.S.C.
103(c) in the application that issued as a patent. If an
examiner determines that this situation applies in the
reissue application under examination, a consultation
with the Office of Patent Legal Administration should
be initiated via the Technology Center Special Program
Examiner.


35 U.S.C. 103(c) applies only to prior art usable in
Further, it would not be proper to make final a first
an obviousness rejection under 35 U.S.C. 103. Subject
Office action in a continuation-in-part application
matter that qualifies as anticipatory prior art
where any claim includes subject matter not present in  
under 35 U.S.C. 102  is not affected, and may still
the earlier application.
be used to reject claims as being anticipated. In addition,
double patenting rejections, based on subject  
matter now disqualified as prior art in amended 35
U.S.C. 103(c), should still be made as appropriate.
See 37 CFR 1.78(c) and MPEP § 804.


The burden of establishing that subject matter is
A request for an interview prior to first action on a  
disqualified as prior art is placed on applicant once
continuing or substitute application should ordinarily
the examiner has established a prima facie case of
be granted.
obviousness based on the subject matter. For example,
the fact that the reference and the application  
have the same assignee is not, by itself, sufficient evidence
to disqualify the prior art under 35 U.S.C.
103(c). There must be a statement that the common
ownership was “at the time the invention was made.”


====706.07(c) Final Rejection, Premature====


Any question as to prematureness of a final rejection
should be raised, if at all, while the application is
still pending before the primary examiner. This is
purely a question of practice, wholly distinct from the
tenability of the rejection. It may therefore not be
advanced as a ground for appeal, or made the basis of
complaint before the Board of Patent Appeals and
Interferences. It is reviewable by petition under
37
CFR 1.181. See MPEP § 1002.02(c).


====706.07(d) Final Rejection, Withdrawal of, Premature====


If, on request by applicant for reconsideration, the
primary examiner finds the final rejection to have
been premature, he or she should withdraw the finality
of the rejection. The finality of the Office action
must be withdrawn while the application is still pending.
The examiner cannot withdraw the final
rejection once the application is abandoned.


See MPEP § 706.02(l)(2) for information regarding
====706.07(e) Withdrawal of Final Rejection, General====
establishing common ownership. See MPEP
§
706.02(l)(3) for examination procedure with respect
to 35 U.S.C. 103(c).


See MPEP § 714.12 and § 714.13 for amendments
after final rejection.


Once a final rejection that is not premature has been
entered in an application/reexamination proceeding, it
should not be withdrawn at the applicant’s or patent
owner’s request except on a showing under 37 CFR
1.116(b). Further amendment or argument will be
considered in certain instances. An amendment that
will place the application either in condition for
allowance or in better form for appeal may be admitted.
Also, amendments complying with objections or
requirements as to form are to be permitted after final
action in accordance with 37 CFR 1.116(a).


II.JOINT RESEARCH AGREEMENT DISQUALIFICATION
The examiner may withdraw the rejection of finally
UNDER 35 U.S.C. 103(c)
rejected claims. If new facts or reasons are presented
BY THE CREATE ACT
such as to convince the examiner that the previously
 
rejected claims are in fact allowable or patentable in
The CREATE Act (Pub. L. 108-453, 118 Stat. 3596
the case of reexamination, then the final rejection
(2004)) was enacted on December 10, 2004, and is
should be withdrawn. Occasionally, the finality of a
effective for applications for which the patent is
rejection may be withdrawn in order to apply a new
granted on or after December 10, 2004. Specifically,  
ground of rejection.
the CREATE Act amended 35 U.S.C. 103(c) to provide
that:


- subject matter developed by another person,  
Although it is permissible to withdraw a final rejection
which qualifies as prior art only under one or  
for the purpose of entering a new ground of rejection,  
more of subsections (e), (f), and (g) of 35
this practice is to be limited to situations where a
U.S.C. 102 shall not preclude patentability
new reference either fully meets at least one claim or  
under 35 U.S.C. 103 where the subject matter
meets it except for differences which are shown to be
and the claimed invention were, at the time the  
completely obvious. Normally, the previous rejection
claimed invention was made, owned by the  
should be withdrawn with respect to the claim or  
same person or subject to an obligation of
claims involved.
assignment to the same person;


- for purposes of 35 U.S.C. 103, subject matter
The practice should not be used for application of  
developed by another person and a claimed
subsidiary references, or of cumulative references, or
invention shall be deemed to have been owned
of references which are merely considered to be better
by the same person or subject to an obligation of  
than those of record.
assignment to the same person if


- the claimed invention was made by or on
When a final rejection is withdrawn, all amendments
behalf of parties to a joint research agreement
filed after the final rejection are ordinarily
that was in effect on or before the date the  
entered.
claimed invention was made,


- the claimed invention was made as a result
New grounds of rejection made in an Office action
of activities undertaken within the scope of  
reopening prosecution after the filing of an appeal
the joint research agreement, and
brief require the approval of the supervisory patent
examiner. See MPEP § 1002.02(d).


- the application for patent for the claimed
====706.07(f) Time for Reply to Final Rejection====
invention discloses or is amended to disclose
the names of the parties to the joint research
agreement;


- for purposes of 35 U.S.C. 103(c), the term
The time for reply to a final rejection is as follows:
“joint research agreement” means a written
contract, grant, or cooperative agreement
entered into by two or more persons or entities
for the performance of experimental, development,
or research work in the field of the
claimed invention.


The effective date provision of the CREATE Act
(A)All final rejections setting a 3-month shortened
provided that its amendments shall apply to any
statutory period (SSP) for reply should contain
patent (including any reissue patent) granted on or
one of form paragraphs 7.39, 7.40, 7.40.01,
after December 10, 2004. The CREATE Act also provided
7.40.02, 7.41, 7.41.03, 7.42.03, 7.42.031, or
that its amendment shall not affect any final  
7.42.09 advising applicant that if the reply is filed
decision of a court or the Office rendered before
within 2 months of the date of the final Office action,
December 10, 2004, and shall not affect the right of  
the shortened statutory period will expire at 3 months
any party in any action pending before the Office or a
from the date of the final rejection or on the date the  
court on December 10, 2004, to have that party’s
advisory action is mailed, whichever is later. Thus, a
rights determined on the basis of the provisions of
variable reply period will be established. If the last
title 35, United States Code, in effect on December 9,
day of “2 months of the date of the final Office  
2004. Since the CREATE Act also includes the  
action” falls on Saturday, Sunday, or a Federal holiday
amendment to 35 U.S.C. 103(c) made by section 4807
within the District of Columbia, and a reply is filed on  
of the AIPA (see Pub. L. 106-113, 113 Stat. 1501,
the next succeeding day which is not a Saturday, Sunday,
1501A-591 (1999)), the change of “subsection (f) or
or a Federal holiday, pursuant to 37 CFR 1.7(a),
(g)” to “one or more of subsections (e), (f), or (g)” in
the reply is deemed to have been filed within the 2
35 U.S.C. 103(c) is now also applicable to applications
months period and the shortened statutory period will
filed prior to November 29, 1999, that were
expire at 3 months from the date of the final rejection
pending on December 10, 2004.
or on the mailing date of the advisory action, whichever
is later (see MPEP §710.05). In no event can the
statutory period for reply expire later than 6 months
from the mailing date of the final rejection.


35 U.S.C. 103(c), as amended by the CREATE Act,
(B)This procedure of setting a variable reply
continues to apply only to subject matter which qualifies
period in the final rejection dependent on when applicant
as prior art under 35 U.S.C. 102(e), (f), or (g), and
files a first reply to a final Office action does not
which is being relied upon in a rejection under 35
apply to situations where a SSP less than 3 months is  
U.S.C. 103. If the rejection is anticipation under 35
set, e.g., reissue litigation applications (1-month SSP)  
U.S.C. 102(e), (f), or (g), 35 U.S.C. 103(c) cannot be
or any reexamination proceeding.
relied upon to disqualify the subject matter in order to
overcome or prevent the anticipation rejection. Likewise,  
35 U.S.C. 103(c) cannot be relied upon to overcome
or prevent a double patenting rejection. See 37
CFR 1.78(c) and MPEP § 804.


Because the CREATE Act applies only to patents
I.ADVISORY ACTIONS
granted on or after December 10, 2004, the recapture
doctrine may prevent the presentation of claims in the
reissue applications that had been amended or cancelled
(e.g., to avoid a rejection under 35 U.S.C.
103(a) based on subject matter that may now be disqualified
under the CREATE Act) during the prosecution
of the application which resulted in the patent
being reissued.


706.02(l)(2)Establishing Common Ownership
(C)Where the final Office action sets a variable
or Joint Research Agreement
reply period as set forth in paragraph (A) above AND
[R-5] [R-5]
applicant files a complete first reply to the final Office
action within 2 months of the date of the final Office
action, the examiner must determine if the reply:


In order to be disqualified as prior art under
(1)places the application in condition for
35
allowance — then the application should be processed
U.S.C. 103(c), the subject matter which would oth
as an allowance and no extension fees are due;


(2)places the application in condition for
allowance except for matters of form which the examiner
can change without authorization from applicant,
MPEP § 1302.04 — then the application should be
amended as required and processed as an allowance
and no extension fees are due; or


(3)does not place the application in condition
for allowance — then the advisory action should
inform applicant that the SSP for reply expires
3 months from the date of the final rejection or as of
the mailing date of the advisory action, whichever is
later, by checking box 1.b) at the top portion of the
Advisory Action form, PTOL-303.


(D) Where the final Office action sets a variable
reply period as set forth in paragraph (A) above, and
applicant does NOT file a complete first reply to the
final Office action within 2 months, examiners should
check box 1.a) at the top portion of the Advisory
Action form, PTOL-303.


(E)When box 1.b) at the top portion of the Advisory
Action form, PTOL-303 is checked, the time for
applicant to take further action (including the calculation
of extension fees under 37 CFR 1.136(a)) begins
to run 3 months from the date of the final rejection, or
from the date of the advisory action, whichever is
later. Extension fees cannot be prorated for portions of
a month. In no event can the statutory period for reply
expire later than 6 months from the date of the final
rejection. For example, if applicant initially replies
within 2 months from the date of mailing of a final
rejection and the examiner mails an advisory action
before the end of 3 months from the date of mailing of
the final rejection, the shortened statutory period will
expire at the end of 3 months from the date of mailing
of the final rejection. In such case, if a petition for
extension of time is granted, the due date for a reply is
computed from the date stamped or printed on the
Office action with the final rejection. See MPEP
§ 710.01(a). If the examiner, however, does not mail
an advisory action until after the end of the 3-month
period, the shortened statutory period will expire on
the date the examiner mails the advisory action and
any extension of time fee would be calculated from
the mailing date of the advisory action.


II.EXAMINER’S AMENDMENTS
 
erwise be prior art to the claimed invention and the
claimed invention must be commonly owned, or subject
to an obligation of assignment to a same person,
at the time the claimed invention was made or be subject
to a joint research agreement at the time the
invention was made. See MPEP §
706.02(l) for
35
U.S.C. 102(f)/103 or 35 U.S.C. 102(g)/103 prior
art disqualified under 35 U.S.C. 103(c) in applications
granted as patents prior to December 10, 2004. See
MPEP §
706.02(l)(1) for 35 U.S.C. 102(e), (f), or (g)/
103 prior art disqualified under 35 U.S.C. 103(c).
 
I.DEFINITION OF COMMON OWNERSHIP


(F)Where a complete first reply to a final Office
action has been filed within 2 months of the final
Office action, an examiner’s amendment to place the
application in condition for allowance may be made
without the payment of extension fees even if the
examiner’s amendment is made more than 3 months
from the date of the final Office action. Note that an
examiner’s amendment may not be made more than 6
months from the date of the final Office action, as the
application would be abandoned at that point by operation
of law.


The term “commonly owned” is intended to mean
(G)Where a complete first reply to a final Office
that the subject matter which would otherwise be
action has not been filed within 2 months of the final
prior art to the claimed invention and the claimed
Office action, applicant’s authorization to make an
invention are entirely or wholly owned by the same
amendment to place the application in condition for
person(s) or organization(s)/business entity(ies) at the
allowance must be made either within the 3 month
time the claimed invention was made. If the person(s)  
shortened statutory period or within an extended
or organization(s) owned less than 100 percent of the  
period for reply that has been petitioned and paid for
subject matter which would otherwise be prior art to
by applicant pursuant to 37 CFR 1.136(a). However,
the claimed invention, or less than 100 percent of the  
an examiner’s amendment correcting only formal
claimed invention, then common ownership would
matters which are identified for the first time after a
not exist. Common ownership requires that the person(
reply is made to a final Office action would not
s) or organization(s)/business entity(ies) own 100
require any extension fee, since the reply to the final
percent of the subject matter and 100 percent of the  
Office action put the application in condition for
claimed invention.  
allowance except for the correction of formal matters,
the correction of which had not yet been required by
the examiner.


Specifically, if an invention claimed in an application
(H)An extension of time under 37 CFR 1.136(a)
is owned by more than one entity and those entities
requires a petition for an extension and the appropriate
seek to exclude the use of a reference under
fee provided for in 37 CFR 1.17. Where an extension
35
of time is necessary to place an application in
U.S.C. 103, then the reference must be owned by,  
condition for allowance (e.g., when an examiner’s
or subject to an obligation of assignment to, the same
amendment is necessary after the shortened statutory
entities that owned the application, at the time the
period for reply has expired), applicant may file the
later invention was made. For example, assume Company
required petition and fee or give authorization to the  
A owns twenty percent of patent Application X
examiner to make the petition of record and charge a
and Company B owns eighty percent of patent Application
specified fee to a deposit account. Office employees
X at the time the invention of Application X
may not accept oral (telephonic) instructions to complete
was made. In addition, assume that Companies A and
the Credit Card Payment Form or otherwise
B seek to exclude the use of Reference Z under
charge a patent process fee (as opposed to information
35
product or service fees) to a credit card. When authorization
U.S.C. 103. Reference Z must have been co-
to make a petition for an extension of time of  
owned, or have been under an obligation of assignment
record is given to the examiner, the authorization must
to both companies, on the date the invention was
be given before the extended period expires. The
made in order for the exclusion to be properly
authorization must be made of record in an examiner’s
requested. A statement such as “Application X and
amendment by indicating the name of the person
Patent Z were, at the time the invention of Application
making the authorization, when the authorization
X was made, jointly owned by Companies A and B”
was given, the deposit account number to be charged,
would be sufficient evidence of common ownership.  
the length of the extension requested and the amount
of the fee to be charged to the deposit account.


For applications owned by a joint venture of two or
III.PRACTICE AFTER FINAL
more entities, both the application and the reference
must have been owned by, or subject to an obligation
of assignment to, the joint venture at the time the
invention was made. For example, if Company A and
Company B formed a joint venture, Company C, both
Application X and Reference Z must have been
owned by, or subject to an obligation of assignment
to, Company C at the time the invention was made in
order for Reference Z to be properly excluded as prior
art under 35 U.S.C. 103(c). If Company A by itself
owned Reference Z at the time the invention of Application
X was made and Application X was owned by
Company C on the date the invention was made, then
a request for the exclusion of Reference Z as prior art
under 35 U.S.C. 103(c) would not be proper.


As long as principal ownership rights to either the
(I)Replies after final should be processed and
subject matter or the claimed invention reside in different
considered promptly by all Office personnel.
persons or organizations common ownership
does not exist. A license of the claimed invention to
another by the owner where basic ownership rights
are retained would not defeat ownership.  


The requirement for common ownership at the time
(J)Replies after final should not be considered
the claimed invention was made is intended to preclude
by the examiner unless they are filed within the SSP
obtaining ownership of subject matter after the  
or are accompanied by a petition for an extension of  
claimed invention was made in order to disqualify
time and the appropriate fee (37 CFR 1.17 and
that subject matter as prior art against the claimed
37
invention.  
CFR 1.136(a)). See also MPEP § 710.02(e). This
requirement also applies to supplemental replies filed
after the first reply.


The question of whether common ownership exists
(K)Interviews may be conducted after the expiration
at the time the claimed invention was made is to be  
of the shortened statutory period for reply to a  
determined on the facts of the particular case in question.
final Office action but within the 6-month statutory
Actual ownership of the subject matter and the
period for reply without the payment of an extension
claimed invention by the same individual(s) or organization(
fee.
s) or a legal obligation to assign both the subject
matter and the claimed invention to the same
individual(s) or organization(s)/business entity(ies)
must be in existence at the time the claimed invention
was made in order for the subject matter to be disqualified
as prior art. A moral or unenforceable obligation
would not evidence common ownership.
 
Under 35 U.S.C. 103(c), an applicant’s admission
that subject matter was developed prior to applicant’s
invention would not make the subject matter prior art
to applicant if the subject matter qualifies as prior art
only under sections 35 U.S.C. 102(e), (f), or (g), and
if the subject matter and the claimed invention were
commonly owned at the time the invention was made.
See In re Fout, 675
F.2d 297, 213 USPQ 532 (CCPA


(L)Formal matters which are identified for the
first time after a reply is made to a final Office action
and which require action by applicant to correct may
be required in an Ex parte Quayle action if the application
is otherwise in condition for allowance. No
extension fees would be required since the reply puts
the application in condition for allowance except for
the correction of formal matters — the correction of
which had not yet been required by the examiner.


(M) If prosecution is to be reopened after a final
Office action has been replied to, the finality of the
previous Office action should be withdrawn to avoid
the issue of abandonment and the payment of extension
fees. For example, if a new reference comes to
the attention of the examiner which renders unpatentable
a claim indicated to be allowable, the Office
action should begin with a statement to the effect:
“The finality of the Office action mailed is hereby
withdrawn in view of the new ground of rejection set
forth below.” Form paragraph 7.42 could be used in
addition to this statement. See MPEP § 706.07(d).


====706.07(g) Transitional After-Final Practice====


{{Statute|37 CFR 1.129. Transitional procedures for limited examination after final rejection and restriction practice.}}


1982), for a decision involving an applicant’s admission
(a)An applicant in an application, other than for reissue or a  
which was used as prior art against their application.  
design patent, that has been pending for at least two years as of
If the subject matter and invention were not
June 8, 1995, taking into account any reference made in such
commonly owned, an admission that the subject matter
application to any earlier filed application under 35 U.S.C. 120,
is prior art would be usable under 35 U.S.C. 103.
121 and 365(c), is entitled to have a first submission entered and
considered on the merits after final rejection under the following
circumstances: The Office will consider such a submission, if the
first submission and the fee set forth in § 1.17(r) are filed prior to
the filing of an appeal brief and prior to abandonment of the application.  
The finality of the final rejection is automatically withdrawn
upon the timely filing of the submission and payment of the
fee set forth in § 1.17(r). If a subsequent final rejection is made in
the application, applicant is entitled to have a second submission
entered and considered on the merits after the subsequent final
rejection under the following circumstances: The Office will consider
such a submission, if the second submission and a second
fee set forth in § 1.17(r) are filed prior to the filing of an appeal
brief and prior to abandonment of the application. The finality of
the subsequent final rejection is automatically withdrawn upon the
timely filing of the submission and payment of the second fee set
forth in § 1.17(r). Any submission filed after a final rejection
made in an application subsequent to the fee set forth in § 1.17(r)
having been twice paid will be treated as set forth in § 1.116. A
submission as used in this paragraph includes, but is not limited
to, an information disclosure statement, an amendment to the written
description, claims or drawings and a new substantive argument
or new evidence in support of patentability.
{{Ellipsis}}
(c)The provisions of this section shall not be applicable to
any application filed after June 8, 1995.
|}


The burden of establishing that subject matter is
In order to facilitate the completion of prosecution
disqualified as prior art under 35 U.S.C. 103(c) is
of applications pending in the USPTO as of June 8,
intended to be placed and reside upon the person or
1995 and to ease the transition between a 17-year
persons urging that the subject matter is disqualified.
patent term and a 20-year patent term, Public Law
For example, a patent applicant urging that subject
103-465 provided for the further limited reexamination
matter is disqualified as prior art under 35 U.S.C.
of an application pending for 2
103(c), would have the burden of establishing that it
years or longer as  
was commonly owned at the time the claimed invention
of June 8, 1995, taking into account any reference
was made. The patentee in litigation would likewise
made in the application to any earlier filed application
properly bear the same burden placed upon the
under 35 U.S.C. 120, 121, or 365(c). The further limited
applicant before the U.S. Patent and Trademark
reexamination permits applicants to present for
Office. To place the burden upon the patent examiner
consideration, as a matter of right upon payment of a
or the defendant in litigation would not be appropriate
fee, a submission after a final rejection has been
since evidence as to common ownership at the time
issued on an application. An applicant will be able to
the claimed invention was made might not be available  
take advantage of this provision on two separate occasions
to the patent examiner or the defendant in litigation,  
provided the submission and fee are presented
but such evidence, if it exists, should be readily
prior to the filing of the Appeal Brief and prior to
available to the patent applicant or the patentee.
abandonment of the application. This will have the  
effect of enabling an applicant to essentially remove
the finality of the prior Office action in the pending
application on two separate occasions by paying a fee
for each occasion, and  
avoid the impact of refiling the  
application to obtain consideration of additional
claims and/or information relative to the claimed subject
matter. The transitional after-final practice is only
available to applications filed on or before June 8,  
1995 and it is not available for reissue or design applications
or reexamination proceedings.


In view of 35 U.S.C. 103(c), the Director has reinstituted
Effective June 8, 1995, in any pending application
in appropriate circumstances the practice of
having an actual or effective filing date of June 8,
rejecting claims in commonly owned applications of
1993 or earlier, applicant is entitled, under 37 CFR
different
1.129(a), to have a first submission after final rejection
inventive entities on the grounds of double
entered and considered on the merits, if the submission
patenting. Such rejections can be overcome in appropriate
and the fee set forth in 37
circumstances by the filing of terminal disclaimers.  
CFR 1.17(r) are
This practice has been judicially authorized.  
filed prior to the filing of an Appeal Brief under
See In re Bowers, 359 F.2d 886, 149 USPQ 57 (CCPA
37
1966). The use of double patenting rejections which
CFR 41.37 and prior to abandonment. For an
then could be overcome by terminal disclaimers preclude
application entering national stage under 35 U.S.C.  
patent protection from being improperly
371 or an application filed under 35 U.S.C. 111(a)
extended while still permitting inventors and their
claiming benefit under 35 U.S.C. 120 of a PCT application
assignees to obtain the legitimate benefits from their
designating the U.S., the PCT international filing
contributions. See also MPEP § 804.
date will be used to determine whether the  
application has been pending for at least 2 years as of
June 8, 1995.


The following examples are provided for illustration
The submission under 37 CFR 1.129(a) may comprise,
only:
but is not limited to, an information disclosure
 
statement (IDS), an amendment to the written description,
Example 1
claims or drawings, a new substantive argument
 
and/or new evidence. No amendment considered as a
Parent Company owns 100% of Subsidiaries A
result of payment of the fee set forth in 37 CFR
and B
1.17(r) may introduce new matter into the disclosure
 
of the application 35 U.S.C. 132. In view of the fee set
- inventions of A and B are commonly owned by  
forth in 37 CFR 1.17(r), any (IDS) previously refused
the Parent Company.
consideration in the application because of applicant’s
failure to comply with 37 CFR 1.97(c) or (d) will be
treated as though it has been filed within one of the
time periods set forth in 37 CFR 1.97(b) and will be
considered without the petition and petition fee
required in 37 CFR 1.97(d), if it complies with the
requirements of 37 CFR 1.98. Any IDS submitted
under 37 CFR 1.129(a) on or after June 8, 2005 without
a statement specified in 37 CFR 1.97(e) will be
treated as though it had been filed within the time
period set forth in 37 CFR 1.97(c) with the fee set
forth in 37 CFR 1.17(p). The examiner may introduce
a new ground of rejection based on the information
submitted in the IDS and make the next Office action
final provided that the examiner introduces no other
new ground of rejection, which has not been necessitated
by amendment to the claims. See MPEP §
706.07(a).


Example 2
If the application qualifies under 37 CFR 1.129(a),
 
that is, it was filed on or before June 8, 1995 and the
Parent Company owns 100% of Subsidiary A and  
application has an effective U.S. filing date of June 8,
90% of Subsidiary B
1993 or earlier, the examiner must check to see if the
 
submission and 37
- inventions of A and B are not commonly owned
CFR 1.17(r) fee were filed prior to
by the Parent Company.
the filing of the Appeal Brief and prior to abandonment
 
of the application. If an amendment was timely
Example 3
filed in reply to the final rejection but the fee set forth
 
in 37 CFR 1.17(r) did not accompany the amendment,
If same person owns subject matter and invention
examiners will continue to consider these amendments
at time invention was made, license to another
in an expedited manner as set forth in MPEP
may be made without the subject matter becoming
§ 714.13 and issue an advisory action notifying applicant
prior art.
whether the amendment has been entered. If the
 
examiner indicated in an advisory action that the
Example 4
amendment has not been entered, applicant may then
 
pay the fee set forth in 37 CFR 1.17(r) and any necessary
Different Government inventors retaining certain
fee to avoid abandonment of the application and
rights (e.g. foreign filing rights) in separate inventions
obtain entry and consideration of the amendment as a
owned by Government precludes common
submission under 37
ownership of inventions.
CFR 1.129(a). If the submission
and the fee set forth in 37 CFR 1.17(r) were timely
filed in reply to the final rejection and no advisory
action has been issued prior to the payment of the fee
set forth in 37 CFR 1.17(r), no advisory action will be
necessary. The examiner will notify applicant that the
finality of the previous office action has been withdrawn
pursuant to 37 CFR 1.129(a). It is noted that if
the submission is accompanied by a “conditional”
payment of the fee set forth in 37 CFR 1.17(r), i.e., an
authorization to charge the fee set forth in 37 CFR
1.17(r) to a deposit account or to a credit card in the
event that the submission would not otherwise be
entered, the Office will treat the conditional payment
as an unconditional payment of the 37 CFR 1.17(r)
fee.


Example 5
The finality of the final rejection is automatically
withdrawn upon the timely filing of the submission
and payment of the fee set forth in 37 CFR 1.17(r).
Upon the timely payment of the fee set forth in
37
CFR 1.17(r), all previously unentered submissions,
and submissions filed with the 37
CFR 1.17(r) fee
will be entered in the order in which they were filed
absent specific instructions for entry. Any conflicting
amendments should be clarified for entry by the applicant
upon payment of the 37 CFR 1.17(r) fee.


Company A and Company B form joint venture
If a Notice of Appeal and the appeal fee set forth in
Company C. Employees of A, while working for C
37
with an obligation to assign inventions to C, invent
CFR 1.17(b) were filed prior to or with the payment
invention #1; employees of B while working for C
of the fee set forth 37 CFR 1.17(r), the payment
with an obligation to assign inventions to C, invent
of the fee set forth in 37 CFR 1.17(r) by applicant is
invention #2, with knowledge of #1.  
construed as a request to dismiss the appeal and to  
continue prosecution under 37 CFR 1.129(a).


Question: Are #1 and #2 commonly owned at the  
Upon the timely payment of the fee set forth in
time the later invention was made so as to preclude
37
a rejection under 35 U.S.C. 102(e), (f) or (g) in
CFR 1.17(r), if the examiner determines that the  
view of 35
submission is not fully responsive to the previous
U.S.C. 103?
Office action, e.g., if the submission only includes an
information disclosure statement, applicant will be
given a new shortened statutory period of 1 month or  
30 days, whichever is longer, to submit a complete
reply.


Answer: Yes- If the required evidence of common
I.SUBMISSIONS UNDER 37 CFR 1.129(a)  
ownership is made of record in the patent application
FILED PRIOR TO JUNE 8, 2005
file. If invention #1 was invented by employees
of Company A not working for Company C
and Company A maintained sole ownership of
invention #1 at the time invention #2 was made,
inventions #1 and #2 would not be commonly
owned as required by 35 U.S.C. 103(c).


Example 6
After submission and payment of the fee set forth in
37
CFR 1.17(r), the next Office action on the merits
may be made final only under the conditions for making
a first action in a continuing application final set
forth in MPEP § 706.07(b).


Company A owns 40% of invention #1 and 60% of
If a subsequent final rejection is made in the application,
invention #2, and Company B owns 60% of invention
applicant would be entitled to have a second
#1 and 40% of invention #2 at the time invention
submission entered and considered on the merits
#2 was made.
under the same conditions set forth for consideration
of the first submission.


-inventions #1 and #2 are commonly owned.
Any submission filed after a final rejection made in
the application subsequent to the fee set forth in
37
CFR 1.17(r) having been twice paid will be treated
in accordance with the current after-final practice set
forth in 37 CFR 1.116.  


Example 7
II.SUBMISSIONS UNDER 37 CFR 1.129(a)
FILED ON OR AFTER JUNE 8, 2005


Company B has a joint research project with University
For timely submission and payment of the fee set
A. Under the terms of the joint research
forth in 37 CFR 1.17(r) on or after June 8, 2005, the
project, University A has agreed that all of its patents
next Office action on the merits will be equivalent to
will be jointly owned by Company B and University
the next Office action following a reply to a non-final
A. Professor X, who works for University
Office action. Under existing second Office action
A, has an employee agreement with University A
final practice, such an Office action on the merits will
assigning all his patents only to University A.  
be made final, except where the examiner introduces a
After the joint research project agreement is exe
new ground of rejection that is neither necessitated by
applicant’s amendment of the claims nor based on
information submitted in an IDS filed during the
period set forth in 37 CFR 1.97(c) with the fee set
forth in 37 CFR 1.17(p). See MPEP § 706.07(a).


An applicant whose application is eligible for the
transitional further limited examination procedure set
forth in 37 CFR 1.129(a) is entitled to consideration
of two after final submissions. Thus, if such an applicant
has filed one submission under 37 CFR 1.129(a)
and the application is again under a final rejection, the
applicant is entitled to only one additional submission
under 37 CFR 1.129(a). If such an applicant has filed
two submissions under 37 CFR 1.129(a) and the
application is again under a final rejection, applicant
is not entitled to have any additional submissions considered
under 37 CFR 1.129(a). Applicant may be
entitled to consideration of an additional submission
if the submission meets the conditions set forth in 37
CFR 1.116.


====706.07(h) Request for Continued Examination (RCE) Practice====


{{Statute|35 U.S.C. 132. Notice of rejection; reexamination.}}
{{Ellipsis}}
(b)The Director shall prescribe regulations to provide for
the continued examination of applications for patent at the request
of the applicant. The Director may establish appropriate fees for
such continued examination and shall provide a 50 percent reduction
in such fees for small entities that qualify for reduced fees
under section 41(h)(1) of this title.
|}




{{Statute|37 CFR 1.114. Request for continued examination.}}
(a)If prosecution in an application is closed, an applicant
may request continued examination of the application by filing a
submission and the fee set forth in § 1.17(e) prior to the earliest
of:


cuted, University A files patent application #1 for
(1)Payment of the issue fee, unless a petition under
the invention of Professor X, before Company B
§ 1.313 is granted;
files patent application #2 on a similar invention.  


- inventions #1 and #2 are commonly owned
(2)Abandonment of the application; or
because Professor X’s obligation to assign patents
to University A who has an obligation to assign
patents to the A-B joint venture legally establishes
Professor X’s obligation to assign patents to the A-
B joint venture.


Example 8
(3)The filing of a notice of appeal to the U.S. Court of
Appeals for the Federal Circuit under 35 U.S.C. 141, or the commencement
of a civil action under 35 U.S.C. 145 or 146, unless
the appeal or civil action is terminated.


Inventor X working at Company A invents and
(b)Prosecution in an application is closed as used in this
files patent application #1 on technology T, owned
section means that the application is under appeal, or that the last
by Company A. After application #1 is filed, Company
Office action is a final action (§ 1.113), a notice of allowance (§
A spins off a 100% owned Subsidiary B for
1.311), or an action that otherwise closes prosecution in the application.
technology T including the transfer of the ownership
of patent application #1 to Subsidiary B. After
Subsidiary B is formed, inventor Y (formerly a  
Company A employee, but now an employee of  
Subsidiary B obligated to assign to Subsidiary B)
jointly files application #2 with inventor X (now
also an employee of Subsidiary B with an obligation
to assign to Subsidiary B), which is directed to
a possibly unobvious improvement to technology
T.  


- the inventions of applications #1 and #2 are commonly
(c)A submission as used in this section includes, but is not
owned since Subsidiary B is a wholly
limited to, an information disclosure statement, an amendment to
owned subsidiary of Company A.
the written description, claims, or drawings, new arguments, or
new evidence in support of patentability. If reply to an Office
action under 35 U.S.C. 132 is outstanding, the submission must
meet the reply requirements of § 1.111.


The examiner must examine the application as to
(d) If an applicant timely files a submission and fee set forth
all grounds except 35 U.S.C. 102(e), (f) and (g) as
in § 1.17(e), the Office will withdraw the finality of any Office
they apply through 35 U.S.C. 103 only if the application
action and the submission will be entered and considered. If an
file(s) establishes common ownership at the time
applicant files a request for continued examination under this section
the later invention was made. Thus, it is necessary to
after appeal, but prior to a decision on the appeal, it will be
look to the time at which common ownership exists. If  
treated as a request to withdraw the appeal and to reopen prosecution
common ownership does not exist at the time the later
of the application before the examiner. An appeal brief (§
invention was made, the earlier invention is not disqualified
41.37 of this title) or a reply brief (§ 41.41 of this title), or related
as potential prior art under 35
papers, will not be considered a submission under this section.
U.S.C. 102(e),
 
(f) and (g) as they apply through 35
(e)The provisions of this section do not apply to:
U.S.C. 103. An
invention is “made” when conception is complete as
defined in Mergenthaler v. Scudder, 11 App. D.C.
264, 81 O.G. 1417, 1897 C.D. 724 (D.C. Cir. 1897); In
re Tansel, 253 F.2d 241, 117 USPQ 188 (CCPA 1958).
See Pfaff v. Wells Elecs., 525 U.S. 55, 119 S. Ct. 304,
312, 48 USPQ2d 1641, 1647 (1998) (“the invention
must be ready for patenting . . . . by proof that prior to  
the critical date the inventor had prepared drawing or
other descriptions of the invention that were sufficiently
specific to enable a person skilled in the art to  
practice the invention.”) Common ownership at the  
time the invention was made for
purposes of obviating
a
35 U.S.C. 102(e)/35 U.S.C. 103, 35
U.S.C.
102(f)/35 U.S.C. 103 or 35 U.S.C. 102(g)/35 U.S.C.  
103 rejection may be established irrespective of  
whether the invention was made in the United States
or abroad. The provisions of 35 U.S.C. 104, however,
will continue to apply to other proceedings in the U.S.
Patent and Trademark Office, e.g. in an interference
proceeding, with regard to establishing a date of
invention by knowledge or use thereof, or other activity
with respect thereto, in a foreign country. The foreign
filing date will continue to be used for
interference purposes under 35
U.S.C. 119(a)-(d) and
35 U.S.C. 365.


II.EVIDENCE REQUIRED TO ESTABLISH
(1)A provisional application;
COMMON OWNERSHIP


It is important to recognize just what constitutes
(2)An application for a utility or plant patent filed under
sufficient evidence to establish common ownership at
35 U.S.C. 111(a) before June 8, 1995;
the time the invention was made. The common ownership
must be shown to exist at the time the later
invention was made. A statement of present common
ownership is not sufficient. In re Onda, 229 USPQ
235 (Comm’r Pat. 1985).


The following statement is sufficient evidence to
(3)An international application filed under 35 U.S.C. 363before June 8, 1995;
establish common ownership of, or an obligation for
assignment to, the same person(s) or organizations(s):


Applications and references (whether patents, patent applications,
(4)An application for a design patent; or
patent application publications, etc.) will be considered
by the examiner to be owned by, or subject to an
obligation of assignment to the same person, at the time the
invention was made, if the applicant(s) or an attorney or
agent of record makes a statement to the effect that the
application and the reference were, at the time the invention
was made, owned by, or subject to an obligation of assignment
to, the same person.


See “Guidelines Setting Forth a Modified Policy
(5)A patent under reexamination.
Concerning the Evidence of Common Ownership, or
|}
an Obligation of Assignment to the Same Person, as
Required by 35 U.S.C. 103(c),” 1241 O.G. 96
(December 26, 2000). The applicant(s) or the representative(
s) of record have the best knowledge of the
ownership of their application(s) and reference(s), and
their statement of such is sufficient evidence because
of their paramount obligation of candor and good
faith to the USPTO.


35 U.S.C. 132(b) provides for continued examination
of an application at the request of the applicant
(request for continued examination or RCE) upon
payment of a fee, without requiring the applicant to
file a continuing application under 37 CFR 1.53(b).
To implement the RCE practice, 37
CFR 1.114 provides
a procedure under which an applicant may
obtain continued examination of an application in
which prosecution is closed (e.g., the application is
under final rejection or a notice of allowance) by filing
a submission and paying a specified fee. Applicants
cannot file an RCE to obtain continued
examination on the basis of claims that are independent
and distinct from the claims previously claimed
and examined as a matter of right (i.e., applicant cannot
switch inventions). See 37 CFR 1.145. Any newly
submitted claims that are directed to an invention that
is independent and distinct from the invention previously
claimed will be withdrawn from consideration
and not entered. See subsection VI. below. An RCE
is
not the filing of a new application. Thus, the
Office
will not convert an RCE to a new application
such as an application filed under 37 CFR 1.53(b) or a
continued prosecution application (CPA) under 37
CFR 1.53(d).


I.CONDITIONS FOR FILING AN RCE


The provisions of 37
CFR 1.114 apply to utility or
plant applications filed under 35
U.S.C. 111(a) on or
after June
8, 1995, or international applications filed
under 35
U.S.C. 363 on or after June
8, 1995. The
RCE provisions of 37
CFR 1.114 do not apply to:


(A)a provisional application;
 
The statement concerning common ownership
should be clear and conspicuous (e.g., on a separate
piece of paper or in a separately labeled section) in
order to ensure that the examiner quickly notices the
statement. Applicants may, but are not required to,
submit further evidence, such as assignment records,
affidavits or declarations by the common owner, or
court decisions, in addition to the above-mentioned
statement concerning common ownership.
 
For example, an attorney or agent of record
receives an Office action for Application X in which
all the claims are rejected under 35 U.S.C. 103(a)
using Patent A in view of Patent B wherein Patent A  
is only available as prior art under 35 U.S.C. 102(e),
(f), and/or (g). In her response to the Office action, the
attorney or agent of record for Application X states, in
a clear and conspicuous manner, that:
 
“Application X and Patent A were, at the time the invention
of Application X was made, owned by Company Z.”
 
This statement alone is sufficient evidence to disqualify
Patent A from being used in a rejection under
35 U.S.C. 103(a) against the claims of Application X.


In rare instances, the examiner may have independent
(B)an application for a utility or plant patent filed
evidence that raises a material doubt as to the
under 35
accuracy of applicant’s representation of either (1) the
U.S.C. 111(a) before June
common ownership of, or (2) the existence of an obligation
8, 1995;
to commonly assign, the application being
examined and the applied U.S. patent or U.S. patent
application publication reference. In such cases, the
examiner may explain why the accuracy of the representation
is doubted, and require objective evidence
of common ownership of, or the existence of an obligation
to assign, the application being examined and
the applied reference as of the date of invention of the
application being examined. As mentioned above,
applicant(s) may submit, in addition to the above-
mentioned statement regarding common ownership,  
the following objective evidence:


(A)Reference to assignments recorded in the U.S.  
(C)an international application filed under
Patent and Trademark Office in accordance with
35
37
U.S.C. 363
CFR Part 3 which convey the entire rights in the
before June 8, 1995;
applications to the same person(s) or organization(s);


(B)Copies of unrecorded assignments which convey
(D)an application for a design patent; or  
the entire rights in the applications to the same
person(s) or organization(s) are filed in each of the
applications;


(C)An affidavit or declaration by the common
(E)a patent under reexamination.
owner is filed which states that there is common ownership
and states facts which explain why the affiant
or declarant believes there is common ownership,
which affidavit or declaration may be signed by an
official of the corporation or organization empowered
to act on behalf of the corporation or organization
when the common owner is a corporation or other
organization; and


(D)Other evidence is submitted which establishes
See 37
common ownership of the applications.  
CFR 1.114(e).


III.EVIDENCE REQUIRED TO ESTABLISH
An applicant may obtain continued examination of
A JOINT RESEARCH AGREEMENT
an application by filing a request for continued examination
(see form PTO/SB/30), a submission and the
fee set forth in 37
CFR 1.17(e) prior to the earliest of:


Once an examiner has established a prima faciecase of obviousness under 35 U.S.C. 103(a), the burden
(A)payment of the issue fee (unless a petition
of overcoming the rejection by invoking the joint
under 37 CFR 1.313 is granted);
research agreement provisions of 35 U.S.C. 103(c) as
amended by the CREATE Act is on the applicant or
the patentee. 35 U.S.C. 103(c)(3) defines a “joint
research agreement” as a written contract, grant, or
cooperative agreement entered into by two or more
persons or entities for the performance of experimental,
developmental, or research work in the field of the
claimed invention, that was in effect on or before the
date the claimed invention (under examination or
reexamination) was made.


Like the common ownership or assignment provision,
(B)abandonment of the application; or
the joint research agreement must be shown to
be in effect on or before the time the later invention
was made. The joint research agreement may be in
effect prior to the effective date (December 10, 2004)  
of the CREATE Act. In addition, the joint research
agreement is NOT required to be in effect on or before
the prior art date of the reference that is sought to be
disqualified.


To overcome a rejection under 35 U.S.C. 103(a)  
(C)the filing of a notice of appeal to the U.S.  
based upon subject matter (whether a patent document,
Court of Appeals for the Federal Circuit or the commencement
publication, or other evidence) which qualifies
of a civil action (unless the appeal or civil
as prior art under only one or more of 35 U.S.C.  
action is terminated).  
102(e), (f), or (g) via the CREATE Act, the applicant
must comply with the statute and the rules of practice
in effect.


See 37
CFR 1.114(a). An applicant cannot request
continued examination of an application until after
prosecution in the application is closed. See 37
CFR 1.114(a). Prosecution in an application is closed if the
application is under appeal, or the last Office action is
a final action (37 CFR 1.113), a notice of allowance
(37 CFR 1.311), or an action that otherwise closes
prosecution in the application (e.g., an Office action
under Ex parte Quayle, 25 USPQ 74, 453 O.G. 213
(Comm’r Pat. 1935)).


II.SUBMISSION REQUIREMENT


A "submission" as used in 37
CFR 1.114 includes,
but is not limited to, an information disclosure statement,
an amendment to the written description,
claims, or drawings, new arguments, or new evidence
in support of patentability. See 37
CFR 1.114(c). If a
reply to an Office action under 35
U.S.C. 132 is outstanding,
the submission must meet the reply requirements
of 37
CFR
1.111. See 37
CFR 1.114(c). Thus,
an applicant may file a submission under 37
CFR
1.114 containing only an information disclosure statement
(37
CFR 1.97 and 1.98) in an application subject
to a notice of allowance under 35
U.S.C. 151, but not
in an application where the last Office action is a final
rejection or an Office action under Ex parte Quayle,
25 USPQ 74, 453 O.G. 213 (Comm’r Pat. 1935), or in
an application that is under appeal. A request for a
suspension of action, an appeal brief or a reply brief
(or related papers) will not be considered a submission
under 37
CFR 1.114. See 37
CFR 1.103 and
1.114(d). The submission, however, may consist of
the arguments in a previously filed appeal brief or
reply brief, or may simply consist of a statement that
incorporates by reference the arguments in a previously
filed appeal brief or reply brief. In addition, a
previously filed amendment after final (whether or not
entered) may satisfy this submission requirement.


Arguments submitted after final rejection, which
 
were entered by the examiner but not found persuasive,
 
may satisfy the submission requirement if such
 
arguments are responsive within the meaning of 37
37 CFR 1.71. Detailed description and specification of the  
CFR 1.111 to the Office action. Consideration of  
invention.
whether any submission is responsive within the
 
meaning of 37
CFR 1.111 to the last outstanding
Office action is done without factoring in the "final"
status of such outstanding Office action. Thus, a reply
which might not be acceptable as a reply under
37
CFR 1.113 when the application is under a final
rejection may be acceptable as a reply under 37
CFR
1.111.


III.IMPROPER CPA TREATED AS RCE


(g)(1) The specification may disclose or be amended to disclose
37
the names of the parties to a joint research agreement (35
CFR 1.53(d)(1) has been amended to provide
U.S.C. 103(c)(2)(C)).
that CPA practice under 37
CFR 1.53(d) does notapply to utility and plant applications. Effective July
14, 2003, a CPA may only be filed if the prior nonprovisional
application is a design application that is
complete as defined by 37 CFR 1.51(b).


(2)An amendment under paragraph (g)(1) of this section
In the event that an applicant files a request for a
must be accompanied by the processing fee set forth § 1.17(i) if
CPA (on or after July 14, 2003) of a utility or plant
not filed within one of the following time periods:
application that was filed on or after June 8, 1995, the
Office will automatically treat the improper CPA as
an RCE of the prior application (identified in the
request for CPA) under 37
CFR 1.114. If the CPA
does not satisfy the requirements of 37 CFR 1.114 to
be a proper RCE (e.g., lacks a submission under 37
CFR 1.114(b), or is not accompanied by the fee set  
forth in 37 CFR 1.17(e)), the improper CPA will be
treated as an improper RCE, and the time period set in
the last Office action (or notice of allowance) will
continue to run. If the time period (considering any
available extension under 37 CFR 1.136(a)) has
expired, the applicant will need to file a petition under
37 CFR 1.137 (with the lacking submission under 37
CFR 1.114(b) or fee set forth in 37 CFR 1.17(e)) to
revive the abandoned application.


(i)Within three months of the filing date of a national
Effective July 14, 2003, the Office will not convert
application;
an improper CPA into an application under 37
 
CFR
(ii)Within three months of the date of entry of the  
1.53(b) simply because it is requested by the applicant.
national stage as set forth in § 1.491 in an international application;
The Office will convert an improper CPA into an
 
application under 37 CFR 1.53(b) only if the applicant
 
shows that there are extenuating circumstances that
(iii)Before the mailing of a first Office action on the  
warrant the burdensome process of converting a CPA
merits; or
into an application under 37 CFR 1.53(b) (e.g., restoring
the application to pending status and correcting
the improper RCE is not possible because the application
has issued as a patent).


(iv)Before the mailing of a first Office action after the
IV.AFTER FINAL REJECTION
filing of a request for continued examination under § 1.114.


(3)If an amendment under paragraph (g)(1) of this section
If an applicant timely files an RCE with the fee set
is filed after the date the issue fee is paid, the patent as issued
forth in 37
may not necessarily include the names of the parties to the joint
CFR 1.17(e) and a submission that meets
research agreement. If the patent as issued does not include the  
the reply requirements of 37 CFR 1.111, the Office
names of the parties to the joint research agreement, the patent
will withdraw the finality of any Office action to  
must be corrected to include the names of the parties to the joint
which a reply is outstanding and the submission will
research agreement by a certificate of correction under 35 U.S.C.
be entered and considered. See 37
255 and § 1.323 for the amendment to be effective.  
CFR 1.114(d). The
submission meeting the reply requirements of 37
CFR
1.111 must be timely received to continue prosecution
of an application. In other words, the mere request for,
and payment of the fee for, continued examination
will not operate to toll the running of any time period
set in the previous Office action for reply to avoid
abandonment of the application.  


37 CFR 1.104. Nature of examination.
Any submission that is an amendment must comply
with the manner of making amendments as set forth in
37 CFR 1.121. See MPEP § 714.03. The amendment
must include markings showing the changes relative
to the last entered amendment. Even though previously
filed unentered amendments after final may satisfy
the submission requirement under 37
CFR
1.114(c), applicants are encouraged to file an amendment
at the time of filing the RCE that incorporates all
of the desired changes, including changes presented in
any previously filed unentered after final amendments,
accompanied by instructions not to
enter the
unentered after final amendments. See subsection VI
for treatment of not fully responsive submissions
including noncompliant amendments.


V.NOT FULLY RESPONSIVE SUBMISSION


If reply to a final Office action is outstanding and
the submission is not fully responsive to the final
Office action, then it must be a bona fide attempt to
provide a complete reply to the final Office action in
order for the RCE to toll the period for reply.


(c)Rejection of claims.
If the submission is not a bona fide attempt to provide
a complete reply, the RCE should be treated as an
improper RCE. Thus, a “Notice of Improper Request
for Continued Examination (RCE),” Form PTO-2051,
should be prepared by the technical support personnel
and mailed to the applicant indicating that the request
was not accompanied by a submission complying
with the requirements of 37 CFR 1.111 (see 37 CFR
1.114(c)). The RCE will not toll the period for reply
and the application will be abandoned after the expiration
of the statutory period for reply if no submission
complying with 37 CFR 1.111 is filed. For
example, if a reply to a final Office action is outstanding
and the submission only includes an information
disclosure statement (IDS), the submission will not be
considered a bona fide attempt to provide a complete
reply to the final Office action and the period for reply
will not be tolled. Similarly, an amendment that would
cancel all of the claims in an application and does not
present any new or substitute claims is not a bona fideattempt to advance the application to final action. The
Office will not enter such an amendment. See Exxon
Corp. v. Phillips Petroleum Co., 265 F.3d 1249,
60
USPQ2d 1368 (Fed. Cir. 2001).


If the submission is a bona fide attempt to provide a
complete reply, applicant should be informed that the
submission is not fully responsive to the final Office
action, along with the reasons why, and given a new
shortened statutory period of one month or thirty days
(whichever is longer) to complete the reply. See
37 CFR 1.135(c).


Situations where a submission is not a fully responsive
submission, but is a bona fide attempt to provide
a complete reply are:


(4)Subject matter which is developed by another person
(A)Non-compliant amendment - An RCE filed
which qualifies as prior art only under 35 U.S.C. 102(e), (f) or (g)
with a submission which is an amendment that is not
may be used as prior art under 35 U.S.C. 103 against a claimed
in compliance with 37 CFR 1.121, but which is a
invention unless the entire rights to the subject matter and the  
bona fide attempt to provide a complete reply to the
claimed invention were commonly owned by the same person or
last Office action, should be treated as a proper RCE
subject to an obligation of assignment to the same person at the  
and a Notice of Noncompliant Amendment should be
time the claimed invention was made.
mailed to the applicant. Applicant is given a time
period of one month or thirty days from the mailing
date of the notice, whichever is longer, to provide an  
amendment complying with 37 CFR 1.121. See
MPEP § 714.03 for information on the amendment
practice under 37 CFR 1.121.


(i)Subject matter developed by another person and a  
(B)Presentation of claims for different invention
claimed invention shall be deemed to have been commonly owned
- Applicants cannot file an RCE to obtain continued
by the same person or subject to an obligation of assignment to the
examination on the basis of claims that are independent
same person in any application and in any patent granted on or  
and distinct from the claims previously claimed
after December 10, 2004, if:
and examined as a matter of right (i.e., applicant cannot
switch inventions). See 37 CFR 1.145. If an RCE
is filed with an amendment canceling all claims
drawn to the elected invention and presenting only
claims drawn to a nonelected invention, the RCE
should be treated as a proper RCE but the amendment
should not be entered. The amendment is not fully
responsive and applicant should be given a time
period of one month or thirty days (whichever is
longer) to submit a complete reply. See MPEP
§ 821.03. Form paragraphs 8.04 or 8.26 should be
used as appropriate.


(A)The claimed invention and the subject matter
VI.NEW MATTER
was made by or on behalf of parties to a joint research agreement
that was in effect on or before the date the claimed invention was
made;


(B)The claimed invention was made as a result of
35
activities undertaken within the scope of the joint research agreement;
U.S.C. 132(a) provides that “[n]o amendment
and
shall introduce new matter into the disclosure of the  
 
invention.” Any amendment entered pursuant to
(C)The application for patent for the claimed invention
37
discloses or is amended to disclose the names of the parties to  
CFR 1.114 that is determined to contain new matter
the joint research agreement.
should be treated in the same manner that a reply
 
under 37
(ii)For purposes of paragraph (c)(4)(i) of this section,  
CFR 1.111 determined to contain new matter
the term “joint research agreement” means a written contract,
is currently treated. See MPEP § 706.03(o). In those
grant, or cooperative agreement entered into by two or more persons
instances in which an applicant seeks to add new matter
or entities for the performance of experimental, developmental,
to the disclosure of an application, the procedure in
or research work in the field of the claimed invention.
37
CFR 1.114 is not available, and the applicant must
file a continuation-in-part application under 37
CFR
1.53(b) containing such new matter.  


(iii)To overcome a rejection under 35 U.S.C. 103(a)
VII.FIRST ACTION FINAL AFTER FILING
based upon subject matter which qualifies as prior art under only
AN RCE
one or more of 35 U.S.C. 102(e), (f) or (g) via 35 U.S.C.
103(c)(2), the applicant must provide a statement to the effect that
the prior art and the claimed invention were made by or on the
behalf of parties to a joint research agreement, within the meaning
of 35 U.S.C. 103(c)(3) and paragraph (c)(4)(ii) of this section, that
was in effect on or before the date the claimed invention was
made, and that the claimed invention was made as a result of
activities undertaken within the scope of the joint research agreement.


The action immediately subsequent to the filing of
an RCE with a submission and fee under 37
CFR
1.114 may be made final only if the conditions set
forth in MPEP § 706.07(b) for making a first action
final in a continuing application are met.


VIII.AFTER ALLOWANCE OR QUAYLE ACTION


The phrase "withdraw the finality of any Office
action" in 37
CFR 1.114(d) includes the withdrawal
of the finality of a final rejection, as well as the closing
of prosecution by an Office action under Ex parte
Quayle, 25 USPQ 74, 453 O.G. 213 (Comm’r Pat.
1935), or notice of allowance under 35
U.S.C. 151(or notice of allowability). Therefore, if an applicant
files an RCE with the fee set forth in 37
CFR 1.17(e)
and a submission in an application which has been
allowed, prosecution will be reopened. If the issue fee
has been paid, however, payment of the fee for an
RCE and a submission without a petition under
37
CFR 1.313 to
withdraw the application from issue
will not avoid
issuance of the application as a patent.
If an RCE (with the fee and a submission) is filed in
an allowed application prior to payment of the issue
fee, a petition under 37 CFR 1.313 to withdraw the
application from issue is not required.


37 CFR 1.71(g) provides for the situation in which
If an RCE complying with the requirements of
an application discloses or is amended to disclose the
37  
names of the parties to a joint research agreement to
CFR 1.114 is filed in an allowed application after
invoke the “safe harbor” provision of 35 U.S.C.
the issue fee has been paid and a petition under
103(c) as amended by the CREATE Act. 37 CFR  
37
1.71(g)(1) specifically provides that the specification
CFR 1.313 is also filed and granted, prosecution
may disclose or be amended to disclose the name of
will be reopened. Applicant may not obtain a refund
each party to the joint research agreement because
of the issue fee. If, however, the application is subsequently
this information is required by 35 U.S.C.
allowed, the Notice of Allowance will reflect
103(c)(2)(C).
an issue fee amount that is due that is the difference
 
between the current issue fee amount and the issue fee
37 CFR 1.71(g)(2) provides that an amendment
that was previously paid.
under 37 CFR 1.71(g)(1) must be accompanied by the
processing fee set forth in 37 CFR 1.17(i) if it is not  
filed within one of the following time periods: (1)
within three months of the filing date of a national
application; (2) within three months of the date of
entry of the national stage as set forth in 37 CFR
1.491 in an international application; (3) before the  
mailing of a first Office action on the merits; or (4)
before the mailing of a first Office action after the filing
of a request for continued examination under 37
CFR 1.114.


37 CFR 1.71(g)(3) provides that if an amendment
If an applicant files an RCE under 37  
under 37 CFR 1.71(g)(1) is filed after the date the  
CFR 1.114after the filing of a Notice of Appeal to the Board of
issue fee is paid, the patent as issued may not necessarily
Patent Appeals and Interferences (Board), but prior to
include the names of the parties to the joint
a decision on the appeal, it will be treated as a request
research agreement. 37 CFR 1.71(g)(3) also provides
to withdraw the appeal and to reopen prosecution of  
that if the patent as issued does not include the names
the application before the examiner, regardless of
of the parties to the joint research agreement, the  
whether the RCE is proper or improper. See 37 CFR  
patent must be corrected to include the names of the
1.114(d). The Office will withdraw the appeal upon
parties to the joint research agreement by a certificate
the filing of an RCE. Applicants should advise the  
Board when an RCE under 37 CFR 1.114 is filed in an
application containing an appeal awaiting decision.
Otherwise, the Board of Patent Appeals and Interferences
may refuse to vacate a decision rendered after
the filing (but before the recognition by the Office) of  
an RCE under 37 CFR 1.114.


A.Proper RCE


If the RCE is accompanied by a fee (37 CFR
1.17(e)) and a submission that includes a reply which
is responsive within the meaning of 37 CFR 1.111 to
the last outstanding Office action, the Office will
withdraw the finality of the last Office action and the
submission will be entered and considered. If the submission
is not fully responsive to the last outstanding
Office action but is considered to be a bona fideattempt to provide a complete reply, applicant will be
notified that the submission is not fully responsive,
along with the reasons why, and will be given a new
time period to complete the reply (using form paragraph
7.42.08). See 37 CFR 1.135(c) and subsection
V.


If the RCE is proper, form paragraph 7.42.06
should be used to notify applicant that the appeal has
been withdrawn and prosecution has been reopened.


B.Improper RCE


of correction under 35 U.S.C. 255 and 37 CFR 1.323
The appeal will be withdrawn even if the RCE is
for the amendment to be effective. The requirements
improper. If an RCE is filed in an application after
of 37 CFR 1.71(g)(3) (correction of the patent by a
appeal to the Board but the request does not include
certificate of correction under 35 U.S.C. 255 and 37  
the fee required by 37 CFR 1.17(e) or the submission
CFR 1.323) also apply in the situation in which such
required by 37 CFR 1.114, or both, the examiner
an amendment is not filed until after the date the  
should treat the request as an improper RCE and withdraw
patent was granted (in a patent granted on or after
the appeal pursuant to 37 CFR 1.114(d). If the
December 10, 2004). It is unnecessary to file a reissue
submission is not considered to be a bona fide attempt
application or request for reexamination of the patent
to provide a complete reply to the last outstanding
to submit the amendment and other information necessary
Office action (e.g., an IDS only), the submission will
to take advantage of 35 U.S.C. 103(c) as  
be treated as an improper submission or no submission
amended by the CREATE Act. See H.R. Rep. No.
at all under 37 CFR 1.114(c) (thus the request is
108-425, at 9 (“[t]he omission of the names of parties
an improper RCE). See subsection VI.
to the agreement is not an error that would justify
 
commencement of a reissue or reexamination proceeding”).
Upon withdrawal of the appeal, the application
will be treated in accordance with MPEP § 1215.01based on whether there are any allowed claims or not.
The proceedings as to the rejected claims are considered
terminated. Therefore, if no claim is allowed, the
application is abandoned. Claims which are allowable
except for their dependency from rejected claims will
be treated as if they were rejected. See MPEP §
1215.01. If there is at least one allowed claim, the  
application should be passed to issue on the allowed
claim(s). If there is at least one allowed claim but formal
matters are outstanding, applicant should be
given a shortened statutory period of one month or  
thirty days (whichever is longer) in which to correct
the formal matters.


X.AFTER DECISION BY THE BOARD


The submission of such an amendment remains
A.Proper RCE After Board Decision
subject to the rules of practice: e.g., 37 CFR 1.116,
1.121, and 1.312. For example, if an amendment
under 37 CFR 1.71(g) is submitted in an application
under final rejection to overcome a rejection under 35
U.S.C. 103(a) based upon a U.S. patent which qualifies
as prior art only under 35 U.S.C. 102(e), the
examiner may refuse to enter the amendment under
37 CFR 1.71(g) if it is not accompanied by an appropriate
terminal disclaimer (37 CFR 1.321(d)). This is
because such an amendment may necessitate the
reopening of prosecution (e.g., for entry of a double
patenting rejection).


If an amendment under 37 CFR 1.71(g) is submitted
The filing of an RCE (accompanied by the fee and a
to overcome a rejection under 35 U.S.C. 103(a)
submission) after a decision by the Board of Patent
based upon a U.S. patent or U.S. patent application
Appeals and Interferences, but before the filing of
publication which qualifies as prior art only under 35
a  
U.S.C. 102(e), and the examiner withdraws the rejection
Notice of Appeal to the Court of Appeals for the
under 35 U.S.C. 103(a), the examiner may need
Federal Circuit (Federal Circuit) or the commencement
to issue an Office action containing a new double patenting
of a civil action in federal district court, will
rejection based upon the disqualified patent or
also
patent application publication. In these situations,  
result in the finality of the rejection or
such Office action can be made final, provided that
action  
the examiner introduces no other new ground of rejection
being withdrawn and the submission being
that was not necessitated by either amendment or  
considered. Generally, the time period for filing a
an information disclosure statement filed during the  
notice of appeal to the Federal Circuit or for commencing
time period set forth in 37 CFR 1.97(c) with the fee
a civil action is within two months of the  
set forth in 37 CFR 1.17(p). The Office action is properly
Board’s decision. See 37  
made final because the new double patenting
CFR 1.304 and MPEP §
rejection was necessitated by amendment of the application
1216. Thus, an RCE filed within this two month time
by applicant. This is the case regardless of  
period and before the filing of a notice of appeal to the  
whether the claims themselves have been amended.
Federal Circuit or the commencement of a civil action
 
would be timely filed. In addition to the res judicataeffect of a Board of Patent Appeals and Interferences
In addition to amending the specification to disclose
decision in an application (see MPEP § 706.03(w)), a
the names of the parties to the joint research
Board decision in an application is the “law of the  
agreement, applicant must submit the required statement
case,” and is thus controlling in that application and
to invoke the prior art disqualification under the
any subsequent, related application. See MPEP
CREATE Act. 37 CFR 1.104(c)(4) sets forth the
§ 1214.01 (where a new ground of rejection is entered
requirement for the statement, which includes a statement
by the Board of Patent Appeals and Interferences pursuant
to the effect that the prior art and the claimed
to 37
invention were made by or on the behalf of parties to
CFR 1.196(b), argument without either
a joint research agreement, within the meaning of 35
amendment of the claims so rejected or the submission
U.S.C. 103(c)(3), which was in effect on or before the  
of a showing of facts can only result in a final
date the claimed invention was made, and that the  
rejection of the claims, since the examiner is without
claimed invention was made as a result of activities
authority to allow the claims unless amended or
undertaken within the scope of the joint research
unless the rejection is overcome by a showing of facts
agreement. The statement should either be on or begin
not before the Board of Patent Appeals and Interferences).
on a separate sheet and must not be directed to other
As such, a submission containing arguments
matters (37 CFR 1.4(c)). The statement must be
without either amendment of the rejected claims or  
signed in accordance with 37 CFR 1.33(b).
the submission of a showing of facts will not be effective
to remove such rejection.


If the applicant disqualifies the subject matter relied
B.Improper RCE After Board Decision
upon by the examiner in accordance with 35 U.S.C.
103(c) as amended by the CREATE Act and the procedures
set forth in the rules, the examiner will treat
the application under examination and the 35 U.S.C.
102(e), (f), or (g) prior art as if they are commonly
owned for purposes of 35 U.S.C. 103(a).


The following examples are provided for illustration
If an RCE is filed after a decision by the Board of
only:
Patent Appeals and Interferences, but before the filing
 
of a Notice of Appeal to the Federal Circuit or the
Example 1
commencement of a civil action in federal district
 
court, and the RCE was not accompanied by the fee
Company A and University B have a joint research
and/or the submission, the examiner should notify the
agreement (JRA) in place prior to the date invention
applicant that the RCE is improper by using form
X’ was made. Professor BB from University
paragraph 7.42.16 set forth below. If the time for
B communicates invention X to Company A. On
seeking court review has passed without such review
November 12, 2004, University B filed a patent
being sought, the examiner should include the form
application on invention X. On December 13,  
paragraph with the mailing of a Notice of Allowability
2004, Company A filed a patent application disclosing
or a Notice of Abandonment depending on the status
and claiming invention X’, which is  
of the claims. See MPEP § 1214.06. If the time for
an
seeking court review remains, the examiner should
obvious variant of invention X. Invention X’
include the form paragraph on a PTOL-90. No time
was made as a result of the activities undertaken
period should be set. If a submission is filed with the
within the scope of the JRA. University B retains
RCE, but the fee is missing, the examiner should also
ownership of invention X and Company A retains
include a statement as to whether or not the submission
ownership of invention X’, without any obligation
has been entered. In general, such a submission
to assign the inventions to a common owner. Company
should not be entered. If, however, the submission is
A could invoke the joint research agreement
an amendment that obviously places the application in
provisions of 35 U.S.C. 103(c) to disqualify University
condition for allowance, it should be entered with the  
B’s application as prior art in a rejection
approval of the supervisory patent examiner. See
under 35 U.S.C. 103(a).
MPEP § 1214.07. Form paragraph 7.42.16 should not
be used if the application is not a utility or plant application
filed under 35 U.S.C. 111(a) on or after June 8,
1995, or an international application filed under
35  
U.S.C. 363 on or after June 8, 1995. In that situation,
a “Notice of Improper Request for Continued
Examination (RCE),” Form PTO-2051, should be prepared
and mailed by the technical support personnel
to notify applicant that continued examination
does
not apply to the application. When the time
for
seeking court review has passed without such
review being sought, the examiner must take up the
application for consideration. See MPEP § 1214.06for guidance on the action to be taken.


XI.AFTER APPEAL TO THE FEDERAL CIRCUIT
OR CIVIL ACTION


 
The procedure set forth in 37  
 
CFR 1.114 is not available in an application after the filing  
 
Example 2
 
Professor BB from University B communicates
invention X to Company A. On November 12,
2004, University B filed a patent application on
invention X. On December 13, 2004, Company A
filed a patent application disclosing and claiming
invention X’, which is an obvious variant of invention
X. Company A and University B have a joint
research agreement (JRA), which goes into effect
on December 20, 2004. University B retains ownership
of invention X and Company A retains
ownership of invention X’, without any obligation
to assign the inventions to a common owner. Company
A could not invoke the joint research agreement
provisions of 35 U.S.C. 103(c) to disqualify
University B’s application as prior art in a rejection
under 35 U.S.C. 103(a) because the JRA was
not in effect until after the later invention was
made.
 
Example 3
 
Company A and University B have a joint research
agreement (JRA) in place prior to the date invention
X’ was made but the JRA is limited to activities
for invention Y, which is distinct from
invention X. Professor BB from University B
communicates invention X to Company A. On
November 12, 2004, University B filed a patent
application on invention X. On December 13,
2004, Company A filed a patent application disclosing
and claiming invention X’, which is an
obvious variant of invention X. University B
retains ownership of invention X and Company A
retains ownership of invention X’, without any
obligation to assign the inventions to a common
owner. Company A could not invoke the joint
research agreement provisions of 35 U.S.C. 103(c)
to disqualify University B’s application as prior art
in a rejection under 35 U.S.C. 103(a) because the
claimed invention was not made as a result of the
activities undertaken within the scope of the JRA.
 
706.02(l)(3)Examination Procedure With
Respect to 35 U.S.C. 103(c)
[R-3]
 
Examiners are reminded that a reference used in an
anticipatory rejection under 35 U.S.C. 102(e), (f), or
(g) is not disqualified as prior art if evidence is provided
to show that the reference is disqualified
under 35 U.S.C. 103(c). Generally, such a reference
is only disqualified when
 
(A)proper evidence is filed,
 
(B)the reference only qualifies as prior art under
35 U.S.C. 102(e), (f) or (g)  (e.g., not 35
U.S.C. 102(a) or (b)), and
 
(C)the reference was used in an obviousness
rejection under 35 U.S.C. 103(a).
 
Applications and patents will be considered to be
owned by, or subject to an obligation of assignment
to, the same person, at the time the invention was
made, if the applicant(s) or an attorney or agent of
record makes a statement to the effect that the application
and the reference were, at the time the invention
was made, owned by, or subject to an obligation of
assignment to, the same person(s) or organization(s).
In order to overcome a rejection under 35 U.S.C.
103(a) based upon a reference which qualifies as prior
art under only one or more of 35 U.S.C. 102(e), (f), or
(g), via the CREATE Act, the applicant must comply
with the statute and the rules of practice in effect.
 
See MPEP § 706.02(l)(2) for additional information
pertaining to establishing common ownership.
 
I.EXAMINATION OF APPLICATIONS OF
DIFFERENT INVENTIVE ENTITIES
WHERE COMMON OWNERSHIP OR A
JOINT RESEARCH AGREEMENT HAS
NOT BEEN ESTABLISHED
 
If the application file being examined has not
established that the reference is disqualified as prior
art under 35 U.S.C. 103(c), the examiner will:
 
(A)assume the reference is not disqualified
under 35 U.S.C. 103(c);
 
(B)examine the application on all grounds other
than any conflict between the reference patent(s) or
application(s) arising from a possible 35 U.S.C. 103rejection based on 35 U.S.C. 102(e), (f) and/or (g);
 
(C)consider the applicability of any references
under 35 U.S.C. 103 based on 35 U.S.C. 102(e), (f)
and/or (g), including provisional rejections under
35
U.S.C. 102(e)/103; and
 
(D)apply the best references against the claimed
invention by rejections under 35 U.S.C. 102 and 103,
including any rejections under 35 U.S.C. 103 based
on 35
U.S.C. 102(e), (f) and/or (g), until such time
 
 
 
 
 
that the reference is disqualified under 35 U.S.C.
103(c). When applying any 35 U.S.C. 102(e)/103
references against the claims, the examiner should
anticipate that the reference may be disqualified
under 35 U.S.C. 103(c). See MPEP § 706.02(l)(1). If
a statement of common ownership or assignment
is filed in reply to the 35 U.S.C. 102(e)/103 rejection
and the claims are not amended, the examiner may not
make the next Office action final if a new rejection is
made. See MPEP § 706.07(a). If the reference is disqualified
under the joint research agreement provision
of 35 U.S.C. 103(c) and a new subsequent double patenting
rejection based upon the disqualified reference
is applied, the next Office action, which contains the
new double patenting rejection, may be made final
even if applicant did not amend the claims (provided
that the examiner introduces no other new ground of
rejection that was not necessitated by either amendment
or an information disclosure statement filed during
the time period set forth in 37 CFR 1.97(c) with
the fee set forth in 37 CFR 1.17(p)). The Office action
is properly made final because the new double patenting
rejection was necessitated by amendment of the
application by applicant.
 
II.EXAMINATION OF APPLICATIONS OF
DIFFERENT INVENTIVE ENTITIES
WHERE COMMON OWNERSHIP OR A
JOINT RESEARCH AGREEMENT HAS
BEEN ESTABLISHED
 
If the application being examined has established
that the reference is disqualified as prior art
under 35 U.S.C. 103(c) the examiner will:
 
(A)examine the applications as to all grounds
except 35 U.S.C. 102(e), (f) and (g) as they apply
through 35
U.S.C. 103, including provisional rejections
under 35
U.S.C. 102(e)/103;
 
(B)examine the applications for double patenting,
including statutory and nonstatutory double patenting,
and make a provisional rejection, if
appropriate; and
 
(C)invite the applicant to file a terminal disclaimer
to overcome any provisional or actual nonstatutory
double patenting rejection, if appropriate
(see 37 CFR 1.321).
 
 
 
III. DOUBLE PATENTING REJECTIONS
 
Commonly owned applications of different inventive
entities may be rejected on the ground of double
patenting, even if the later filed application claims
35
U.S.C. 120 benefit to the earlier application. In
addition, double patenting rejection may arise as a
result of the amendment to 35 U.S.C. 103(c) by the
CREATE Act (Pub. L. 108-453, 118 Stat. 3596
(2004)). Congress recognized that this amendment to
35
U.S.C. 103(c) would result in situations in which
there would be double patenting rejections between
applications not owned by the same party (see H.R.
Rep. No. 108-425, at 5-6 (2003). For purposes of double
patenting analysis, the application or patent and
the subject matter disqualified under 35
U.S.C. 103(c)
as amended by the CREATE Act will be treated as if
commonly owned.
 
A rejection based on a pending application would
be a provisional rejection. The practice of rejecting
claims on the ground of double patenting in commonly
owned applications of different inventive entities
is in accordance with existing case law and
prevents an organization from obtaining two or more
patents with different expiration dates covering nearly
identical subject matter. See MPEP § 804 for guidance
on double patenting issues. In accordance with
established patent law doctrines, double patenting
rejections can be overcome in
certain circumstances
by disclaiming, pursuant to the existing provisions of
37 CFR 1.321, the terminal portion of the term of the
later patent and including in the disclaimer a provision
that the patent shall be enforceable only for and
during the period the patent is commonly owned with
the application or patent which formed the basis
for
the rejection, thereby eliminating the problem
of
extending patent life. For a double patenting
rejection based on a non-commonly owned patent
(treated as if commonly owned pursuant to the CREATE
Act), the double patenting rejection may be obviated
by filing a terminal disclaimer in accordance
with 37 CFR 1.321(d). See MPEP § 804 and
§
804.02.
 
 
 
 
 
706.02(m)Form Paragraphs for Use in
Rejections Under 35 U.S.C. 103
[R-5]
 
The following form paragraphs should be used in
making the appropriate rejections under 35 U.S.C.
103.
 
¶ 7.20 Statement of Statutory Basis, 35 U.S.C. 103(a)
 
The following is a quotation of 35 U.S.C. 103(a) which forms
the basis for all obviousness rejections set forth in this Office
action:
 
(a) A patent may not be obtained though the invention is not
identically disclosed or described as set forth in section 102
of this title, if the differences between the subject matter
sought to be patented and the prior art are such that the subject
matter as a whole would have been obvious at the time
the invention was made to a person having ordinary skill in
the art to which said subject matter pertains. Patentability
shall not be negatived by the manner in which the invention
was made.
 
Examiner Note:
 
1.The statute is not to be cited in all Office actions. It is only
required in first actions on the merits employing 35 U.S.C. 103(a)
and final rejections. Where the statute is being applied, but is not
cited in an action on the merits, use paragraph 7.103.
 
2.This form paragraph should only be used ONCE in a given
Office action.
 
3.This form paragraph must precede form paragraphs 7.20.01 -
7.22 when this form paragraph is used to cite the statute in first
actions and final rejections.
 
¶ 7.20.01 103(a) Rejection Using Prior Art Under 102(e),
(f), or (g) That Is Not Disqualified Under 35 U.S.C. 103(c)
Because Reference Is Prior Art Under Another Subsection
of 35 U.S.C. 102
 
Applicant has provided evidence in this file showing that the
invention was owned by, or subject to an obligation of assignment
to, the same entity as [1] at the time this invention was made, or
was subject to a joint research agreement at the time this invention
was made. However, reference [2] additionally qualifies as prior
art under another subsection of 35 U.S.C. 102, and therefore is not
disqualified as prior art under 35 U.S.C. 103(c).
 
Applicant may overcome the applied art either by a showing
under 37
CFR 1.132 that the invention disclosed therein was
derived from the inventor of this application, and is therefore, not
the invention “by another,” or by antedating the applied art under
37 CFR 1.131.
 
Examiner Note:
 
1.This form paragraph must be included following form paragraph
7.20 in all actions containing rejections under 35 U.S.C.
103(a) using art that is disqualified under 103(c) using 102(e), (f),
or (g), but which qualifies under another section of 35 U.S.C. 102.
 
2.In brackets 1 and 2, identify the reference which is sought to
be disqualified.
 
¶ 7.20.02 Joint Inventors, Common Ownership Presumed
 
This application currently names joint inventors. In considering
patentability of the claims under 35 U.S.C. 103(a), the examiner
presumes that the subject matter of the various claims was
commonly owned at the time any inventions covered therein were
made absent any evidence to the contrary. Applicant is advised of
the obligation under 37 CFR 1.56 to point out the inventor and
invention dates of each claim that was not commonly owned at the
time a later invention was made in order for the examiner to consider
the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C.
102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
 
Examiner Note:
 
This paragraph must be used in all applications with joint
inventors (unless the claims are clearly restricted to only one
claimed invention, e.g., only a single claim is presented in the
application).
 
¶ 7.20.04 103(a) Rejection Using Prior Art Under 102(e),
(f), or (g) That Is Attempted To Be Disqualified Under 35
U.S.C. 103(c) Using the Common Ownership or
Assignment Provision
 
Applicant has attempted to disqualify reference [1] under 35
U.S.C. 103(c) by showing that the invention was owned by, or
subject to an obligation of assignment to, the same entity as [2] at
the time this invention was made. However, applicant has failed to
provide a statement that the application and the reference were
owned by, or subject to an obligation of assignment to, the same
person at the time the invention was made in a conspicuous manner,
and therefore, is not disqualified as prior art under 35 U.S.C.
103(a). Applicant must file the required evidence in order to properly
disqualify the reference under 35 U.S.C. 103(c). See MPEP §
706.02(l).
 
In addition, applicant may overcome the applied art either by a
showing under 37
CFR 1.132 that the invention disclosed therein
was derived from the inventor of this application, and is therefore
not the invention “by another,” or by antedating the applied art
under 37 CFR 1.131.
 
Examiner Note:
 
1.This form paragraph must be included in all actions containing
rejections under 35 U.S.C. 103(a) where an attempt has been
made to disqualify the reference under 35 U.S.C. 103(c), but
where the applicant has not provided a proper statement indicating
common ownership or assignment at the time the invention was
made.
 
2.In brackets 1 and 2, identify the commonly owned applied art
(e.g., patent or co-pending application).
 
 
 
¶ 7.20.05 103(a) Rejection Using Prior Art Under 102(e),
(f), or (g) That Is Attempted To Be Disqualified Under 35
 
 
 
 
 
U.S.C. 103(c) Using the Joint Research Agreement
Provisions
 
Applicant has attempted to disqualify reference [1] under 35
U.S.C. 103(c) by showing that the invention was subject to a joint
research agreement at the time this invention was made. However,
applicant has failed to [2]. Applicant must file the missing
requirements in order to properly disqualify the reference under
35 U.S.C. 103(c). See 37 CFR 1.71(g) and 1.104(c) and MPEP §
706.02(l).
 
In addition, applicant may overcome the applied art either by a
showing under 37
CFR 1.132 that the invention disclosed therein
was derived from the inventor of this application, and is therefore,
not the invention “by another,” or by antedating the applied art
under 37 CFR 1.131.
 
Examiner Note:
 
1.This form paragraph must be included in all actions
containing rejections under 35 U.S.C. 103(a) where an attempt
has been made to disqualify the reference under 35 U.S.C. 103(c)
using the joint research agreement provisions but the disqualification
attempt is ineffective.
 
2.In bracket 1, identify the reference which is sought to be
disqualified under 35 U.S.C. 103(c).
 
3.In bracket 2, identify the reason(s) why the disqualification
attempt is ineffective. The reason(s) could be noncompliance
with the statutory requirements of 35 U.S.C. 103(c) or rule
requirements relating to the CREATE Act, such as failure to submit
the required statement or failure to amend the specification to
include the names of the parties to the joint research agreement.
See 37 CFR 1.104(c)(4).
 
 
 
¶ 7.21 Rejection, 35 U.S.C. 103(a)
 
Claim [1] rejected under 35 U.S.C. 103(a) as being unpatentable
over [2].
 
Examiner Note:
 
1.This paragraph must be preceded by either form paragraph
7.20 or form paragraph 7.103.
 
2.An explanation of the rejection applying the Graham v.
Deere test must follow this form paragraph.
 
3.If the rejection relies upon prior art under 35 U.S.C. 102(e),
use 35 U.S.C. 102(e) as amended by the American Inventors Protection
Act to determine the reference’s prior art date, unless the
reference is a U.S. patent issued directly, or indirectly, from an
international application which has an international filing date
prior to November 29, 2000. In other words, use pre-AIPA 35
U.S.C. 102(e) only if the reference is a U.S. patent issued directly
or indirectly from either a national stage of an international application
(application under 35 U.S.C. 371) which has an international
filing date prior to November 29, 2000 or a continuing
application claiming benefit under 35 U.S.C. 120, 121 or 365(c) to
an international application having an international filing date
prior to November 29, 2000. See the Examiner Notes for form
paragraphs 7.12 and 7.12.01 to assist in the determination of the
reference’s 35 U.S.C. 102(e) date.
 
4.If the applicability of this rejection (e.g., the availability of
the prior art as a reference under 35 U.S.C. 102(a) or 35 U.S.C.
102(b)) prevents the reference from being disqualified under 35
U.S.C. 103(c), form paragraph 7.20.01 must follow this form
paragraph.
 
5.If this rejection is a provisional 35 U.S.C. 103(a) rejection
based upon a copending application that would comprise prior art
under 35
U.S.C. 102(e) if patented or published, use form paragraph
7.21.01 instead of this paragraph.
 
¶ 7.21.01 Provisional Rejection, 35 U.S.C. 103(a),
Common Assignee or at Least One Common Inventor
 
Claim [1] provisionally rejected under 35 U.S.C. 103(a) as
being obvious over copending Application No. [2] which has a
common [3] with the instant application. Based upon the earlier
effective U.S. filing date of the copending application, it would
constitute prior art under 35
U.S.C. 102(e) if published or patented.
This provisional rejection under 35 U.S.C. 103(a) is based
upon a presumption of future publication or patenting of the conflicting
application. [4]
 
This provisional rejection might be overcome either by a showing
under 37 CFR 1.132 that any invention disclosed but not
claimed in the copending application was derived from the inventor
of this application and is thus not the invention “by another,”
or by a showing of a date of invention for the instant application
prior to the effective U.S. filing date of the copending application
under 37 CFR 1.131. This rejection might also be overcome
by
showing that the copending application is disqualified under
35 U.S.C. 103(c) as prior art in a rejection under 35 U.S.C. 103(a).
See MPEP § 706.02(l)(1) and § 706.02(l)(2).
 
Examiner Note:
 
1.This paragraph is used to provisionally reject claims not patentably
distinct from the disclosure in a copending application
having an earlier U.S. filing date and also having either a common
assignee or at least one common inventor. This form paragraph
should not be used in applications pending on or after December
10, 2004 when the copending application is disqualified under 35
U.S.C. 103(c) as prior art in a 35 U.S.C. 103(a) rejection. See
MPEP § 706.02(l)(3).
 
2.Use 35 U.S.C. 102(e) as amended by the American Inventors
Protection Act (AIPA) to determine the copending application reference’s
prior art date, unless the copending application reference
is based directly, or indirectly, from an international application
which has an international filing date prior to November 29, 2000.
If the copending application reference is either a national stage of
an international application (application under 35 U.S.C. 371)
which has an international filing date prior to November 29, 2000,
or a continuing application claiming benefit under 35 U.S.C. 120,
121, or 365(c) to an international application having an international
filing date prior to November 29, 2000, use pre-AIPA 35
U.S.C. 102(e) to determine the copending application reference’s
prior art date. See the Examiner Notes for form paragraphs 7.12and 7.12.01 to assist in the determination of the 35 U.S.C. 102(e)
date.
 
3.If the claimed invention is fully disclosed in the copending
application, use paragraph 7.15.01.
 
4.In bracket 3, insert either --assignee-- or --inventor--.
 
 
 
 
 
5.In bracket 4, insert explanation of obviousness.
 
6.If the claimed invention is also claimed in the copending
application, a provisional obviousness double patenting rejection
should additionally be made using paragraph 8.33 and 8.37.
 
7.If evidence indicates that the copending application is also
prior art under 35 U.S.C. 102(f) or (g) and the copending application
has not been disqualified as prior art in a 35 U.S.C. 103(a)
rejection pursuant to 35 U.S.C. 103(c), a rejection should additionally
be made under 35 U.S.C. 103(a) using paragraph 7.21
(e.g., applicant has named the prior inventor in response to a
requirement made using paragraph 8.28).
 
¶ 7.21.02 Rejection, 35 U.S.C. 103(a), Common Assignee
or at Least One Common Inventor
 
Claim [1] rejected under 35 U.S.C. 103(a) as being obvious
over [2].
 
The applied reference has a common [3] with the instant application.
Based upon the earlier effective U.S. filing date of the reference,
it constitutes prior art under 35 U.S.C. 102(e). This
rejection under 35 U.S.C. 103(a) might be overcome by: (1) a
showing under 37 CFR 1.132 that any invention disclosed but not
claimed in the reference was derived from the inventor of this
application and is thus not an invention “by another”; (2) a showing
of a date of invention for the claimed subject matter of the
application which corresponds to subject matter disclosed but not
claimed in the reference, prior to the effective U.S. filing date of
the reference under 37 CFR 1.131; or (3) an oath or declaration
under 37 CFR 1.130 stating that the application and reference are
currently owned by the same party and that the inventor named in
the application is the prior inventor under 35 U.S.C. 104, together
with a terminal disclaimer in accordance with 37
CFR 1.321(c).
This rejection might also be overcome by showing that the reference
is disqualified under 35 U.S.C. 103(c) as prior art in a rejection
under 35 U.S.C. 103(a). See MPEP § 706.02(l)(1) and §
706.02(l)(2). [4]
 
Examiner Note:
 
1.This paragraph is used to reject over a reference (patent or
published application) with an earlier filing date that discloses the
claimed invention, and that only qualifies as prior art under 35
U.S.C. 102(e). If the reference qualifies as prior art under 35
U.S.C. 102(a) or (b), then this form paragraph should not be used
(form paragraph 7.21 should be used instead). The reference must
have either a common assignee or at least one common inventor.
This form paragraph should not be used in applications when the
reference is disqualified under 35 U.S.C. 103(c) as prior art in a
35 U.S.C. 103(a) rejection. See MPEP § 706.02(l)(3).
 
2.35 U.S.C. 102(e) as amended by the American Inventors
Protection Act of 1999 (AIPA) must be applied if the reference is
one of the following:
 
a.a U.S. patent or a publication of a U.S. application for patent
filed under 35 U.S.C. 111(a);
 
b.a U.S. patent issued directly or indirectly from, or a U.S. or
WIPO publication of, an international application if the international
application has an international filing date on or after
November 29, 2000.
 
See the Examiner Notes for form paragraph 7.12 to assist in the
determination of the 35 U.S.C. 102(e) date of the reference.
 
3.Pre-AIPA 35 U.S.C 102(e) must be applied if the reference is
a U.S. patent issued directly, or indirectly, from an international
application filed prior to November 29, 2000. See the Examiner
Notes for form paragraph 7.12.01 to assist in the determination of
the 35 U.S.C. 102(e) date of the reference.
 
4.In bracket 3, insert either --assignee-- or --inventor--.
 
5.In bracket 4, insert explanation of obviousness.
 
¶ 7.22 Rejection, 35 U.S.C. 103(a), Further in View Of
 
Claim [1] rejected under 35 U.S.C. 103(a) as being unpatentable
over [2] as applied to claim [3] above, and further in view of
[4].
 
Examiner Note:
 
1.This form paragraph must be preceded by form paragraph
7.21.
 
2.An explanation of the rejection applying the Graham v.
Deere test must follow this form paragraph.
 
3.If the rejection relies upon prior art under 35 U.S.C. 102(e),
use 35 U.S.C. 102(e) as amended by the American Inventors Protection
Act to determine the reference’s prior art date, unless the
reference is a U.S. patent issued directly, or indirectly, from an
international application which has an international filing date
prior to November 29, 2000. In other words, use pre-AIPA 35
U.S.C. 102(e) only if the reference is a U.S. patent issued directly
or indirectly from either a national stage of an international application
(application under 35 U.S.C. 371) which has an international
filing date prior to November 29, 2000 or a continuing
application claiming benefit under 35 U.S.C. 120, 121 or 365(c) to
an international application having an international filing date
prior to November 29, 2000. See the Examiner Notes for form
paragraphs 7.12 and 7.12.01 to assist in the determination of the
reference’s 35 U.S.C. 102(e) date.
 
¶ 7.23 Graham v. Deere, Test for Obviousness
 
The factual inquiries set forth in Graham v. John Deere Co.,
383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing
a background for determining obviousness under 35 U.S.C.
103(a) are summarized as follows:
 
1.Determining the scope and contents of the prior art.
 
2.Ascertaining the differences between the prior art and the
claims at issue.
 
3.Resolving the level of ordinary skill in the pertinent art.
 
4.Considering objective evidence present in the application
indicating obviousness or nonobviousness.
 
Examiner Note:
 
This form paragraph may be used, if appropriate, in response to
an argument of the use of Graham v. Deere.
 
¶ 7.27 Rejection, 35 U.S.C. 102 or 103(a)
 
Claim [1] rejected under 35 U.S.C. 102([2]) as anticipated by
or, in the alternative, under 35 U.S.C. 103(a) as obvious over [3].
 
Examiner Note:
 
1.This form paragraph is NOT intended to be commonly used
as a substitute for a rejection under 35 U.S.C. 102. In other
 
 
 
 
 
words, a single rejection under either 35 U.S.C. 102 or 35 U.S.C.
103(a) should be made whenever possible using appropriate form
paragraphs 7.15 to 7.19, 7.21 and 7.22. Examples of circumstances
where this paragraph may be used are as follows:
 
a.When the interpretation of the claim(s) is or may be in dispute,
i.e., given one interpretation, a rejection under 35 U.S.C. 102is appropriate and given another interpretation, a rejection under
35 U.S.C. 103(a) is appropriate. See MPEP §§ 2111- 2116.01 for
guidelines on claim interpretation.
 
b.When the reference discloses all the limitations of a claim
except a property or function, and the examiner cannot determine
whether or not the reference inherently possesses properties which
anticipate or render obvious the claimed invention but has basis
for shifting the burden of proof to applicant as in In re Fitzgerald,
619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §§ 2112-
2112.02.
 
c.When the reference teaches a small genus which places a
claimed species in the possession of the public as in In re Schaumann,
572 F.2d 312, 197 USPQ 5 (CCPA 1978), and the species
would have been obvious even if the genus were not sufficiently
small to justify a rejection under 35
U.S.C. 102. See MPEP §§
2131.02 and 2144.08 for more information on anticipation and
obviousness of species by a disclosure of a genus.
 
d.When the reference teaches a product that appears to be the
same as, or an obvious variant of, the product set forth in a product-
by-process claim although produced by a different process.
See In re Marosi, 710 F.2d 799, 218 USPQ 289 (Fed. Cir. 1983)
and In re Thorpe, 777 F.2d 695, 227
USPQ 964 (Fed. Cir. 1985).
See also MPEP § 2113.
 
e.When the reference teaches all claim limitations except a
means plus function limitation and the examiner is not certain
whether the element disclosed in the reference is an equivalent to
the claimed element and therefore anticipatory, or whether the
prior art element is an obvious variant of the claimed element.
See MPEP §§ 2183- 2184.
 
f.When the ranges disclosed in the reference and claimed by
applicant overlap in scope but the reference does not contain a
specific example within the claimed range. See the concurring
opinion in Ex parte Lee, 31
USPQ2d 1105 (Bd. Pat. App. & Inter.
1993). See MPEP § 2131.03.
 
2.If the interpretation of the claim(s) renders the claim(s)
indefinite, a rejection under 35 U.S.C. 112, 2nd paragraph, may be
appropriate.
 
3.In bracket 2, insert the appropriate paragraph letter(s) in
parenthesis.
 
4.A full explanation should follow this form paragraph.
 
5.If the rejection relies upon prior art under 35 U.S.C. 102(e),
use 35 U.S.C. 102(e) as amended by the American Inventors Protection
Act to determine the reference’s prior art date, unless the
reference is a U.S. patent issued directly, or indirectly, from an
international application which has an international filing date
prior to November 29, 2000. In other words, use pre-AIPA 35
U.S.C. 102(e) only if the reference is a U.S. patent issued directly
or indirectly from either a national stage of an international application
(application under 35 U.S.C. 371) which has an international
filing date prior to November 29, 2000 or a continuing
application claiming benefit under 35 U.S.C. 120, 121 or 365(c) to
an international application having an international filing date
prior to November 29, 2000. See the Examiner Notes for form
paragraphs 7.12 and 7.12.01 to assist in the determination of the
reference’s 35 U.S.C. 102(e) date.
 
6.This form paragraph must be preceded by 7.07, one or more
of form paragraphs 7.08 to 7.14 as appropriate, and form paragraph
7.20 or form paragraph 7.103.
 
706.02(n)Biotechnology Process Applications;
35 U.S.C. 103(b) [R-1]
 
35 U.S.C. 103. Conditions for patentability; non-obvious
subject matter.
 
 
 
(b)(1)Notwithstanding subsection (a), and upon timely election
by the applicant for patent to proceed under this subsection, a
biotechnological process using or resulting in a composition of
matter that is novel under section 102 and nonobvious under subsection
(a) of this section shall be considered nonobvious if-
 
(A)claims to the process and the composition of matter
are contained in either the same application for patent or in separate
applications having the same effective filing date; and
 
(B)the composition of matter, and the process at the time
it was invented, were owned by the same person or subject to an
obligation of assignment to the same person.
 
(2)A patent issued on a process under paragraph (1)-
 
(A)shall also contain the claims to the composition of
matter used in or made by that process, or
 
(B)shall, if such composition of matter is claimed in
another patent, be set to expire on the same date as such other
patent, notwithstanding section 154.
 
(3)For purposes of paragraph (1), the term “biotechnological
process” means-
 
(A)a process of genetically altering or otherwise
inducing a single- or multi-celled organism to-
 
(i)express an exogenous nucleotide sequence,
 
(ii)inhibit, eliminate, augment, or alter expression
of an endogenous nucleotide sequence, or
 
(iii)express a specific physiological characteristic
not naturally associated with said organism;
 
(B)cell fusion procedures yielding a cell line that
expresses a specific protein, such as a monoclonal antibody; and
 
(C)a method of using a product produced by a process
defined by subparagraph (A) or (B), or a combination of subparagraphs
(A) and (B).
 
 
 
35 U.S.C. 103(b) is applicable to biotechnological
processes only. 35 U.S.C. 103(b) precludes a rejection
of process claims which involve the use or making of
certain nonobvious biotechnological compositions of
matter under 35 U.S.C. 103(a).
 
 
 
 
 
35 U.S.C. 103(b) requires that:
 
(A)the biotechnological process and composition
of matter be contained in either the same application
or in separate applications having the same effective
filing date;
 
(B)both the biotechnological process and composition
of matter be owned or subject to an assignment
to the same person at the time the process was
invented;
 
(C)a patent issued on the process also contain the
claims to the composition of matter used in or made
by the process, or, if the process and composition of
matter are in different patents, the patents expire on
the same date;
 
(D)the biotechnological process falls within the
definition set forth in 35 U.S.C. 103(b); and
 
(E)a timely election be made to proceed under
the provisions of 35 U.S.C. 103(b).
 
An election to proceed under 35 U.S.C. 103(b)
shall be made by way of petition under 37 CFR 1.182.
The petition must establish that all the requirements
set forth in 35
U.S.C. 103(b) have been satisfied.
 
An election will normally be considered timely if it
is made no later than the earlier of either the payment
of the issue fee or the filing of an appeal brief in an
application which contains a composition of matter
claim which has not been rejected under 35 U.S.C.
102 or 103.
 
In an application where at least one composition of
matter claim has not been rejected under 35 U.S.C.
102 or 103, a 35 U.S.C. 103(b) election may be
made
by submitting the petition and an amendment
requesting entry of process claims which correspond
to the composition of matter claim.
 
For applications pending on or after November 1,
1995, in which the issue fee has been paid prior to
March 26, 1996, the timeliness requirement for an
election under 35
U.S.C. 103(b) will be considered
satisfied if the conditions of 37 CFR 1.312(b) are met.
However, if a patent is granted on an application entitled
to the benefit of 35
U.S.C. 103(b) without an
election having been made as a result of error without
deceptive intent, patentees may file a reissue application
to permit consideration of process claims which
qualify for 35 U.S.C. 103(b) treatment.
 
See MPEP § 2116.01 for a discussion of the Federal
Circuit's decisions in In re Ochiai, 71 F.3d 1565, 37
USPQ 1127 (Fed. Cir. 1995) and In re Brouwer,
77
F.3d 422, 37
USPQ2d 1663 (Fed. Cir. 1996)
which
address the general issue of whether an otherwise
conventional process could be patented if it were
limited to making or using a nonobvious product. In
view of the Federal Circuit’s decisions in Ochiai and
Brouwer, an applicant’s need to rely upon 35 U.S.C.
103(b) should be rare. See also 1184 O.G.
86
(Comm’r Pat. 1996). See 35 U.S.C. 282 for the
effect of a determination of nonobviousness under
35
U.S.C. 103(b)(1) on the presumption of validity.
 
706.03Rejections Not Based on Prior
Art
 
The primary object of the examination of an application
is to determine whether or not the claims are
patentable over the prior art. This consideration
should not be relegated to a secondary position while
undue emphasis is given to nonprior art or “technical”
rejections. Effort in examining should be concentrated
on truly essential matters, minimizing or eliminating
effort on technical rejections which are not really critical.
Where a major technical rejection is proper (e.g.,
lack of proper disclosure, undue breadth, utility, etc.)
such rejection should be stated with a full development
of the reasons rather than by a mere conclusion
coupled with some stereotyped expression.
 
Rejections based on nonstatutory subject matter
are
explained in MPEP § 706.03(a), § 2105, § 2106 -
§
2106.02, and § 2107 - § 2107.02. Rejections
based
on subject matter barred by the Atomic
Energy
Act are explained in MPEP § 706.03(b). Rejections
based on duplicate claims are addressed
in
MPEP §
706.03(k), and double patenting rejections
are addressed in MPEP § 804. See MPEP § 706.03(o)
for
rejections based on new matter. Foreign
filing
without a license is discussed in MPEP
§
706.03(s). Disclaimer, after interference or
public
use proceeding, res judicata, and reissue are
explained in MPEP §
706.03(u) to § 706.03(x). Rejections
based on 35
U.S.C. 112 are discussed in MPEP
§
2161 - §
2174. IF THE LANGUAGE IN THE
FORM PARAGRAPHS IS INCORPORATED IN
THE OFFICE ACTION TO STATE THE REJECTION,
THERE WILL BE LESS CHANCE OF A
MISUNDERSTANDING AS TO THE GROUNDS
OF REJECTION.
 
 
 
 
 
706.03(a)Rejections Under 35 U.S.C. 101[R-5]
 
I.SUBJECT MATTER ELIGIBILITY
 
Patents are not granted for all new and useful
inventions and discoveries. The subject matter of the
invention or discovery must come within the boundaries
set forth by 35
U.S.C. 101, which permits patents
to be granted only for “any new and useful
process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof.”
 
The term “process” as defined in 35 U.S.C. 100,
means process, art or method, and includes a new use
of a known process, machine, manufacture, composition
of matter, or material.
 
See MPEP § 2105 for patent eligibility of living
subject matter and MPEP § 2106 for guidelines
pertaining to subject matter eligibility in general.
 
Decisions have determined the limits of the statutory
classes. Examples of subject matter not patentable
under the statute follow:
 
A.Printed Matter
 
For example, a mere arrangement of printed matter,
though seemingly a “manufacture,” is rejected as not
being within the statutory classes. See In re Miller,
418 F.2d 1392, 164 USPQ 46 (CCPA 1969); Ex parte
Gwinn, 112 USPQ 439 (Bd. App. 1955); and In re
Jones, 373 F.2d 1007, 153 USPQ 77 (CCPA 1967).
 
B.Naturally Occurring Article
 
Similarly, a thing occurring in nature, which is substantially
unaltered, is not a “manufacture.” A shrimp
with the head and digestive tract removed is an example.
Ex parte Grayson, 51 USPQ 413 (Bd. App.
1941).
 
C.Scientific Principle
 
A scientific principle, divorced from any tangible
structure, can be rejected as not within the statutory
classes. O'Reilly v. Morse, 56 U.S. (15 How.)
62
(1854).
 
This subject matter is further limited by the Atomic
Energy Act explained in MPEP § 706.03(b).
 
II.UTILITY
 
A rejection on the ground of lack of utility
includes
the more specific grounds of inoperativeness,
involving perpetual motion. A rejection under 35
U.S.C. 101 for lack of utility should not be based on
grounds that the invention is frivolous, fraudulent or
against public policy. See Juicy Whip Inc. v. Orange
Bang Inc., 185 F.3d 1364, 1367-68, 51 USPQ2d 1700,
1702-03 (Fed. Cir. 1999) (“[Y]ears ago courts invalidated
patents on gambling devices on the ground that
they were immoral…, but that is no longer the
law…Congress never intended that the patent laws
should displace the police powers of the States, meaning
by that term those powers by which the health,
good order, peace and general welfare of the community
are promoted…we find no basis in section 101 to
hold that inventions can be ruled unpatentable for lack
of utility simply because they have the capacity to
fool some members of the public.”). The statutory
basis for this rejection is 35 U.S.C. 101. See MPEP §
2107 for guidelines governing rejections for lack of
utility. See MPEP § 2107.01 - § 2107.03 for legal precedent
governing the utility requirement.
 
Use Form Paragraphs 7.04 through 7.05.03 to reject
under 35 U.S.C. 101.
 
¶ 7.04 Statement of Statutory Basis, 35 U.S.C. 101
 
35 U.S.C. 101 reads as follows:
 
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a
patent therefor, subject to the conditions and requirements
of this title.
 
Examiner Note:
 
This paragraph must precede the first use of 35 U.S.C. 101 in
all first actions on the merits and final rejections.
 
¶ 7.05 Rejection, 35 U.S.C. 101, -Heading Only- (Utility,
Non-Statutory, Inoperative)
 
Claim [1] rejected under 35 U.S.C. 101 because
 
Examiner Note:
 
1.This form paragraph must be followed by any one of form
paragraphs 7.05.01- 7.05.03 or another appropriate reason.
 
2.Explain the rejection following the recitation of the statute
and the use of form paragraphs 7.05.01-7.05.03 or other reason.
 
3.See MPEP §§ 706.03(a) and 2105- 2107.03 for other situations.
 
 
4.This form paragraph must be preceded by form paragraph
7.04 in first actions and final rejections.
 
 
 
 
 
 
 
¶ 7.05.01 Rejection, 35 U.S.C. 101, Non-Statutory
 
the claimed invention is directed to non-statutory subject matter
because [1]
 
Examiner Note:
 
In bracket 1, explain why the claimed invention is not patent
eligible subject matter, e.g.,
 
(a)why the claimed invention does not fall within at least one of
the four categories of patent eligible subject matter recited in 35
U.S.C. 101 (process, machine, manufacture, or composition of
matter); or
 
(b) why the claimed invention is directed to a judicial exception
to 35 U.S.C. 101 (i.e., an abstract idea, natural phenomenon, or
law of nature) and is not directed to a practical application of such
judicial exception (e.g., because the claim does not require any
physical transformation and the invention as claimed does not
produce a useful, concrete, and tangible result); or
 
(c)why the claimed invention would impermissibly cover every
substantial practical application of, and thereby preempt all use of,
an abstract idea, natural phenomenon, or law of nature.
 
¶ 7.05.02 Rejection, 35 U.S.C. 101, Utility Lacking
 
the claimed invention lacks patentable utility. [1]
 
Examiner Note:
 
In bracket 1, provide explanation of lack of utility. See MPEP
§§ 706.03(a) and 2105 - 2107.03.
 
 
 
¶ 7.05.03 Rejection, 35 U.S.C. 101, Inoperative
 
the disclosed invention is inoperative and therefore lacks utility.
[1]
 
Examiner Note:
 
In bracket 1, explain why invention is inoperative.
 
¶ 7.05.04 Utility Rejections Under 35 U.S.C. 101 and 35
U.S.C. 112, First Paragraph
 
Claim [1] rejected under 35 U.S.C. 101 because the claimed
invention is not supported by either a [2] asserted utility or a well
established utility.
 
[3]
 
Claim [4] also rejected under 35 U.S.C. 112, first paragraph.
Specifically, since the claimed invention is not supported by either
a [5] asserted utility or a well established utility for the reasons set
forth above, one skilled in the art clearly would not know how to
use the claimed invention.
 
Examiner Note:
 
1.Where the specification would not enable one skilled in the
art to make the claimed invention, or where alternative reasons
support the enablement rejection, a separate rejection under 35
U.S.C. 112, first paragraph, enablement should be made using the
factors set forth in In re Wands, 858 F.2d 731, 8 USPQ2d 1400
(Fed. Cir. 1988) and an undue experimentation analysis. See
MPEP §§ 2164- 2164.08(c).
 
2.Use Format A, B, or C below as appropriate.
 
Format A:
 
(a) Insert the same claim numbers in brackets 1 and 4.
 
(b) Insert --specific and substantial-- in inserts 2 and 5.
 
(c) In bracket 3, insert the explanation as to why the claimed
invention is not supported by either a specific and substantial
asserted utility or a well established utility.
 
(d) Format A is to be used when there is no asserted utility and
when there is an asserted utility but that utility is not specific and
substantial.
 
Format B:
 
(a) Insert the same claim numbers in brackets 1 and 4.
 
(b) Insert --credible-- in inserts 2 and 5.
 
(c) In bracket 3, insert the explanation as to why the claimed
invention is not supported by either a credible asserted utility or a
well established utility.
 
Format C:
 
For claims that have multiple utilities, some of which are not specific
and substantial, some of which are not credible, but none of
which are specific, substantial and credible:
 
(a)Insert the same claim numbers in brackets 1 and 4.
 
(b)Insert --specific and substantial asserted utility, a credible--
in inserts 2 and 5.
 
(c)In bracket 3, insert the explanation as to why the claimed
invention is not supported by either a specific and substantial
asserted utility, a credible asserted utility or a well established utility.
Each utility should be addressed.
 
706.03(b)Barred by Atomic Energy Act[R-2]
 
A limitation on what can be patented is imposed by
the Atomic Energy Act of 1954. Section 151(a)
(42
U.S.C. 2181(a)) thereof reads in part as follows:
 
 
No patent shall hereafter be granted for any invention
or discovery which is useful solely in the utilization
of special nuclear material or atomic energy in an
atomic weapon.
 
The terms “atomic energy” and “special nuclear
material” are defined in Section 11 of the Act
(42
U.S.C. 2014).
 
Sections 151(c) and 151(d) (42 U.S.C. 2181(c) and
(d)) set up categories of pending applications relating
to atomic energy that must be brought to the attention
of the Department of Energy. Under 37 CFR
1.14(d), applications for patents which disclose or
which appear to disclose, or which purport to disclose,
inventions or discoveries relating to atomic
energy are reported to the Department of Energy and
the Department will be given access to such applications,
but such reporting does not constitute a determination
that the subject matter of each application so
 
 
 
 
 
reported is in fact useful or an invention or discovery
or that such application in fact discloses subject matter
in categories specified by the Atomic Energy Act.
 
All applications received in the U.S. Patent and
Trademark Office are screened by Technology Center
(TC) work group 3640 personnel, under 37 CFR
1.14(d), in order for the Director to fulfill his
or her responsibilities under section 151(d) (42 U.S.C.
2181(d)) of the Atomic Energy Act. Papers subsequently
added must be inspected promptly by the
examiner when received to determine whether the
application has been amended to relate to atomic
energy and those so related must be promptly forwarded
to Licensing and Review in TC work group
3640.
 
All rejections based upon sections 151(a)(42
U.S.C. 2181(a)), 152 (42 U.S.C. 2182), and
155
(42 U.S.C. 2185) of the Atomic Energy Act must
be made only by TC work group 3640 personnel.
 
706.03(c)Rejections Under 35 U.S.C. 112,
First Paragraph [R-2]
 
Rejections based on the first paragraph of
35
U.S.C. 112 are discussed in MPEP § 2161 -
§
2165.04. For a discussion of the utility requirements
of 35 U.S.C. 112, first paragraph, and 35 U.S.C. 101,
see MPEP §
2107 - § 2107.03. The appropriate form
paragraphs 7.30.01 and 7.31.01 through 7.33.01should be used in making rejections under 35 U.S.C.
112, first paragraph.
 
¶ 7.30.01 Statement of Statutory Basis, 35 U.S.C. 112, First
Paragraph
 
The following is a quotation of the first paragraph of 35 U.S.C.
112:
 
The specification shall contain a written description of the
invention, and of the manner and process of making and
using it, in such full, clear, concise, and exact terms as to
enable any person skilled in the art to which it pertains, or
with which it is most nearly connected, to make and use the
same and shall set forth the best mode contemplated by the
inventor of carrying out his invention.
 
Examiner Note:
 
1.The statute is no longer being re-cited in all Office actions. It
is only required in first actions on the merits and final rejections.
Where the statute is not being cited in an action on the merits, use
paragraph 7.103.
 
2.Form paragraphs 7.30.01 and 7.30.02 are to be used ONLY
ONCE in a given Office action.
 
 
 
¶ 7.31.01 Rejection, 35 U.S.C. 112, 1st Paragraph,
Description Requirement, Including New Matter Situations
 
Claim [1] rejected under 35 U.S.C. 112, first paragraph, as failing
to comply with the written description requirement. The
claim(s) contains subject matter which was not described in the
specification in such a way as to reasonably convey to one skilled
in the relevant art that the inventor(s), at the time the application
was filed, had possession of the claimed invention. [2]
 
Examiner Note:
 
1.This rejection must be preceded by form paragraph 7.30.01or 7.103.
 
2.In bracket 2, identify (by suitable reference to page and line
numbers and/or drawing figures) the subject matter not properly
described in the application as filed, and provide an explanation of
your position. The explanation should include any questions the
examiner asked which were not satisfactorily resolved and consequently
raise doubt as to possession of the claimed invention at
the time of filing.
 
 
 
Form paragraph 7.31.02 should be used when it is
the examiner’s position that nothing within the scope
of the claims is enabled. In such a rejection, the examiner
should explain all the reasons why nothing within
the scope of the claim is enabled. To make sure all relevant
issues are raised, this should include any issues
regarding the breadth of the claims relative to the
guidance in the disclosure.
 
 
 
¶ 7.31.02 Rejection, 35 U.S.C. 112, 1st Paragraph,
Enablement
 
Claim [1] rejected under 35 U.S.C. 112, first paragraph, as failing
to comply with the enablement requirement. The claim(s)
contains subject matter which was not described in the specification
in such a way as to enable one skilled in the art to which it
pertains, or with which it is most nearly connected, to make and/or
use the invention. [2]
 
Examiner Note:
 
1.This rejection must be preceded by form paragraph 7.30.01or 7.103.
 
2.If the problem is one of scope, form paragraph 7.31.03should be used.
 
3.In bracket 2, identify the claimed subject matter for which
the specification is not enabling. Also explain why the specification
is not enabling, applying the factors set forth in In re Wands,
858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1998) as
appropriate. See also MPEP § 2164.01(a) and § 2164.04. The
explanation should include any questions the examiner may have
asked which were not satisfactorily resolved and consequently
raise doubt as to enablement.
 
 
 
 
 
4.Where an essential component or step of the invention is not
recited in the claims, use form paragraph 7.33.01.
 
 
 
Form paragraph 7.31.03 should be used when it is
the examiner’s position that something within the
scope of the claims is enabled but the claims are not
limited to that scope.
 
¶ 7.31.03 Rejection, 35 U.S.C. 112, 1st Paragraph: Scope
of Enablement
 
Claim [1] rejected under 35 U.S.C. 112, first paragraph,
because the specification, while being enabling for [2], does not
reasonably provide enablement for [3]. The specification does not
enable any person skilled in the art to which it pertains, or with
which it is most nearly connected, to [4] the invention commensurate
in scope with these claims. [5]
 
Examiner Note:
 
1.This rejection must be preceded by form paragraph 7.30.01or 7.103.
 
2.This form paragraph is to be used when the scope of the
claims is not commensurate with the scope of the enabling disclosure.
 
 
3.In bracket 2, identify the claimed subject matter for which
the specification is enabling. This may be by reference to specific
portions of the specification.
 
4.In bracket 3, identify aspect(s) of the claim(s) for which the
specification is not enabling.
 
5.In bracket 4, fill in only the appropriate portion of the statute,
i.e., one of the following: --make--, --use--, or --make and use--.
 
6.In bracket 5, identify the claimed subject matter for which
the specification is not enabling. Also explain why the specification
is not enabling, applying the factors set forth in In re Wands,
858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1998) as
appropriate. See also MPEP § 2164.01(a) and § 2164.04. The
explanation should include any questions posed by the examiner
which were not satisfactorily resolved and consequently raise
doubt as to enablement.
 
¶ 7.31.04 Rejection, 35 U.S.C. 112, 1st Paragraph: Best
Mode Requirement
 
Claim [1] rejected under 35 U.S.C. 112, first paragraph,
because the best mode contemplated by the inventor has not been
disclosed. Evidence of concealment of the best mode is based
upon [2].
 
Examiner Note:
 
1.This rejection must be preceded by form paragraph 7.30.01or 7.103.
 
2.In bracket 2, insert the basis for holding that the best mode
has been concealed, e.g., the quality of applicant's disclosure is so
poor as to effectively result in concealment.
 
3.Use of this form paragraph should be rare. See MPEP §§
2165- 2165.04.
 
Form paragraph 7.33.01 should be used when it is
the examiner’s position that a feature considered critical
or essential by applicant to the practice of the
claimed invention is missing from the claim.
 
¶ 7.33.01 Rejection, 35 U.S.C. 112, 1st Paragraph,
Essential Subject Matter Missing From Claims
(Enablement)
 
Claim [1] rejected under 35 U.S.C. 112, first paragraph, as
based on a disclosure which is not enabling. [2] critical or essential
to the practice of the invention, but not included in the
claim(s) is not enabled by the disclosure. See In re Mayhew, 527
F.2d 1229, 188 USPQ 356 (CCPA 1976). [3]
 
Examiner Note:
 
1.This rejection must be preceded by form paragraph 7.30.01or 7.103.
 
2.In bracket 2, recite the subject matter omitted from the
claims.
 
3.In bracket 3, give the rationale for considering the omitted
subject matter critical or essential.
 
4.The examiner shall cite the statement, argument, date, drawing,
or other evidence which demonstrates that a particular feature
was considered essential by the applicant, is not reflected in the
claims which are rejected.
 
706.03(d)Rejections Under 35 U.S.C. 112,
Second Paragraph [R-3]
 
Rejections under 35 U.S.C. 112, second paragraph,
are discussed in MPEP § 2171 - § 2174. Form paragraphs
7.30.02 and 7.34 through 7.35.01 should be
used to reject under 35 U.S.C. 112, second paragraph.
 
¶ 7.30.02 Statement of Statutory Basis, 35 U.S.C. 112,
Second Paragraph
 
The following is a quotation of the second paragraph of 35
U.S.C. 112:
 
The specification shall conclude with one or more claims
particularly pointing out and distinctly claiming the subject
matter which the applicant regards as his invention.
 
Examiner Note:
 
1.The statute is no longer being re-cited in all Office actions. It
is only required in first actions on the merits and final rejections.
Where the statute is not being cited in an action on the merits, use
paragraph 7.103.
 
2.Paragraphs 7.30.01 and 7.30.02 are to be used ONLY ONCE
in a given Office action.
 
¶ 7.34 Rejection, 35 U.S.C. 112, 2nd Paragraph, Failure
To Claim Applicant’s Invention
 
Claim [1] rejected under 35 U.S.C. 112, second paragraph, as
failing to set forth the subject matter which applicant(s) regard as
their invention. Evidence that claim [2] fail(s) to correspond in
 
 
 
 
 
scope with that which applicant(s) regard as the invention can be
found in the reply filed [3]. In that paper, applicant has stated [4],
and this statement indicates that the invention is different from
what is defined in the claim(s) because [5].
 
Examiner Note:
 
1.This rejection must be preceded by form paragraph 7.30.02or 7.103.
 
2.This paragraph is to be used only where applicant has stated,
somewhere other than in the application, as filed, that the invention
is something different from what is defined in the claim(s).
 
3.In bracket 3, identify the submission by applicant (which is
not the application, as filed, but may be in the remarks by applicant,
in the brief, in an affidavit, etc.) by the date the paper was
filed in the USPTO.
 
4.In bracket 4, set forth what applicant has stated in the submission
to indicate a different invention.
 
5.In bracket 5, explain how the statement indicates an invention
other than what is being claimed.
 
 
 
¶ 7.34.01 Rejection, 35 U.S.C. 112, 2nd Paragraph,
Failure To Particularly Point out and Distinctly Claim
(Indefinite)
 
Claim [1] rejected under 35 U.S.C. 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly
claim the subject matter which applicant regards as the invention.
 
Examiner Note:
 
1.This rejection must be preceded by form paragraph 7.30.02or 7.103.
 
2.This form paragraph should be followed by one or more of
the following form paragraphs 7.34.02 - 7.34.11, as applicable. If
none of these form paragraphs are appropriate, a full explanation
of the deficiency of the claims should be supplied. Whenever possible,
identify the particular term(s) or limitation(s) which render
the claim(s) indefinite and state why such term or limitation renders
the claim indefinite. If the scope of the claimed subject matter
can be determined by one having ordinary skill in the art, a
rejection using this form paragraph would not be appropriate. See
MPEP §§ 2171 - 2174 for guidance. See also form paragraph
7.34.15 for pro se applicants.
 
 
 
¶ 7.34.02 Terminology Used Inconsistent with Accepted
Meaning
 
Where applicant acts as his or her own lexicographer to specifically
define a term of a claim contrary to its ordinary meaning,
the written description must clearly redefine the claim term and
set forth the uncommon definition so as to put one reasonably
skilled in the art on notice that the applicant intended to so redefine
that claim term. Process Control Corp. v. HydReclaim Corp.,
190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999).
The term “[1]” in claim [2] is used by the claim to mean “[3]”,
while the accepted meaning is “[4].” The term is indefinite
because the specification does not clearly redefine the term.
 
Examiner Note:
 
1.In bracket 3, point out the meaning that is assigned to the
term by applicant’s claims, taking into account the entire disclosure.
 
 
2.In bracket 4, point out the accepted meaning of the term.
Support for the examiner’s stated accepted meaning should be
provided through the citation of an appropriate reference source,
e.g., textbook or dictionary. See MPEP § 2173.05(a).
 
3.This paragraph must be preceded by form paragraph 7.34.01.
 
4.This paragraph should only be used where the specification
does not clearly redefine the claim term at issue.
 
¶ 7.34.03 Relative Term - Term of Degree Rendering Claim
Indefinite
 
The term “[1]” in claim [2] is a relative term which renders the
claim indefinite. The term “[1]” is not defined by the claim, the
specification does not provide a standard for ascertaining the requisite
degree, and one of ordinary skill in the art would not be reasonably
apprised of the scope of the invention. [3]
 
Examiner Note:
 
1.In bracket 3, explain which parameter, quantity, or other limitation
in the claim has been rendered indefinite by the use of the
term appearing in bracket 1.
 
2.This form paragraph must be preceded by form paragraph
7.34.01.
 
 
 
¶ 7.34.04 Broader Range/Limitation And Narrow Range/
Limitation in Same Claim
 
A broad range or limitation together with a narrow range or
limitation that falls within the broad range or limitation (in the
same claim) is considered indefinite, since the resulting claim
does not clearly set forth the metes and bounds of the patent protection
desired. See MPEP § 2173.05(c). Note the explanation
given by the Board of Patent Appeals and Interferences in Ex
parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989),
as to where broad language is followed by “such as” and then narrow
language. The Board stated that this can render a claim indefinite
by raising a question or doubt as to whether the feature
introduced by such language is (a) merely exemplary of the
remainder of the claim, and therefore not required, or (b) a
required feature of the claims. Note also, for example, the decisions
of Ex parte Steigewald, 131 USPQ 74 (Bd. App. 1961); Ex
parte Hall, 83 USPQ 38 (Bd.App. 1948); and Ex parte Hasche, 86
USPQ 481 (Bd. App. 1949). In the present instance, claim [1]
recites the broad recitation [2], and the claim also recites [3]
which is the narrower statement of the range/limitation.
 
Examiner Note:
 
1.In bracket 2, insert the broader range/limitation and where it
appears in the claim; in bracket 3, insert the narrow range/limitation
and where it appears. This form paragraph may be modified
to fit other instances of indefiniteness in the claims.
 
2.This form paragraph must be preceded by form paragraph
7.34.01.
 
 
 
 
 
 
 
¶ 7.34.05 Lack of Antecedent Basis in the Claims
 
Claim [1] recites the limitation [2] in [3]. There is insufficient
antecedent basis for this limitation in the claim.
 
Examiner Note:
 
1.In bracket 2, insert the limitation which lacks antecedent
basis, for example --said lever-- or --the lever--.
 
2.In bracket 3, identify where in the claim(s) the limitation
appears, for example, --line 3--, --the 3rd paragraph of the claim--,
--the last 2 lines of the claim--, etc.
 
3.This form paragraph should ONLY be used in aggravated situations
where the lack of antecedent basis makes the scope of the
claim indeterminate. It must be preceded by form paragraph
7.34.01.
 
¶ 7.34.06 Use Claims
 
Claim [1] provides for the use of [2], but, since the claim does
not set forth any steps involved in the method/process, it is
unclear what method/process applicant is intending to encompass.
A claim is indefinite where it merely recites a use without any
active, positive steps delimiting how this use is actually practiced.
Claim [3] is rejected under 35 U.S.C. 101 because the claimed
recitation of a use, without setting forth any steps involved in the
process, results in an improper definition of a process, i.e., results
in a claim which is not a proper process claim under 35 U.S.C.
101. See for example Ex parte Dunki, 153 USPQ 678 (Bd. App.
1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131,
149 USPQ 475 (D.D.C. 1966).
 
Examiner Note:
 
1.In bracket 2, insert what is being used. For example, insert --
the monoclonal antibodies of claim 4--, where the claim recites “a
method for using monoclonal antibodies of claim 4 to purify interferon.”
 
 
2.See MPEP § 2173.05(q).
 
3.This form paragraph must be preceded by form paragraph
7.34.01.
 
¶ 7.34.07 Claims Are a Literal Translation
 
The claims are generally narrative and indefinite, failing to
conform with current U.S. practice. They appear to be a literal
translation into English from a foreign document and are replete
with grammatical and idiomatic errors.
 
Examiner Note:
 
This form paragraph must be preceded by form paragraph
7.34.01.
 
¶ 7.34.08 Indefinite Claim Language: “For Example”
 
Regarding claim [1], the phrase “for example” renders the
claim indefinite because it is unclear whether the limitation(s) following
the phrase are part of the claimed invention. See MPEP §
2173.05(d).
 
Examiner Note:
 
This form paragraph must be preceded by form paragraph
7.34.01.
 
¶ 7.34.09 Indefinite Claim Language: “Or The Like”
 
Regarding claim [1], the phrase “or the like” renders the
claim(s) indefinite because the claim(s) include(s) elements not
actually disclosed (those encompassed by “or the like”), thereby
rendering the scope of the claim(s) unascertainable. See MPEP §
2173.05(d).
 
Examiner Note:
 
This form paragraph must be preceded by form paragraph
7.34.01.
 
¶ 7.34.10 Indefinite Claim Language: “Such As”
 
Regarding claim [1], the phrase “such as” renders the claim
indefinite because it is unclear whether the limitations following
the phrase are part of the claimed invention. See MPEP §
2173.05(d).
 
Examiner Note:
 
This form paragraph must be preceded by form paragraph
7.34.01.
 
¶ 7.34.11 Modifier of “Means” Lacks Function
 
Regarding claim [1], the word “means” is preceded by the
word(s) “[2]” in an attempt to use a “means” clause to recite a
claim element as a means for performing a specified function.
However, since no function is specified by the word(s) preceding
“means,” it is impossible to determine the equivalents of the element,
as required by 35 U.S.C. 112, sixth paragraph. See Ex parte
Klumb, 159 USPQ 694 (Bd. App. 1967).
 
Examiner Note:
 
1.It is necessary for the words which precede “means” to convey
a function to be performed. For example, the phrase “latch
means” is definite because the word “latch” conveys the function
“latching.” In general, if the phrase can be restated as “means for
________,” and it still makes sense, it is definite. In the above
example, “latch means” can be restated as “means for latching.”
This is clearly definite. However, if “conduit means” is restated
as “means for conduiting,” the phrase makes no sense because
the word “conduit” has no functional connotation, and the phrase
is indefinite.
 
2.This form paragraph must be preceded by form paragraph
7.34.01.
 
¶ 7.34.12 Essential Steps Omitted
 
Claim [1] rejected under 35 U.S.C. 112, second paragraph, as
being incomplete for omitting essential steps, such omission
amounting to a gap between the steps. See MPEP § 2172.01.
The omitted steps are: [2]
 
Examiner Note:
 
1.This rejection must be preceded by form paragraph 7.30.02or 7.103.
 
2.In bracket 2, recite the steps omitted from the claims.
 
3.Give the rationale for considering the omitted steps critical or
essential.
 
 
 
 
 
¶ 7.34.13 Essential Elements Omitted
 
Claim [1] rejected under 35 U.S.C. 112, second paragraph, as
being incomplete for omitting essential elements, such omission
amounting to a gap between the elements. See MPEP § 2172.01.
The omitted elements are: [2]
 
Examiner Note:
 
1.This rejection must be preceded by form paragraph 7.30.02or 7.103.
 
2.In bracket 2, recite the elements omitted from the claims.
 
3.Give the rationale for considering the omitted elements critical
or essential.
 
¶ 7.34.14 Essential Cooperative Relationships Omitted
 
Claim [1] rejected under 35 U.S.C. 112, second paragraph, as
being incomplete for omitting essential structural cooperative
relationships of elements, such omission amounting to a gap
between the necessary structural connections. See MPEP §
2172.01. The omitted structural cooperative relationships are: [2]
 
Examiner Note:
 
1.This rejection must be preceded by form paragraph 7.30.02or 7.103.
 
2.In bracket 2, recite the structural cooperative relationships of
elements omitted from the claims.
 
3.Give the rationale for considering the omitted structural
cooperative relationships of elements being critical or essential.
 
¶ 7.34.15 Rejection Under 35 U.S.C. 112, Pro Se
 
Claim [1] rejected as failing to define the invention in the manner
required by 35 U.S.C.
112, second paragraph.
 
The claim(s) are narrative in form and replete with indefinite
and functional or operational language. The structure which goes
to make up the device must be clearly and positively specified.
The structure must be organized and correlated in such a manner
as to present a complete operative device. The claim(s) must be in
one sentence form only. Note the format of the claims in the
patent(s) cited.
 
¶ 7.35 Rejection, 35 U.S.C. 112, 2nd Paragraph, Failure
To Particularly Point Out And Distinctly Claim - Omnibus
Claim
 
Claim [1] rejected under 35 U.S.C. 112, second paragraph, as
being indefinite in that it fails to point out what is included or
excluded by the claim language. This claim is an omnibus type
claim.
 
Examiner Note:
 
1.This rejection must be preceded by form paragraph 7.30.02or 7.103.
 
2.Use this paragraph to reject an “omnibus” type claim. No
further explanation is necessary.
 
3.See MPEP § 1302.04(b) for cancellation of such a claim by
examiner's amendment upon allowance.
 
4.An example of an omnibus claim is: “A device substantially
as shown and described.”
 
¶ 7.35.01 Trademark or Trade Name as a Limitation in the
Claim
 
Claim [1] contains the trademark/trade name [2]. Where a
trademark or trade name is used in a claim as a limitation to identify
or describe a particular material or product, the claim does not
comply with the requirements of 35 U.S.C. 112, second paragraph.
See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982).
The claim scope is uncertain since the trademark or trade name
cannot be used properly to identify any particular material or
product. A trademark or trade name is used to identify a source of
goods, and not the goods themselves. Thus, a trademark or trade
name does not identify or describe the goods associated with the
trademark or trade name. In the present case, the trademark/trade
name is used to identify/describe [3] and, accordingly, the identification/
description is indefinite.
 
Examiner Note:
 
1.In bracket 2, insert the trademark/trade name and where it is
used in the claim.
 
2.In bracket 3, specify the material or product which is identified
or described in the claim by the trademark/trade name.
 
706.03(k)Duplicate Claims
 
Inasmuch as a patent is supposed to be limited to
only one invention or, at most, several closely related
indivisible inventions, limiting an application to a single
claim, or a single claim to each of the related
inventions might appear to be logical as well as convenient.
However, court decisions have confirmed
applicant’s right to restate (i.e., by plural claiming) the
invention in a reasonable number of ways. Indeed, a
mere difference in scope between claims has been
held to be enough.
 
Nevertheless, when two claims in an application
are duplicates, or else are so close in content that they
both cover the same thing, despite a slight difference
in wording, it is proper after allowing one claim to
object to the other claim under 37 CFR 1.75 as being a
substantial duplicate of the allowed claim.
 
Form paragraphs 7.05.05 and 7.05.06 may be used
where duplicate claims are present in an application.
 
¶ 7.05.05 Duplicate Claims, Warning
 
Applicant is advised that should claim [1] be found allowable,
claim [2] will be objected to under 37 CFR 1.75 as being a substantial
duplicate thereof. When two claims in an application are
duplicates or else are so close in content that they both cover the
same thing, despite a slight difference in wording, it is proper after
allowing one claim to object to the other
as being a substantial
duplicate of the allowed claim. See MPEP §
706.03(k).
 
 
 
 
 
Examiner Note:
 
1.Use this form paragraph whenever two claims are found to
be substantial duplicates, but they are not allowable. This will
give the applicant an opportunity to correct the problem and avoid
a later objection.
 
2.If the claims are allowable, use form paragraph 7.05.06.
 
¶ 7.05.06 Duplicate Claims, Objection
 
Claim [1] objected under 37 CFR 1.75 as being a substantial
duplicate of claim [2]. When two claims in an application are
duplicates or else are so close in content that they both cover the
same thing, despite a slight difference in wording, it is proper after
allowing one claim to object to the other as being a substantial
duplicate of the allowed claim. See MPEP §
706.03(k).
 
Examiner Note:
 
If the duplicate claims are not allowable, use form paragraph
7.05.05.
 
See MPEP § 804 for double patenting rejections of
inventions not patentable over each other.
 
706.03(m)Nonelected Inventions
 
See MPEP § 821 to § 821.03 for treatment of
claims held to be drawn to nonelected inventions.
 
706.03(o)New Matter [R-3]
 
35 U.S.C. 132. Notice of rejection; reexamination.
 
(a)Whenever, on examination, any claim for a patent is
rejected, or any objection or requirement made, the Director shall
notify the applicant thereof, stating the reasons for such rejection,
or objection or requirement, together with such information and
references as may be useful in judging of the propriety of continuing
the prosecution of his application; and if after receiving such
notice, the applicant persists in his claim for a patent, with or
without amendment, the application shall be reexamined. No
amendment shall introduce new matter into the disclosure of the
invention.
 
 
 
In amended cases, subject matter not disclosed in
the original application is sometimes added and a
claim directed thereto. Such a claim is rejected on the
ground that it recites elements without support in the
original disclosure under 35 U.S.C. 112, first paragraph,
Waldemar Link, GmbH & Co. v. Osteonics
Corp. 32 F.3d 556, 559, 31
USPQ2d 1855, 1857
(Fed. Cir. 1994); In re Rasmussen, 650 F.2d 1212, 211
USPQ 323 (CCPA 1981). See MPEP § 2163.06 -
§
2163.07(b) for a discussion of the relationship of
new matter to 35 U.S.C. 112, first paragraph. New
matter includes not only the addition of wholly unsupported
subject matter, but may also include adding
specific percentages or compounds after a broader
original disclosure, or even the omission of a step
from a method. See MPEP § 608.04 to § 608.04(c).
See In re Wertheim, 541 F.2d 257, 191 USPQ 90
(CCPA 1976) and MPEP §
2163.05 for guidance in
determining whether the addition of specific percentages
or compounds after a broader original disclosure
constitutes new matter.
 
In the examination of an application following
amendment thereof, the examiner must be on the alert
to detect new matter. 35 U.S.C. 132 (a) should be
employed as a basis for objection to amendments to
the abstract, specification, or drawings attempting to
add new disclosure to that originally disclosed on filing.
 
 
If subject matter capable of illustration is originally
claimed and it is not shown in the drawing, the claim
is not rejected but applicant is required to add it to the
drawing. See MPEP § 608.01(l).
 
If new matter is added to the specification, it should
be objected to by using Form Paragraph 7.28.
 
 
 
¶ 7.28 Objection to New Matter Added to Specification
 
The amendment filed [1] is objected to under 35 U.S.C. 132(a)
because it introduces new matter into the disclosure. 35 U.S.C.
132(a) states that no amendment shall introduce new matter into
the disclosure of the invention. The added material which is not
supported by the original disclosure is as follows: [2].
 
Applicant is required to cancel the new matter in the reply to
this Office action.
 
Examiner Note:
 
1.This form paragraph is not to be used in reissue applications;
use form paragraph 14.22.01 instead.
 
2.In bracket 2, identify the new matter by page and the line
numbers and/or drawing figures and provide an appropriate explanation
of your position. This explanation should address any statement
by applicant to support the position that the subject matter is
described in the specification as filed. It should further include
any unresolved questions which raise a doubt as to the possession
of the claimed invention at the time of filing.
 
3.If new matter is added to the claims, or affects the claims, a
rejection under 35 U.S.C. 112, first paragraph, using form paragraph
7.31.01 should also be made. If new matter is added only to
a claim, an objection using this paragraph should not be made, but
the claim should be rejected using form paragraph 7.31.01. As to
any other appropriate prior art or 35 U.S.C. 112 rejection, the new
matter must be considered as part of the claimed subject matter
and cannot be ignored.
 
 
 
 
 
 
 
706.03(s)Foreign Filing Without License
 
35 U.S.C. 182. Abandonment of invention for unauthorized
disclosure.
 
The invention disclosed in an application for patent subject to
an order made pursuant to section 181 of this title may be held
abandoned upon its being established by the Commissioner
of
Patents that in violation of said order the invention has been
published or disclosed or that an application for a patent therefor
has been filed in a foreign country by the inventor, his successors,
assigns, or legal representatives, or anyone in privity with him or
them, without the consent of the Commissioner of Patents. The
abandonment shall be held to have occurred as of the time of violation.
The consent of the Commissioner of Patents shall not be
given without the concurrence of the heads of the departments and
the chief officers of the agencies who caused the order to be
issued. A holding of abandonment shall constitute forfeiture by
the applicant, his successors, assigns, or legal representatives, or
anyone in privity with him or them, of all claims against the
United States based upon such invention.
 
35 U.S.C. 184. Filing of application in foreign country.
 
Except when authorized by a license obtained from the Commissioner
of Patents a person shall not file or cause or authorize to
be filed in any foreign country prior to six months after filing in
the United States an application for patent or for the registration of
a utility model, industrial design, or model in respect of an invention
made in this country. A license shall not be granted with
respect to an invention subject to an order issued by the Commissioner
of Patents pursuant to section 181 of this title without the
concurrence of the head of the departments and the chief officers
of the agencies who caused the order to be issued. The license
may be granted retroactively where an application has been filed
abroad through error and without deceptive intent and the application
does not disclose an invention within the scope of section 181of this title.
 
The term “application” when used in this chapter includes
applications and any modifications, amendments, or supplements
thereto, or divisions thereof.
 
The scope of a license shall permit subsequent modifications,
amendments, and supplements containing additional subject matter
if the application upon which the request for the license is
based is not, or was not, required to be made available for inspection
under section 181 of this title and if such modifications,
amendments, and supplements do not change the general nature of
the invention in a manner which would require such application to
be made available for inspection under such section 181. In any
case in which a license is not, or was not, required in order to file
an application in any foreign country, such subsequent modifications,
amendments, and supplements may be made, without a
license, to the application filed in the foreign country if the United
States application was not required to be made available for
inspection under section 181 and if such modifications, amendments,
and supplements do not, or did not, change the general
nature of the invention in a manner which would require the
United States application to have been made available for inspection
under such section 181.
 
35 U.S.C. 185. Patent barred for filing without license.
 
Notwithstanding any other provisions of law any person, and
his successors, assigns, or legal representatives, shall not receive a
United States patent for an invention if that person, or his successors,
assigns, or legal representatives shall, without procuring the
license prescribed in section 184 of this title, have made, or consented
to or assisted another’s making, application in a foreign
country for a patent or for the registration of a utility model,
industrial design, or model in respect of the invention. A United
States patent issued to such person, his successors, assigns, or
legal representatives shall be invalid, unless the failure to procure
such license was through error and without deceptive intent, and
the patent does not disclose subject matter within the scope of section
181 of this title.
 
If, upon examining an application, the examiner
learns of the existence of a corresponding foreign
application which appears to have been filed before
the United States application had been on file for 6
months, and if the invention apparently was made in
this country, he or she shall refer the application to
Licensing and Review Section of Technology Center
(TC) working group 3640, calling attention to the foreign
application. Pending investigation of the possible
violation, the application may be returned to the TC
for prosecution on the merits. When it is otherwise in
condition for allowance, the application will be again
submitted to Licensing and Review Section of TC
work group 3640 unless the latter has already reported
that the foreign filing involves no bar to the United
States application.
 
If it should be necessary to take action under
35
U.S.C. 185, Licensing and Review Section of TC
work group 3640 will request transfer of the application
to it.
 
706.03(u)Disclaimer [R-3]
 
Claims may be rejected on the ground that applicant
has disclaimed the subject matter involved. Such
disclaimer may arise, for example, from the applicant’s
failure to:
 
(A)make claims suggested for interference with
another application under 37 CFR 41.202(c) (See
MPEP Chapter 2300),
 
(B)copy a claim from a patent when suggested
by the examiner (MPEP Chapter 2300), or
 
(C)respond or appeal, within the time limit fixed,
to the examiner’s rejection of claims copied from a
patent (see MPEP Chapter 2300).
 
 
 
 
 
The rejection on disclaimer applies to all claims not
patentably distinct from the disclaimed subject matter
as well as to the claims directly involved.
 
Rejections based on disclaimer should be made by
using one of Form Paragraphs 7.48 and 7.49.
 
 
 
¶ 7.48 Failure To Present Claims for Interference
 
Claim [1] rejected under 35 U.S.C. [2] based upon claim [3] of
Patent No. [4].
 
Failure to present claims and/or take necessary steps for interference
purposes after notification that interfering subject matter
is claimed constitutes a disclaimer of the subject matter. This
amounts to a concession that, as a matter of law, the patentee is the
first inventor in this country. See In re Oguie, 517 F.2d 1382, 186
USPQ 227 (CCPA 1975).
 
Examiner Note:
 
1.This form paragraph should be used only after applicant has
been notified that interference proceedings must be instituted
before the claims can be allowed and applicant has refused to
copy the claims.
 
2.In bracket 2, insert --102(g)-- or --102(g)/103(a)--.
 
3.In bracket 4, insert the patent number, and --in view of
_____-- if another reference is also relied upon. When the rejection
is under 35 U.S.C. 103(a), the examiner’s basis for a finding
of obviousness should be included. Note that interferences may
include obvious variants, see MPEP Chapter 2300.
 
¶ 7.49 Rejection, Disclaimer, Failure To Appeal
 
An adverse judgment against claim [1] has been entered by the
Board. Claim [2] stand(s) finally disposed of for failure to reply
to or appeal from the examiner’s rejection of such claim(s) presented
for interference within the time for appeal or civil action
specified in 37 CFR 1.304. Adverse judgment against a claim is a
final action of the Office requiring no further action by the Office
to dispose of the claim permanently. See 37 CFR 41.127(a)(2).
 
 
 
706.03(v)After Interference or PublicUse Proceeding
 
For rejections following an interference, see MPEP
Chapter 2300.
 
The outcome of public use proceedings may also be
the basis of a rejection. See 37 CFR 1.292 and In re
Kaslow, 707 F.2d 1366, 217 USPQ 1089 (Fed. Cir.
1983).
 
Upon termination of a public use proceeding
including a case also involved in an interference, in
order for a prompt resumption of the interference proceedings,
a notice should be sent to the Board of
Patent Appeals and Interferences notifying them of
the disposition of the public use proceeding.
 
706.03(w)Res Judicata
 
Res judicata may constitute a proper ground for
rejection. However, as noted below, the Court of Customs
and Patent Appeals has materially restricted the
use of res judicata rejections. It should be applied
only when the earlier decision was a decision of the
Board of Appeals or any one of the reviewing courts
and when there is no opportunity for further court
review of the earlier decision.
 
The timely filing of a second application copending
with an earlier application does not preclude the use
of res judicata as a ground of rejection for the second
application claims.
 
When making a rejection on res judicata, action
should ordinarily be made also on the basis of prior
art, especially in continuing applications. In most situations
the same prior art which was relied upon in the
earlier decision would again be applicable.
 
In the following cases a rejection of a claim on the
ground of res judicata was sustained where it was
based on a prior adjudication, against the inventor on
the same claim, a patentably nondistinct claim, or a
claim involving the same issue.
 
In re Freeman, 30 F.3d 1459, 31 USPQ 2d 1444
(Fed. Cir. 1994).
 
Edgerton v. Kingland, 168 F. 2d 121, 75 USPQ 307
(D.C. Cir. 1947).
 
In re Szwarc, 319 F.2d 277, 138 USPQ 208 (CCPA
1963).
 
In re Katz, 467 F.2d 939, 167 USPQ 487 (CCPA
1970) (prior decision by District Court).
 
In the following cases for various reasons, res judicata
rejections were reversed.
 
In re Fried, 312 F.2d 930, 136 USPQ 429 (CCPA
1963) (differences in claims).
 
In re Szwarc, 319 F.2d 277, 138 USPQ 208 (CCPA
1963) (differences in claim).
 
In re Hellbaum, 371 F.2d 1022, 152 USPQ 571
(CCPA 1967) (differences in claims).
 
In re Herr, 377 F.2d 610, 153 USPQ 548 (CCPA
1967) (same claims, new evidence, prior decision by
CCPA).
 
In re Kaghan, 387 F.2d 398, 156 USPQ 130 (CCPA
1967) (prior decision by Board of Appeals, final
rejection on prior art withdrawn by examiner “to simplify
the issue,” differences in claims; holding of
waiver based on language in MPEP at the time).
 
 
 
 
 
In re Craig, 411 F.2d 1333, 162 USPQ 157 (CCPA
1969) (Board of Appeals held second set of claims
patentable over prior art).
 
In re Fisher, 427 F.2d 833, 166 USPQ 18 (CCPA
1970) (difference in claims).
 
In re Russell, 439 F.2d 1228, 169 USPQ 426
(CCPA 1971) (new evidence, rejection on prior art
reversed by court).
 
In re Ackermann, 444 F.2d 1172, 170 USPQ 340
(CCPA 1971) (prior decision by Board of Appeals,
new evidence, rejection on prior art reversed by
court).
 
Plastic Contact Lens Co. v. Gottschalk, 484 F.2d
837, 179 USPQ 262 (D.C. Cir. 1973) (follows In re
Kaghan).
 
706.03(x)Reissue [R-3]
 
The examination of reissue applications is covered
in MPEP Chapter 1400.
 
35 U.S.C. 251 forbids the granting of a reissue
“enlarging the scope of the claims of the original
patent” unless the reissue is applied for within 2 years
from the grant of the original patent. This is an absolute
bar and cannot be excused. This prohibition has
been interpreted to apply to any claim which is
broader in any respect than the claims of the original
patent. Such claims may be rejected as being barred
by 35 U.S.C. 251. However, when the reissue is
applied for within 2 years or properly claims the
benefit of a broadening reissue application filed
within 2 years of the patent grant, the examiner does
not go into the question of undue delay.
 
The same section permits the filing of a reissue
application by the assignee of the entire interest only
in cases where it does not “enlarge the scope of the
claims of the original patent.” Such claims which do
enlarge the scope may also be rejected as barred by
the statute. In In re Bennett, 766 F.2d 524, 226 USPQ
413 (Fed. Cir. 1985), however, the court permitted the
erroneous filing by the assignee in such a case to be
corrected.
 
A defective reissue oath affords a ground for rejecting
all the claims in the reissue application. See
MPEP § 1444.
 
Note that a reissue application is “special” and
remains so even if applicant does not make a prompt
reply.
 
706.04Rejection of Previously AllowedClaims [R-1]
 
A claim noted as allowable shall thereafter be
rejected only after the proposed rejection has been
submitted to the primary examiner for consideration
of all the facts and approval of the proposed action.
 
Great care should be exercised in authorizing such
a rejection. See Ex parte Grier, 1923 C.D. 27,
309
O.G. 223 (Comm’r Pat. 1923); Ex parte Hay,
1909 C.D. 18, 139 O.G. 197 (Comm’r Pat. 1909).
 
PREVIOUS ACTION BY DIFFERENT EXAMINER
 
 
Full faith and credit should be given to the search
and action of a previous examiner unless there is a
clear error in the previous action or knowledge of
other prior art. In general, an examiner should not
take an entirely new approach or attempt to reorient
the point of view of a previous examiner, or make a
new search in the mere hope of finding something.
Amgen, Inc. v. Hoechst Marion Roussel, Inc., 126 F.
Supp. 2d 69, 139, 57 USPQ2d 1449, 1499-50 (D.
Mass. 2001).
 
Because it is unusual to reject a previously allowed
claim, the examiner should point out in his or her
office action that the claim now being rejected was
previously allowed by using Form Paragraph 7.50.
 
¶ 7.50 Claims Previously Allowed, Now Rejected, New Art
 
The indicated allowability of claim [1] is withdrawn in view of
the newly discovered reference(s) to [2]. Rejection(s) based on
the newly cited reference(s) follow.
 
Examiner Note:
 
1.In bracket 2, insert the name(s) of the newly discovered reference.
 
 
2.Any action including this form paragraph requires the signature
of a Primary Examiner. MPEP § 1004.
 
706.05Rejection After Allowance ofApplication
 
See MPEP § 1308.01 for a rejection based on a reference
after allowance.
 
706.06Rejection of Claims Copied
From Patent [R-3]
 
See MPEP Chapter 2300.
 
 
 
 
 
706.07Final Rejection [R-3]
 
37 CFR 1.113. Final rejection or action.
 
 
 
(a) On the second or any subsequent examination or consideration
by the examiner the rejection or other action may be made
final, whereupon applicant’s, or for ex parte reexaminations filed
under § 1.510, patent owner’s reply is limited to appeal in the case
of rejection of any claim (§ 41.31 of this title), or to amendment as
specified in § 1.114 or § 1.116. Petition may be taken to the Director
in the case of objections or requirements not involved in the
rejection of any claim (§ 1.181). Reply to a final rejection or
action must comply with § 1.114 or paragraph (c) of this section.
For final actions in an inter partes reexamination filed under §
1.913, see § 1.953.
 
(b)In making such final rejection, the examiner shall repeat
or state all grounds of rejection then considered applicable to the
claims in the application, clearly stating the reasons in support
thereof.
 
(c)Reply to a final rejection or action must include cancellation
of, or appeal from the rejection of, each rejected claim. If any
claim stands allowed, the reply to a final rejection or action must
comply with any requirements or objections as to form.
 
Before final rejection is in order a clear issue
should be developed between the examiner and applicant.
To bring the prosecution to as speedy conclusion
as possible and at the same time to deal justly by both
the applicant and the public, the invention as disclosed
and claimed should be thoroughly searched in
the first action and the references fully applied; and in
reply to this action the applicant should amend with a
view to avoiding all the grounds of rejection and
objection. Switching from one subject matter to
another in the claims presented by applicant in successive
amendments, or from one set of references to
another by the examiner in rejecting in successive
actions claims of substantially the same subject matter,
will alike tend to defeat attaining the goal of
reaching a clearly defined issue for an early termination,
i.e., either an allowance of the application or a
final rejection.
 
While the rules no longer give to an applicant the
right to “amend as often as the examiner presents new
references or reasons for rejection,” present practice
does not sanction hasty and ill-considered final rejections.
The applicant who is seeking to define his or
her invention in claims that will give him or her the
patent protection to which he or she is justly entitled
should receive the cooperation of the examiner to that
end, and not be prematurely cut off in the prosecution
of his or her application. But the applicant who dallies
in the prosecution of his or her application, resorting
to technical or other obvious subterfuges in order to
keep the application pending before the primary
examiner, can no longer find a refuge in the rules to
ward off a final rejection.
 
The examiner should never lose sight of the fact
that in every case the applicant is entitled to a full and
fair hearing, and that a clear issue between applicant
and examiner should be developed, if possible, before
appeal. However, it is to the interest of the applicants
as a class as well as to that of the public that prosecution
of an application be confined to as few actions as
is consistent with a thorough consideration of its merits.
 
 
Neither the statutes nor the Rules of Practice confer
any
right on an applicant to an extended prosecution;
Ex
parte Hoogendam, 1939 C.D. 3, 499 O.G.3,
40
USPQ 389 (Comm’r Pat. 1939).
 
STATEMENT OF GROUNDS
 
In making the final rejection, all outstanding
grounds of rejection of record should be carefully
reviewed, and any such grounds relied on in the final
rejection should be reiterated. They must also be
clearly developed to such an extent that applicant may
readily judge the advisability of an appeal unless a
single previous Office action contains a complete
statement supporting the rejection.
 
However, where a single previous Office action
contains a complete statement of a ground of rejection,
the final rejection may refer to such a statement
and also should include a rebuttal of any arguments
raised in the applicant’s reply. If appeal is taken in
such a case, the examiner’s answer should contain a
complete statement of the examiner’s position. The
final rejection letter should conclude with Form Paragraph
7.39.
 
¶ 7.39 Action Is Final
 
THIS ACTION IS MADE FINAL. Applicant is reminded of
the extension of time policy as set forth in 37 CFR 1.136(a).
 
A shortened statutory period for reply to this final action is set
to expire THREE MONTHS from the mailing date of this action.
In the event a first reply is filed within TWO MONTHS of the
mailing date of this final action and the advisory action is not
mailed until after the end of the THREE-MONTH shortened statutory
period, then the shortened statutory period will expire on the
date the advisory action is mailed, and any extension fee pursuant
to 37 CFR 1.136(a) will be calculated from the mailing date of the
advisory action. In no event, however, will the statutory period
 
 
 
 
 
for reply expire later than SIX MONTHS from the mailing date of
this final action.
 
Examiner Note:
 
1.This form paragraph should not be used in reissue litigation
cases (SSP- 1 month) or in reexamination proceedings (SSP- 1 or
2 months).
 
2.37 CFR 1.136(a) should not be available in a reissue litigation
case and is not available in reexamination proceedings.
 
Form paragraph 7.39.01 may be used to notify
applicant of options available after final rejection.
 
¶ 7.39.01 Final Rejection, Options for Applicant, Pro Se
 
This action is a final rejection and is intended to close the
prosecution of this application. Applicant's reply under 37 CFR
1.113 to this action is limited either to an appeal to the Board of
Patent Appeals and Interferences or to an amendment complying
with the requirements set forth below.
 
If applicant should desire to appeal any rejection made by the
examiner, a Notice of Appeal must be filed within the period for
reply identifying the rejected claim or claims appealed. The
Notice of Appeal must be accompanied by the required appeal fee
of $[1].
 
If applicant should desire to file an amendment, entry of a proposed
amendment after final rejection cannot be made as a matter
of right unless it merely cancels claims or complies with a formal
requirement made earlier. Amendments touching the merits of the
application which otherwise might not be proper may be admitted
upon a showing a good and sufficient reasons why they are necessary
and why they were not presented earlier.
 
A reply under 37 CFR 1.113 to a final rejection must include
the appeal from, or cancellation of, each rejected claim. The filing
of an amendment after final rejection, whether or not it is entered,
does not stop the running of the statutory period for reply to the
final rejection unless the examiner holds the claims to be in condition
for allowance. Accordingly, if a Notice of Appeal has not
been filed properly within the period for reply, or any extension of
this period obtained under either 37 CFR 1.136(a) or (b), the
application will become abandoned.
 
Examiner Note:
 
The form paragraph must be preceded by any one of form paragraphs
7.39, 7.40, 7.40.01, 7.41, 7.42.03, or 7.42.09.
 
The Office Action Summary Form PTOL-326
should be used in all Office actions up to and including
final rejections.
 
For amendments filed after final rejection, see
MPEP §
714.12 and § 714.13.
 
For final rejection practice in reexamination proceedings
see MPEP § 2271.
 
706.07(a)Final Rejection, When Proper
on Second Action [R-5]
 
Due to the change in practice as affecting final
rejections, older decisions on questions of prematureness
of final rejection or admission of subsequent
amendments do not necessarily reflect present practice.
 
 
Under present practice, second or any subsequent
actions on the merits shall be final, except where the
examiner introduces a new ground of rejection that is
neither necessitated by applicant’s amendment of the
claims nor based on information submitted in an
information disclosure statement filed during the
period set forth in 37 CFR 1.97(c) with the fee set
forth in 37 CFR 1.17(p). Where information is submitted
in an information disclosure statement during
the period set forth in 37 CFR 1.97(c) with a fee, the
examiner may use the information submitted, e.g., a
printed publication or evidence of public use, and
make the next Office action final whether or not the
claims have been amended, provided that no other
new ground of rejection which was not necessitated
by amendment to the claims is introduced by the
examiner. See MPEP § 609.04(b). Furthermore, a second
or any subsequent action on the merits in any
application or patent undergoing reexamination proceedings
will not be made final if it includes a rejection,
on newly cited art, other than information
submitted in an information disclosure statement filed
under 37 CFR 1.97(c) with the fee set forth in 37 CFR
1.17(p), of any claim not amended by applicant or
patent owner in spite of the fact that other claims may
have been amended to require newly cited art. Where
information is submitted in a reply to a requirement
under 37
CFR
1.105, the examiner may NOT make
the next Office action relying on that art final unless
all instances of the application of such art are necessitated
by amendment.
 
A second or any subsequent action on the merits in
any application or patent involved in reexamination
proceedings should not be made final if it includes a
rejection, on prior art not of record, of any claim
amended to include limitations which should reasonably
have been expected to be claimed. See MPEP
§
904 et seq. For example, one would reasonably
expect that a rejection under 35 U.S.C. 112 for the
 
 
 
 
 
reason of incompleteness would be replied to by an
amendment supplying the omitted element.
 
A second or any subsequent action on the merits in
any application or patent involved in reexamination
proceedings may not be made final if it contains a
new ground of rejection necessitated by the amendments
to 35 U.S.C. 102(e) by the Intellectual Property
and High Technology Technical Amendments Act of
2002 (Pub. L. 107-273, 116 Stat. 1758 (2002)), unless
the new ground of rejection was necessitated by an
amendment to the claims or as a result of information
submitted in an information disclosure statement
under 37 CFR 1.97(c) with the fee set forth in 37 CFR
1.17(p).
 
When applying any 35 U.S.C. 102(e)/103 references
against the claims of an application  the
examiner should anticipate that a statement averring
common
ownership at the time the invention was
made
may disqualify any patent or application applied
in a
rejection under 35
U.S.C. 103 based on 35 U.S.C.
102(e). If such a statement is filed in reply to the
35
U.S.C. 102(e)/103 rejection and the claims are not
amended, the examiner may not make the next Office
action final if a new rejection is made. See MPEP §
706.02(l)(3). If a reference is disqualified under the
joint research agreement provision of 35 U.S.C.
103(c) and a new subsequent double patenting rejection
based upon the disqualified reference is applied,
the next Office action, which contains the new double
patenting rejection, may be made final even if applicant
did not amend the claims (provided that the
examiner introduces no other new ground of rejection
that was not necessitated by either amendment or an
information disclosure statement filed during the time
period set forth in 37 CFR 1.97(c) with the fee set
forth in 37 CFR 1.17(p)). The Office action is properly
made final because the new double patenting
rejection was necessitated by amendment of the application
by applicant.
 
See MPEP § 809.02(a) for actions which indicate
generic claims as not allowable.
 
In the consideration of claims in an amended case
where no attempt is made to point out the patentable
novelty, the examiner should be on guard not to allow
such claims. See MPEP § 714.04. The claims may be
finally rejected if, in the opinion of the examiner, they
are clearly open to rejection on grounds of record.
 
Form paragraph 7.40 should be used where an
action is made final including new grounds of rejection
necessitated by applicant’s amendment.
 
¶ 7.40 Action Is Final, Necessitated by Amendment
 
Applicant’s amendment necessitated the new ground(s) of
rejection presented in this Office action. Accordingly, THIS
ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant
is reminded of the extension of time policy as set forth in 37 CFR
1.136(a).
 
A shortened statutory period for reply to this final action is set
to expire THREE MONTHS from the mailing date of this action.
In the event a first reply is filed within TWO MONTHS of the
mailing date of this final action and the advisory action is not
mailed until after the end of the THREE-MONTH shortened statutory
period, then the shortened statutory period will expire on the
date the advisory action is mailed, and any extension fee pursuant
to 37 CFR 1.136(a) will be calculated from the mailing date of the
advisory action. In no event, however, will the statutory period
for reply expire later than SIX MONTHS from the mailing date of
this final action.
 
Examiner Note:
 
1.This form paragraph should not be used in reissue litigation
cases (SSP- 1 month) or in reexamination proceedings (SSP- 1 or
2 months).
 
2.37 CFR 1.136(a) should not be available in a reissue litigation
case and is not available in reexamination proceedings.
 
¶ 7.40.01 Action Is Final, Necessitated by IDS With Fee
 
Applicant’s submission of an information disclosure statement
under 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p) on
[1] prompted the new ground(s) of rejection presented in this
Office action. Accordingly, THIS ACTION IS MADE FINAL.
See MPEP § 609.04(b). Applicant is reminded of the extension of
time policy as set forth in 37
CFR 1.136(a).
 
A shortened statutory period for reply to this final action is set
to expire THREE MONTHS from the mailing date of this action.
In the event a first reply is filed within TWO MONTHS of the
mailing date of this final action and the advisory action is not
mailed until after the end of the THREE-MONTH shortened statutory
period, then the shortened statutory period will expire on the
date the advisory action is mailed, and any extension fee pursuant
to 37 CFR 1.136(a) will be calculated from the mailing date of the
advisory action. In no event, however, will the statutory period
for reply expire later than SIX MONTHS from the mailing date of
this final action.
 
Examiner Note:
 
1.This form paragraph should not be used and a final rejection
is improper where there is another new ground of rejection introduced
by the examiner which was not necessitated by amendment
to the claims.
 
2.In bracket 1, insert the filing date of the information disclosure
statement containing the identification of the item of information
used in the new ground of rejection.
 
 
 
 
 
 
 
¶ 7.40.02 Action Is Final, Necessitated by Invoking the
Joint Research Agreement Prior Art Exclusion Under 35
U.S.C. 103(c)
 
Applicant’s submission of the requirements for the joint
research agreement prior art exclusion under 35 U.S.C. 103(c) on
[1] prompted the new double patenting rejection presented in this
Office action. Accordingly, THIS ACTION IS MADE FINAL.
See MPEP § 706.02(l)(3). Applicant is reminded of the extension
of time policy as set forth in 37
CFR 1.136(a).
 
A shortened statutory period for reply to this final action is set
to expire THREE MONTHS from the mailing date of this action.
In the event a first reply is filed within TWO MONTHS of the
mailing date of this final action and the advisory action is not
mailed until after the end of the THREE-MONTH shortened statutory
period, then the shortened statutory period will expire on the
date the advisory action is mailed, and any extension fee pursuant
to 37 CFR 1.136(a) will be calculated from the mailing date of the
advisory action. In no event, however, will the statutory period for
reply expire later than SIX MONTHS from the mailing date of
this final action.
 
Examiner Note:
 
1.This form paragraph should not be used and a final rejection
is improper where there is another new ground of rejection introduced
by the examiner which was not necessitated by amendment
to the claims nor based on information submitted in an information
disclosure statement filed during the period set forth in 37
CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p).
 
2.In bracket 1, insert the filing date of the submission of the
requirements for the joint research agreement prior art exclusion
under 35 U.S.C. 103(c).
 
 
 
706.07(b)Final Rejection, When Properon First Action [R-1]
 
The claims of a new application may be finally
rejected in the first Office action in those situations
where (A) the new application is a continuing application
of, or a substitute for, an earlier application, and
(B) all claims of the new application (1) are drawn to
the same invention claimed in the earlier application,
and (2) would have been properly finally rejected on
the grounds and art of record in the next Office action
if they had been entered in the earlier application.
 
A first Office action in a continuing or substitute
application may not be made final if it contains a new
ground of rejection necessitated by the amendments
to 35 U.S.C. 102(e) by the Intellectual Property and
High Technology Technical Amendments of 2002
(Pub. L. 107-273, 116 Stat. 1758 (2002)).
 
However, it would not be proper to make final a
first Office action in a continuing or substitute application
where that application contains material which
was presented in the earlier application after final
rejection or closing of prosecution but was denied
entry because (A) new issues were raised that required
further consideration and/or search, or (B) the issue of
new matter was raised.
 
Further, it would not be proper to make final a first
Office action in a continuation-in-part application
where any claim includes subject matter not present in
the earlier application.
 
A request for an interview prior to first action on a
continuing or substitute application should ordinarily
be granted.
 
A first action final rejection should be made by
using Form Paragraphs 7.41 or 7.41.03, as appropriate.
 
 
¶ 7.41 Action Is Final, First Action
 
This is a [1] of applicant’s earlier Application No. [2]. All
claims are drawn to the same invention claimed in the earlier
application and could have been finally rejected on the grounds
and art of record in the next Office action if they had been entered
in the earlier application. Accordingly, THIS ACTION IS
MADE FINAL even though it is a first action in this case. See
MPEP § 706.07(b). Applicant is reminded of the extension of
time policy as set forth in 37 CFR 1.136(a).
 
A shortened statutory period for reply to this final action is set
to expire THREE MONTHS from the mailing date of this action.
In the event a first reply is filed within TWO MONTHS of the
mailing date of this final action and the advisory action is not
mailed until after the end of the THREE-MONTH shortened statutory
period, then the shortened statutory period will expire on the
date the advisory action is mailed, and any extension fee pursuant
to 37 CFR 1.136(a) will be calculated from the mailing date of the
advisory action. In no event, however, will the statutory period
for reply expire later than SIX MONTHS from the mailing date of
this final action.
 
Examiner Note:
 
1.In bracket 1, insert either --continuation-- or --substitute--, as
appropriate.
 
2.If an amendment was refused entry in the parent case on the
grounds that it raised new issues or new matter, this form paragraph
cannot be used. See MPEP § 706.07(b).
 
3.This form paragraph should not be used in reissue litigation
cases (SSP- 1 month) or in reexamination proceedings (SSP-1 or 2
months).
 
4.37 CFR 1.136(a) should not be available in a reissue litigation
case and is not available in reexamination proceedings.
 
 
 
 
 
¶ 7.41.03 Action Is Final, First Action Following
Submission Under 37 CFR 1.53(d), Continued Prosecution
Application (CPA)
 
All claims are drawn to the same invention claimed in the parent
application prior to the filing of this Continued Prosecution
Application under 37 CFR 1.53(d) and could have been finally
rejected on the grounds and art of record in the next Office action.
Accordingly, THIS ACTION IS MADE FINAL even though it
is a first action after the filing under 37
CFR 1.53(d). Applicant is
reminded of the extension of time policy as set forth in 37 CFR
1.136(a).
 
A shortened statutory period for reply to this final action is set
to expire THREE MONTHS from the mailing date of this action.
In the event a first reply is filed within TWO MONTHS of the
mailing date of this final action and the advisory action is not
mailed until after the end of the THREE-MONTH shortened statutory
period, then the shortened statutory period will expire on the
date the advisory action is mailed, and any extension fee pursuant
to 37 CFR 1.136(a) will be calculated from the mailing date of the
advisory action. In no event, however, will the statutory period for
reply expire later than SIX MONTHS from the mailing date of
this final action.
 
Examiner Note:
 
1.This form paragraph is for a first action final rejection in a
Continued Prosecution Application filed under 37 CFR 1.53(d).
 
2.This form paragraph must be preceded by one of form paragraphs
2.30 or 2.35, as appropriate.
 
¶ 7.42.09 Action Is Final, First Action Following Request
for Continued Examination under 37 CFR 1.114
 
All claims are drawn to the same invention claimed in the
application prior to the entry of the submission under 37 CFR
1.114 and could have been finally rejected on the grounds and art
of record in the next Office action if they had been entered in the
application prior to entry under 37
CFR 1.114. Accordingly,
THIS ACTION IS MADE FINAL even though it is a first action
after the filing of a request for continued examination and the submission
under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is
reminded of the extension of time policy as set forth in 37 CFR
1.136(a).
 
A shortened statutory period for reply to this final action is set
to expire THREE MONTHS from the mailing date of this action.
In the event a first reply is filed within TWO MONTHS of the
mailing date of this final action and the advisory action is not
mailed until after the end of the THREE-MONTH shortened statutory
period, then the shortened statutory period will expire on the
date the advisory action is mailed, and any extension fee pursuant
to 37 CFR 1.136(a) will be calculated from the mailing date of the
advisory action. In no event, however, will the statutory period for
reply expire later than SIX MONTHS from the mailing date of
this final action.
 
Examiner Note:
 
This form paragraph is for a first action final rejection following
a Request for Continued Examination filed under 37 CFR
1.114.
 
706.07(c)Final Rejection, Premature
 
Any question as to prematureness of a final rejection
should be raised, if at all, while the application is
still pending before the primary examiner. This is
purely a question of practice, wholly distinct from the
tenability of the rejection. It may therefore not be
advanced as a ground for appeal, or made the basis of
complaint before the Board of Patent Appeals and
Interferences. It is reviewable by petition under
37
CFR 1.181. See MPEP § 1002.02(c).
 
706.07(d)Final Rejection, Withdrawal of,
Premature [R-5]
 
If, on request by applicant for reconsideration, the
primary examiner finds the final rejection to have
been premature, he or she should withdraw the finality
of the rejection. The finality of the Office action
must be withdrawn while the application is still pending.
The examiner cannot withdraw the final
rejection once the application is abandoned.
 
Form paragraph 7.42 should be used when withdrawing
the finality of the rejection of the last Office
action.
 
¶ 7.42 Withdrawal of Finality of Last Office Action
 
Applicant’s request for reconsideration of the finality of the
rejection of the last Office action is persuasive and, therefore, the
finality of that action is withdrawn.
 
706.07(e)Withdrawal of Final Rejection,
General
 
See MPEP § 714.12 and § 714.13 for amendments
after final rejection.
 
Once a final rejection that is not premature has been
entered in an application/reexamination proceeding, it
should not be withdrawn at the applicant’s or patent
owner’s request except on a showing under 37 CFR
1.116(b). Further amendment or argument will be
considered in certain instances. An amendment that
will place the application either in condition for
allowance or in better form for appeal may be admitted.
Also, amendments complying with objections or
requirements as to form are to be permitted after final
action in accordance with 37 CFR 1.116(a).
 
The examiner may withdraw the rejection of finally
rejected claims. If new facts or reasons are presented
such as to convince the examiner that the previously
rejected claims are in fact allowable or patentable in
 
 
 
 
 
the case of reexamination, then the final rejection
should be withdrawn. Occasionally, the finality of a
rejection may be withdrawn in order to apply a new
ground of rejection.
 
Although it is permissible to withdraw a final rejection
for the purpose of entering a new ground of rejection,
this practice is to be limited to situations where a
new reference either fully meets at least one claim or
meets it except for differences which are shown to be
completely obvious. Normally, the previous rejection
should be withdrawn with respect to the claim or
claims involved.
 
The practice should not be used for application of
subsidiary references, or of cumulative references, or
of references which are merely considered to be better
than those of record.
 
When a final rejection is withdrawn, all amendments
filed after the final rejection are ordinarily
entered.
 
New grounds of rejection made in an Office action
reopening prosecution after the filing of an appeal
brief require the approval of the supervisory patent
examiner. See MPEP § 1002.02(d).
 
706.07(f)Time for Reply to Final Rejection
[R-5]
 
The time for reply to a final rejection is as follows:
 
(A)All final rejections setting a 3-month shortened
statutory period (SSP) for reply should contain
one of form paragraphs 7.39, 7.40, 7.40.01,
7.40.02, 7.41, 7.41.03, 7.42.03, 7.42.031, or
7.42.09 advising applicant that if the reply is filed
within 2 months of the date of the final Office action,
the shortened statutory period will expire at 3 months
from the date of the final rejection or on the date the
advisory action is mailed, whichever is later. Thus, a
variable reply period will be established. If the last
day of “2 months of the date of the final Office
action” falls on Saturday, Sunday, or a Federal holiday
within the District of Columbia, and a reply is filed on
the next succeeding day which is not a Saturday, Sunday,
or a Federal holiday, pursuant to 37 CFR 1.7(a),
the reply is deemed to have been filed within the 2
months period and the shortened statutory period will
expire at 3 months from the date of the final rejection
or on the mailing date of the advisory action, whichever
is later (see MPEP §710.05). In no event can the
statutory period for reply expire later than 6 months
from the mailing date of the final rejection.
 
(B)This procedure of setting a variable reply
period in the final rejection dependent on when applicant
files a first reply to a final Office action does not
apply to situations where a SSP less than 3 months is
set, e.g., reissue litigation applications (1-month SSP)
or any reexamination proceeding.
 
I.ADVISORY ACTIONS
 
(C)Where the final Office action sets a variable
reply period as set forth in paragraph (A) above AND
applicant files a complete first reply to the final Office
action within 2 months of the date of the final Office
action, the examiner must determine if the reply:
 
(1)places the application in condition for
allowance — then the application should be processed
as an allowance and no extension fees are due;
 
(2)places the application in condition for
allowance except for matters of form which the examiner
can change without authorization from applicant,
MPEP §
1302.04 — then the application should be
amended as required and processed as an allowance
and no extension fees are due; or
 
(3)does not place the application in condition
for allowance — then the advisory action should
inform applicant that the SSP for reply expires
3
months from the date of the final rejection or as of
the mailing date of the advisory action, whichever is
later, by checking box 1.b) at the top portion of the
Advisory Action form, PTOL-303.
 
(D) Where the final Office action sets a variable
reply period as set forth in paragraph (A) above, and
applicant does NOT file a complete first reply to the
final Office action within 2 months, examiners should
check box 1.a) at the top portion of the Advisory
Action form, PTOL-303.
 
(E)When box 1.b) at the top portion of the Advisory
Action form, PTOL-303 is checked, the time for
applicant to take further action (including the calculation
of extension fees under 37 CFR 1.136(a)) begins
to run 3 months from the date of the final rejection, or
from the date of the advisory action, whichever is
later. Extension fees cannot be prorated for portions of
a month. In no event can the statutory period for reply
expire later than 6 months from the date of the final
rejection. For example, if applicant initially replies
within 2 months from the date of mailing of a final
 
 
 
 
 
rejection and the examiner mails an advisory action
before the end of 3 months from the date of mailing of
the final rejection, the shortened statutory period will
expire at the end of 3 months from the date of mailing
of the final rejection. In such case, if a petition for
extension of time is granted, the due date for a reply is
computed from the date stamped or printed on the
Office action with the final rejection. See MPEP
§
710.01(a). If the examiner, however, does not mail
an advisory action until after the end of the 3-month
period, the shortened statutory period will expire on
the date the examiner mails the advisory action and
any extension of time fee would be calculated from
the mailing date of the advisory action.
 
 
 
 
 
PTOL-303 FORM Advisory Action Before the Filing of an AppealPTOL-303 FORM Advisory Action Before the Filing of an Appeal
 
 
 
 
 
 
II.EXAMINER’S AMENDMENTS
 
(F)Where a complete first reply to a final Office
action has been filed within 2 months of the final
Office action, an examiner’s amendment to place the
application in condition for allowance may be made
without the payment of extension fees even if the
examiner’s amendment is made more than 3 months
from the date of the final Office action. Note that an
examiner’s amendment may not be made more than 6
months from the date of the final Office action, as the
application would be abandoned at that point by operation
of law.
 
(G)Where a complete first reply to a final Office
action has not been filed within 2 months of the final
Office action, applicant’s authorization to make an
amendment to place the application in condition for
allowance must be made either within the 3 month
shortened statutory period or within an extended
period for reply that has been petitioned and paid for
by applicant pursuant to 37 CFR 1.136(a). However,
an examiner’s amendment correcting only formal
matters which are identified for the first time after a
reply is made to a final Office action would not
require any extension fee, since the reply to the final
Office action put the application in condition for
allowance except for the correction of formal matters,
the correction of which had not yet been required by
the examiner.
 
(H)An extension of time under 37 CFR 1.136(a)
requires a petition for an extension and the appropriate
fee provided for in 37 CFR 1.17. Where an extension
of time is necessary to place an application in
condition for allowance (e.g., when an examiner’s
amendment is necessary after the shortened statutory
period for reply has expired), applicant may file the
required petition and fee or give authorization to the
examiner to make the petition of record and charge a
specified fee to a deposit account. Office employees
may not accept oral (telephonic) instructions to complete
the Credit Card Payment Form or otherwise
charge a patent process fee (as opposed to information
product or service fees) to a credit card. When authorization
to make a petition for an extension of time of
record is given to the examiner, the authorization must
be given before the extended period expires. The
authorization must be made of record in an examiner’s
amendment by indicating the name of the person
making the authorization, when the authorization
was given, the deposit account number to be charged,
the length of the extension requested and the amount
of the fee to be charged to the deposit account. Form
Paragraph 13.02.02 should be used.
 
¶ 13.02.02 Extension of Time and Examiner’s Amendment
Authorized by Telephone
 
An extension of time under 37 CFR 1.136(a) is required in
order to make an examiner’s amendment which places this application
in condition for allowance. During a telephone conversation
conducted on [1], [2] requested an extension of time for [3]
MONTH(S) and authorized the Director to charge Deposit
Account No. [4] the required fee of $ [5] for this extension and
authorized the following examiner’s amendment. Should the
changes and/or additions be unacceptable to applicant, an amendment
may be filed as provided by 37 CFR 1.312. To ensure consideration
of such an amendment, it MUST be submitted no later
than the payment of the issue fee.
 
Examiner Note:
 
See MPEP § 706.07(f) which explains when an extension of
time is needed in order to make amendments to place the application
in condition for allowance.
 
III.PRACTICE AFTER FINAL
 
(I)Replies after final should be processed and
considered promptly by all Office personnel.
 
(J)Replies after final should not be considered
by the examiner unless they are filed within the SSP
or are accompanied by a petition for an extension of
time and the appropriate fee (37 CFR 1.17 and
37
CFR 1.136(a)). See also MPEP § 710.02(e). This
requirement also applies to supplemental replies filed
after the first reply.
 
(K)Interviews may be conducted after the expiration
of the shortened statutory period for reply to a
final Office action but within the 6-month statutory
period for reply without the payment of an extension
fee.
 
(L)Formal matters which are identified for the
first time after a reply is made to a final Office action
and which require action by applicant to correct may
be required in an Ex parte Quayle action if the application
is otherwise in condition for allowance. No
extension fees would be required since the reply puts
the application in condition for allowance except for
the correction of formal matters — the correction of
which had not yet been required by the examiner.
 
 
 
 
 
(M) If prosecution is to be reopened after a final
Office action has been replied to, the finality of the
previous Office action should be withdrawn to avoid
the issue of abandonment and the payment of extension
fees. For example, if a new reference comes to
the attention of the examiner which renders unpatentable
a claim indicated to be allowable, the Office
action should begin with a statement to the effect:
“The finality of the Office action mailed is hereby
withdrawn in view of the new ground of rejection set
forth below.” Form paragraph 7.42 could be used in
addition to this statement. See MPEP § 706.07(d).
 
706.07(g)Transitional After-Final Practice
[R-5]
 
37 CFR 1.129. Transitional procedures for limited
examination after final rejection and restriction practice.
 
(a)An applicant in an application, other than for reissue or a
design patent, that has been pending for at least two years as of
June 8, 1995, taking into account any reference made in such
application to any earlier filed application under 35 U.S.C. 120,
121 and 365(c), is entitled to have a first submission entered and
considered on the merits after final rejection under the following
circumstances: The Office will consider such a submission, if the
first submission and the fee set forth in § 1.17(r) are filed prior to
the filing of an appeal brief and prior to abandonment of the application.
The finality of the final rejection is automatically withdrawn
upon the timely filing of the submission and payment of the
fee set forth in § 1.17(r). If a subsequent final rejection is made in
the application, applicant is entitled to have a second submission
entered and considered on the merits after the subsequent final
rejection under the following circumstances: The Office will consider
such a submission, if the second submission and a second
fee set forth in § 1.17(r) are filed prior to the filing of an appeal
brief and prior to abandonment of the application. The finality of
the subsequent final rejection is automatically withdrawn upon the
timely filing of the submission and payment of the second fee set
forth in §
1.17(r). Any submission filed after a final rejection
made in an application subsequent to the fee set forth in § 1.17(r)
having been twice paid will be treated as set forth in §
1.116. A
submission as used in this paragraph includes, but is not limited
to, an information disclosure statement, an amendment to the written
description, claims or drawings and a new substantive argument
or new evidence in support of patentability.
 
 
 
(c)The provisions of this section shall not be applicable to
any application filed after June 8, 1995.
 
In order to facilitate the completion of prosecution
of applications pending in the USPTO as of June 8,
1995 and to ease the transition between a 17-year
patent term and a 20-year patent term, Public Law
103-465 provided for the further limited reexamination
of an application pending for 2
years or longer as
of June 8, 1995, taking into account any reference
made in the application to any earlier filed application
under 35 U.S.C. 120, 121, or 365(c). The further limited
reexamination permits applicants to present for
consideration, as a matter of right upon payment of a
fee, a submission after a final rejection has been
issued on an application. An applicant will be able to
take advantage of this provision on two separate occasions
provided the submission and fee are presented
prior to the filing of the Appeal Brief and prior to
abandonment of the application. This will have the
effect of enabling an applicant to essentially remove
the finality of the prior Office action in the pending
application on two separate occasions by paying a fee
for each occasion, and
avoid the impact of refiling the
application to obtain consideration of additional
claims and/or information relative to the claimed subject
matter. The transitional after-final practice is only
available to applications filed on or before June 8,
1995 and it is not available for reissue or design applications
or reexamination proceedings.
 
The following flowchart illustrates the transitional
after-final procedures set forth in 37 CFR 1.129(a).
 
 
 
 
 
 
 
Flowchart/Transitional After-Final Provision - 37 CFR 1.129(a)Flowchart/Transitional After-Final Provision - 37 CFR 1.129(a)
Transitional After-Final Provision – 37 CFR 1.129(a)
Starting June 8, 1995
Application filed on or before 6/8/95 § 1.129(a) not available
Application has an effective filing date of 6/8/93
or earlier§ 1.129(a) not available
Submission & § 1.17(r) fee filed prior to Appeal
Brief and prior to abandonment of application
Goes normal appeal route
Submission entered and finality of previous
rejection w/d. No new matter permitted.
Submission fully responsive to the
previous Office action
Give applicant a 1 – month/30 days
extendable SSP to submit a complete
reply to the previous Office action
Submission filed prior to 6/8/05 – considered in manner
set forth in MPEP § 706.07(b)
Submission filed on or after 6/8/05 – considered in
manner set forth in MPEP § 706.07(a)
Reply complete and timely
filedApplication is
abandonedFurtherprosecution results in final rejectionSubmission & § 1.17(r) fee filed prior to
Appeal Brief and prior to abandonment
of application
Goes normal appeal route
Submission entered and finality of previous
rejection w/d. No new matter permitted.
Submission fully responsive to the
previous Office action
Submission filed prior to 6/8/05 – considered in manner
set forth in MPEP § 706.07(b)
Submission filed on or after 6/8/05 – considered in
manner set forth in MPEP § 706.07(a)
Give applicant a 1 – month/30 days
extendable SSP to submit a complete
reply to the previous Office action
Reply complete and timely
filedApplication is
abandonedFurtherprosecution results in final rejectionNormal route
NYNNYYYYNNYNYYNN
 
 
 
 
 
 
 
 
Effective June 8, 1995, in any pending application
having an actual or effective filing date of June 8,
1993 or earlier, applicant is entitled, under 37 CFR
1.129(a), to have a first submission after final rejection
entered and considered on the merits, if the submission
and the fee set forth in 37
CFR 1.17(r) are
filed prior to the filing of an Appeal Brief under
37
CFR 41.37 and prior to abandonment. For an
application entering national stage under 35 U.S.C.
371 or an application filed under 35 U.S.C. 111(a)
claiming benefit under 35 U.S.C. 120 of a PCT application
designating the U.S., the PCT international filing
date will be used to determine whether the
application has been pending for at least 2 years as of
June 8, 1995.
 
Form paragraph 7.41.01 may be used to notify
applicant that the application qualifies under 37 CFR
1.129(a).
 
 
 
¶ 7.41.01 Transitional After Final Practice, First
Submission (37
CFR 1.129(a))
 
This application is subject to the provisions of Public Law 103-
465, effective June 8, 1995. Accordingly, since this application
has been pending for at least two years as of June 8, 1995, taking
into account any reference to an earlier filed application under 35
U.S.C. 120, 121 or 365(c), applicant, under 37 CFR 1.129(a), is
entitled to have a first submission entered and considered on the
merits if, prior to abandonment, the submission and the fee set
forth in 37 CFR 1.17(r) are filed prior to the filing of an appeal
brief under 37 CFR 41.37. Upon the timely filing of a first submission
and the appropriate fee of $[1] for a [2] entity under 37
CFR 1.17(r), the finality of the previous Office action will be
withdrawn. If a notice of appeal and the appeal fee set forth in 37
CFR 41.20(b) were filed prior to or with the payment of the fee set
forth in 37 CFR 1.17(r), the payment of the fee set forth in 37 CFR
1.17(r) by applicant will be construed as a request to dismiss the
appeal and to continue prosecution under 37
CFR 1.129(a). In
view of 35 U.S.C. 132, no amendment considered as a result of
payment of the fee set forth in 37 CFR 1.17(r) may introduce new
matter into the disclosure of the application.
 
If applicant has filed multiple proposed amendments which,
when entered, would conflict with one another, specific instructions
for entry or non-entry of each such amendment should be
provided upon payment of any fee under 37 CFR 1.17(r).
 
Examiner Note:
 
1.This form paragraph may follow any of form paragraphs
7.39 - 7.41 in any application filed prior to June 9, 1995, which
has been pending for at least two years as of June 8, 1995, taking
into account any reference under 35 U.S.C. 120, 121 or 365(c) to a
previously filed application and no previous fee has been paid
under 37
CFR 1.17(r).
 
2.This form paragraph should NOT be used in a design or reissue
application, or in a reexamination proceeding.
 
3.In bracket 1, insert the current fee for a large or small entity,
as appropriate.
 
4.In bracket 2, insert --small-- or --large--, depending on the
current status of the application.
 
 
 
The submission under 37 CFR 1.129(a) may comprise,
but is not limited to, an information disclosure
statement (IDS), an amendment to the written description,
claims or drawings, a new substantive argument
and/or new evidence. No amendment considered as a
result of payment of the fee set forth in 37 CFR
1.17(r) may introduce new matter into the disclosure
of the application 35 U.S.C. 132. In view of the fee set
forth in 37 CFR 1.17(r), any (IDS) previously refused
consideration in the application because of applicant’s
failure to comply with 37 CFR 1.97(c) or (d) will be
treated as though it has been filed within one of the
time periods set forth in 37 CFR 1.97(b) and will be
considered without the petition and petition fee
required in 37 CFR 1.97(d), if it complies with the
requirements of 37 CFR 1.98. Any IDS submitted
under 37 CFR 1.129(a) on or after June 8, 2005 without
a statement specified in 37 CFR 1.97(e) will be
treated as though it had been filed within the time
period set forth in 37 CFR 1.97(c) with the fee set
forth in 37 CFR 1.17(p). The examiner may introduce
a new ground of rejection based on the information
submitted in the IDS and make the next Office action
final provided that the examiner introduces no other
new ground of rejection, which has not been necessitated
by amendment to the claims. See MPEP §
706.07(a).
 
If the application qualifies under 37 CFR 1.129(a),
that is, it was filed on or before June 8, 1995 and the
application has an effective U.S. filing date of June 8,
1993 or earlier, the examiner must check to see if the
submission and 37
CFR 1.17(r) fee were filed prior to
the filing of the Appeal Brief and prior to abandonment
of the application. If an amendment was timely
filed in reply to the final rejection but the fee set forth
in 37 CFR 1.17(r) did not accompany the amendment,
examiners will continue to consider these amendments
in an expedited manner as set forth in MPEP
§
714.13 and issue an advisory action notifying applicant
whether the amendment has been entered. If the
examiner indicated in an advisory action that the
amendment has not been entered, applicant may then
 
 
 
 
 
pay the fee set forth in 37 CFR 1.17(r) and any necessary
fee to avoid abandonment of the application and
obtain entry and consideration of the amendment as a
submission under 37
CFR 1.129(a). If the submission
and the fee set forth in 37 CFR 1.17(r) were timely
filed in reply to the final rejection and no advisory
action has been issued prior to the payment of the fee
set forth in 37 CFR 1.17(r), no advisory action will be
necessary. The examiner will notify applicant that the
finality of the previous office action has been withdrawn
pursuant to 37 CFR 1.129(a). It is noted that if
the submission is accompanied by a “conditional”
payment of the fee set forth in 37 CFR 1.17(r), i.e., an
authorization to charge the fee set forth in 37 CFR
1.17(r) to a deposit account or to a credit card in the
event that the submission would not otherwise be
entered, the Office will treat the conditional payment
as an unconditional payment of the 37 CFR 1.17(r)
fee.
 
The finality of the final rejection is automatically
withdrawn upon the timely filing of the submission
and payment of the fee set forth in 37 CFR 1.17(r).
Upon the timely payment of the fee set forth in
37
CFR 1.17(r), all previously unentered submissions,
and submissions filed with the 37
CFR 1.17(r) fee
will be entered in the order in which they were filed
absent specific instructions for entry. Any conflicting
amendments should be clarified for entry by the applicant
upon payment of the 37 CFR 1.17(r) fee. Form
paragraph 7.42.01 should be used to notify applicant
that the finality of the previous Office action has been
withdrawn.
 
¶ 7.42.01 Withdrawal of Finality of Last Office Action -
Transitional Application Under 37 CFR 1.129(a)
 
Since this application is eligible for the transitional procedure
of 37
CFR 1.129(a), and the fee set forth in 37 CFR 1.17(r) has
been timely paid, the finality of the previous Office action has
been withdrawn pursuant to 37 CFR 1.129(a). Applicant's [1]
submission after final filed on [2] has been entered.
 
Examiner Note:
 
Insert --first-- or --second-- in bracket 1.
 
If a Notice of Appeal and the appeal fee set forth in
37
CFR 1.17(b) were filed prior to or with the payment
of the fee set forth 37 CFR 1.17(r), the payment
of the fee set forth in 37 CFR 1.17(r) by applicant is
construed as a request to dismiss the appeal and to
continue prosecution under 37 CFR 1.129(a).
 
Upon the timely payment of the fee set forth in
37
CFR 1.17(r), if the examiner determines that the
submission is not fully responsive to the previous
Office action, e.g., if the submission only includes an
information disclosure statement, applicant will be
given a new shortened statutory period of 1 month or
30 days, whichever is longer, to submit a complete
reply. Form paragraph 7.42.02 should be used.
 
¶ 7.42.02 Nonresponsive Submission Filed Under 37 CFR
1.129(a)
 
The timely submission under 37 CFR 1.129(a) filed on [1] is
not fully responsive to the prior Office action because [2]. Since
the submission appears to be a bona fide attempt to provide a
complete reply to the prior Office action, applicant is given a
shortened statutory period of ONE MONTH or THIRTY DAYS
from the mailing date of this letter, whichever is longer, to submit
a complete reply. This shortened statutory period supersedes the
time period set in the prior Office action. This time period may be
extended pursuant to 37 CFR 1.136(a). If a notice of appeal and
the appeal fee set forth in 37 CFR 41.20(b) were filed prior to or
with the payment of the fee set forth in 37 CFR 1.17(r), the payment
of the fee set forth in 37 CFR 1.17(r) by applicant is construed
as a request to dismiss the appeal and to continue
prosecution under 37 CFR 1.129(a). The appeal stands dismissed.
 
Examiner Note:
 
The reasons why the examiner considers the submission not to
be fully responsive must be set forth in bracket 2.
 
I.SUBMISSIONS UNDER 37 CFR 1.129(a)
FILED PRIOR TO JUNE 8, 2005
 
After submission and payment of the fee set forth in
37
CFR 1.17(r), the next Office action on the merits
may be made final only under the conditions for making
a first action in a continuing application final set
forth in MPEP §
706.07(b).
 
Form paragraph 7.42.03 may be used if it is appropriate
to make the first action final following a submission
under 37 CFR 1.129(a) filed prior to June 8,
2005.
 
¶ 7.42.03 Action Is Final, First Action Following
Submission Under 37 CFR 1.129(a) Filed Prior to June 8,
2005
 
All claims are drawn to the same invention claimed in the
application prior to the entry of the submission under 37 CFR
1.129(a) and could have been finally rejected on the grounds and
art of record in the next Office action if they had been entered in
the application prior to entry under 37 CFR 1.129(a). Accordingly,
THIS ACTION IS MADE FINAL even though it is a first
action after the submission under 37 CFR 1.129(a). See MPEP §
 
 
 
 
 
706.07(b). Applicant is reminded of the extension of time policy
as set forth in 37 CFR 1.136(a).
 
A shortened statutory period for reply to this final action is set
to expire THREE MONTHS from the mailing date of this action.
In the event a first reply is filed within TWO MONTHS of the
mailing date of this final action and the advisory action is not
mailed until after the end of the THREE-MONTH shortened statutory
period, then the shortened statutory period will expire on the
date the advisory action is mailed, and any extension fee pursuant
to 37 CFR 1.136(a) will be calculated from the mailing date of the
advisory action. In no event, however, will the statutory period for
reply expire later than SIX MONTHS from the mailing date of
this final action.
 
Examiner Note:
 
Also use form paragraph 7.41.02 if this is a final rejection following
a first submission under 37 CFR 1.129(a).
 
If a subsequent final rejection is made in the application,
applicant would be entitled to have a second
submission entered and considered on the merits
under the same conditions set forth for consideration
of the first submission. Form paragraph 7.41.02should be used.
 
¶ 7.41.02 Transitional After Final Practice, Second
Submission (37 CFR 1.129(a))
 
Since the fee set forth in 37 CFR 1.17(r) for a first submission
subsequent to a final rejection has been previously paid, applicant,
under 37 CFR 1.129(a), is entitled to have a second submission
entered and considered on the merits if, prior to abandonment, the
second submission and the fee set forth in 37 CFR 1.17(r) are filed
prior to the filing of an appeal brief under 37 CFR 41.37. Upon the
timely filing of a second submission and the appropriate fee of
$[1] for a [2] entity under 37CFR 1.17(r), the finality of the previous
Office action will be withdrawn. If a notice of appeal and the
appeal fee set forth in 37 CFR 41.20(b) were filed prior to or with
the payment of the fee set forth in 37 CFR 1.17(r), the payment of
the fee set forth in 37 CFR 1.17(r) by applicant will be construed
as a request to dismiss the appeal and to continue prosecution
under 37 CFR 1.129(a). In view of 35 U.S.C. 132, no amendment
considered as a result of payment of the fee set forth in 37 CFR
1.17(r) may introduce new matter into the disclosure of the application.
 
 
Examiner Note:
 
1.This form paragraph is to follow any of form paragraphs
7.39-7.41 in any application filed prior to June 9, 1995, which has
been pending for at least two years as of June 8, 1995, taking into
account any reference under 35 U.S.C. 120, 121 or 365(c) to a
previously filed application and a first submission fee has been
previously paid under 37 CFR 1.17(r).
 
2.This form paragraph should NOT be used in a design or reissue
application or in a reexamination proceeding.
 
3.In bracket 1, insert the current fee for a large or small entity,
as appropriate.
 
4.In bracket 2, insert --small-- or --large--, depending on the
current status of the application.
 
5.If the fee set forth in 37 CFR 1.17(r) has been twice paid, the
provisions of 37 CFR 1.129(a) are no longer available.
 
Any submission filed after a final rejection made in
the application subsequent to the fee set forth in
37
CFR 1.17(r) having been twice paid will be treated
in accordance with the current after-final practice set
forth in 37 CFR 1.116.
 
II.SUBMISSIONS UNDER 37 CFR 1.129(a)
FILED ON OR AFTER JUNE 8, 2005
 
For timely submission and payment of the fee set
forth in 37 CFR 1.17(r) on or after June 8, 2005, the
next Office action on the merits will be equivalent to
the next Office action following a reply to a non-final
Office action. Under existing second Office action
final practice, such an Office action on the merits will
be made final, except where the examiner introduces a
new ground of rejection that is neither necessitated by
applicant’s amendment of the claims nor based on
information submitted in an IDS filed during the
period set forth in 37 CFR 1.97(c) with the fee set
forth in 37 CFR 1.17(p). See MPEP § 706.07(a).
 
Form paragraph 7.42.031 may be used to make the
next Office action final following a submission under
37 CFR 1.129(a) filed on or after June 8, 2005.
 
¶ 7.42.031 Action Is Final, Action Following Submission
Under 37 CFR 1.129(a) Filed On or After June 8, 2005
 
Under the final action practice for Office actions following a
submission under 37 CFR 1.129(a) filed on or after June 8, 2005,
the next Office action following timely filing of a submission
under 37 CFR 1.129(a) will be equivalent to the next Office action
following a reply to a non-final Office action. Under existing
Office second action final practice, such an Office action on the
merits will be made final, except where the examiner introduces a
new ground of rejection that is neither necessitated by applicant’s
amendment of the claims nor based on information submitted in
an information disclosure statement filed during the period set
forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p).
See MPEP § 706.07(a).
 
In this Office action, there is no new ground of rejection that
was not necessitated by applicant’s amendment of the claims or
based on information submitted in an information disclosure statement
filed during the period set forth in 37 CFR 1.97(c) with the
fee set forth in 37 CFR 1.17(p). Accordingly, THIS ACTION IS
MADE FINAL. Applicant is reminded of the extension of time
policy as set forth in 37 CFR 1.136(a).
 
A shortened statutory period for reply to this final action is set
to expire THREE MONTHS from the mailing date of this action.
In the event a first reply is filed within TWO MONTHS of the
 
 
 
 
 
mailing date of this final action and the advisory action is not
mailed until after the end of the THREE-MONTH shortened statutory
period, then the shortened statutory period will expire on the
date the advisory action is mailed, and any extension fee pursuant
to 37 CFR 1.136(a) will be calculated from the mailing date of the
advisory action. In no event, however, will the statutory period for
reply expire later than SIX MONTHS from the mailing date of
this final action.
 
Examiner Note:
 
Also use form paragraph 7.41.02 if this is a final rejection following
a first submission under 37 CFR 1.129(a).
 
An applicant whose application is eligible for the
transitional further limited examination procedure set
forth in 37 CFR 1.129(a) is entitled to consideration
of two after final submissions. Thus, if such an applicant
has filed one submission under 37 CFR 1.129(a)
and the application is again under a final rejection, the
applicant is entitled to only one additional submission
under 37 CFR 1.129(a). If such an applicant has filed
two submissions under 37 CFR 1.129(a) and the
application is again under a final rejection, applicant
is not entitled to have any additional submissions considered
under 37 CFR 1.129(a). Applicant may be
entitled to consideration of an additional submission
if the submission meets the conditions set forth in 37
CFR 1.116.
 
706.07(h)Request for Continued Examination
(RCE) Practice [R-5]
 
35 U.S.C. 132. Notice of rejection; reexamination.
 
 
 
(b)The Director shall prescribe regulations to provide for
the continued examination of applications for patent at the request
of the applicant. The Director may establish appropriate fees for
such continued examination and shall provide a 50 percent reduction
in such fees for small entities that qualify for reduced fees
under section 41(h)(1) of this title.
 
37 CFR 1.114. Request for continued examination.
 
(a)If prosecution in an application is closed, an applicant
may request continued examination of the application by filing a
submission and the fee set forth in § 1.17(e) prior to the earliest
of:
 
(1)Payment of the issue fee, unless a petition under
§
1.313 is granted;
 
(2)Abandonment of the application; or
 
(3)The filing of a notice of appeal to the U.S. Court of
Appeals for the Federal Circuit under 35 U.S.C. 141, or the commencement
of a civil action under 35 U.S.C. 145 or 146, unless
the appeal or civil action is terminated.
 
(b)Prosecution in an application is closed as used in this
section means that the application is under appeal, or that the last
Office action is a final action (§ 1.113), a notice of allowance (§
1.311), or an action that otherwise closes prosecution in the application.
 
 
(c)A submission as used in this section includes, but is not
limited to, an information disclosure statement, an amendment to
the written description, claims, or drawings, new arguments, or
new evidence in support of patentability. If reply to an Office
action under 35 U.S.C. 132 is outstanding, the submission must
meet the reply requirements of § 1.111.
 
(d) If an applicant timely files a submission and fee set forth
in § 1.17(e), the Office will withdraw the finality of any Office
action and the submission will be entered and considered. If an
applicant files a request for continued examination under this section
after appeal, but prior to a decision on the appeal, it will be
treated as a request to withdraw the appeal and to reopen prosecution
of the application before the examiner. An appeal brief (§
41.37 of this title) or a reply brief (§ 41.41 of this title), or related
papers, will not be considered a submission under this section.
 
(e)The provisions of this section do not apply to:
 
(1)A provisional application;
 
(2)An application for a utility or plant patent filed under
35 U.S.C. 111(a) before June 8, 1995;
 
(3)An international application filed under 35 U.S.C. 363before June 8, 1995;
 
(4)An application for a design patent; or
 
(5)A patent under reexamination.
 
35 U.S.C. 132(b) provides for continued examination
of an application at the request of the applicant
(request for continued examination or RCE) upon
payment of a fee, without requiring the applicant to
file a continuing application under 37 CFR 1.53(b).
To implement the RCE practice, 37
CFR 1.114 provides
a procedure under which an applicant may
obtain continued examination of an application in
which prosecution is closed (e.g., the application is
under final rejection or a notice of allowance) by filing
a submission and paying a specified fee. Applicants
cannot file an RCE to obtain continued
examination on the basis of claims that are independent
and distinct from the claims previously claimed
and examined as a matter of right (i.e., applicant cannot
switch inventions). See 37 CFR 1.145. Any newly
submitted claims that are directed to an invention that
is independent and distinct from the invention previously
claimed will be withdrawn from consideration
and not entered. See subsection VI. below. An RCE
is
not the filing of a new application. Thus, the
Office
will not convert an RCE to a new application
such as an application filed under 37 CFR 1.53(b) or a
 
 
 
 
 
continued prosecution application (CPA) under 37
CFR 1.53(d).
 
I.CONDITIONS FOR FILING AN RCE
 
The provisions of 37
CFR 1.114 apply to utility or
plant applications filed under 35
U.S.C. 111(a) on or
after June
8, 1995, or international applications filed
under 35
U.S.C. 363 on or after June
8, 1995. The
RCE provisions of 37
CFR 1.114 do not apply to:
 
(A)a provisional application;
 
(B)an application for a utility or plant patent filed
under 35
U.S.C. 111(a) before June
8, 1995;
 
(C)an international application filed under
35
U.S.C. 363
before June 8, 1995;
 
(D)an application for a design patent; or
 
(E)a patent under reexamination.
 
See 37
CFR 1.114(e).
 
An applicant may obtain continued examination of
an application by filing a request for continued examination
(see form PTO/SB/30), a submission and the
fee set forth in 37
CFR 1.17(e) prior to the earliest of:
 
(A)payment of the issue fee (unless a petition
under 37 CFR 1.313 is granted);
 
(B)abandonment of the application; or
 
(C)the filing of a notice of appeal to the U.S.
Court of Appeals for the Federal Circuit or the commencement
of a civil action (unless the appeal or civil
action is terminated).
 
See 37
CFR 1.114(a). An applicant cannot request
continued examination of an application until after
prosecution in the application is closed. See 37
CFR
1.114(a). Prosecution in an application is closed if the
application is under appeal, or the last Office action is
a final action (37 CFR 1.113), a notice of allowance
(37 CFR 1.311), or an action that otherwise closes
prosecution in the application (e.g., an Office action
under Ex parte Quayle, 25 USPQ 74, 453 O.G. 213
(Comm’r Pat. 1935)).
 
II.SUBMISSION REQUIREMENT
 
A “submission” as used in 37
CFR 1.114 includes,
but is not limited to, an information disclosure statement,
an amendment to the written description,
claims, or drawings, new arguments, or new evidence
in support of patentability. See 37
CFR 1.114(c). If a
reply to an Office action under 35
U.S.C. 132 is outstanding,
the submission must meet the reply requirements
of 37
CFR
1.111. See 37
CFR 1.114(c). Thus,
an applicant may file a submission under 37
CFR
1.114 containing only an information disclosure statement
(37
CFR 1.97 and 1.98) in an application subject
to a notice of allowance under 35
U.S.C. 151, but not
in an application where the last Office action is a final
rejection or an Office action under Ex parte Quayle,
25 USPQ 74, 453 O.G. 213 (Comm’r Pat. 1935), or in
an application that is under appeal. A request for a
suspension of action, an appeal brief or a reply brief
(or related papers) will not be considered a submission
under 37
CFR 1.114. See 37
CFR 1.103 and
1.114(d). The submission, however, may consist of
the arguments in a previously filed appeal brief or
reply brief, or may simply consist of a statement that
incorporates by reference the arguments in a previously
filed appeal brief or reply brief. In addition, a
previously filed amendment after final (whether or not
entered) may satisfy this submission requirement.
 
Arguments submitted after final rejection, which
were entered by the examiner but not found persuasive,
may satisfy the submission requirement if such
arguments are responsive within the meaning of 37
CFR 1.111 to the Office action. Consideration of
whether any submission is responsive within the
meaning of 37
CFR 1.111 to the last outstanding
Office action is done without factoring in the “final”
status of such outstanding Office action. Thus, a reply
which might not be acceptable as a reply under
37
CFR 1.113 when the application is under a final
rejection may be acceptable as a reply under 37
CFR
1.111.
 
 
 
 
 
Status of the Application
 
The Submission:
 
For More Information
 
After Final
 
Must include a reply under 37
CFR 1.111 to the final rejection
(e.g., an amendment filed with the
RCE or a previously-filed after
final amendment).
 
See subsections V. and VI.
 
After Ex Parte Quayle action
 
Must include a reply to the Ex
Parte Quayle action.
 
See subsection IX.
 
After allowance
 
Includes, but not limited to, an
IDS, amendment, new arguments,
or new evidence.
 
See subsection IX.
 
After appeal
 
Must include a reply under 37
CFR 1.111 to the final rejection
(e.g., a statement that incorporates
by reference the arguments in a
previously filed appeal brief or
reply brief).
 
See subsections X., XI., and XII.
 
 
 
 
 
III.INITIAL PROCESSING
 
An RCE will be initially processed by the Technology
Center (TC) assigned the application. Technical
support personnel in the TC will verify that:
 
(A)the RCE was filed on or after May 29, 2000;
 
(B)the application was filed on or after June 8,
1995;
 
(C)the application is a utility or plant application
(e.g., not a design application);
 
(D)the application was pending (i.e., not patented
or abandoned) when the RCE was filed;
 
(E)prosecution in the application is closed (e.g.,
the last Office action is a final rejection, notice of
allowance, or an Office action under Ex parte Quayle,
25 USPQ 74, 453 O.G. 213 (Comm’r Pat. 1935), or
the application is under appeal);
 
(F)the RCE was filed before the payment of the
issue fee or, if not, a petition under 37 CFR 1.313 to
withdraw the application from issue was filed and
granted;
 
(G)the RCE was accompanied by the proper
fee(s) including the RCE fee under 37 CFR 1.17(e);
and
 
(H)the RCE included a submission as required by
37 CFR 1.114.
 
A.Treatment of Improper RCE
 
If one or more conditions for filing an RCE have
not been satisfied, applicant will be so notified. Generally,
a “Notice of Improper Request for Continued
Examination (RCE),” Form PTO-2051, will be mailed
to applicant. An improper RCE will not operate to toll
the running of any time period set in the previous
Office action for reply to avoid abandonment of the
application.
 
If an examiner discovers that an improper RCE has
been forwarded to the examiner in error, the application
should be immediately returned to a head supervisory
legal instruments examiner (HSLIE) within the
TC.
 
1.Prosecution Is Not Closed
 
If prosecution in the application is not closed,
applicant will be notified of the improper RCE and
any amendment/reply will be entered. Thereafter, the
application will be forwarded to the examiner for consideration
of the amendment/reply under 37 CFR
1.111.
 
 
 
 
 
2.Application Is Under Appeal
 
If the application is under appeal and the RCE was
not accompanied by the fee set forth in 37 CFR
1.17(e) and/or a submission as required by 37 CFR  
1.114, the application will be forwarded to the examiner
for appropriate treatment and applicant will be
notified of the improper RCE (See subsection X
below).
 
B.Ambiguous Transmittal Paper
 
If an applicant files a transmittal paper that is  
ambiguous as to whether it is a continued prosecution
application (CPA) under 37 CFR 1.53(d) or a request
for continued examination (RCE) under 37 CFR 1.114(e.g., contains references to both an RCE and a CPA),
and the application is a plant or utility application
filed on or after June 8, 1995, the Office will treat the
transmittal paper as an RCE under 37 CFR 1.114since effective July 14, 2003, CPA practice has been
eliminated as to plant and utility applications. If an
applicant files a transmittal paper that is ambiguous as
to whether it is a CPA or an RCE, and the application
is a design application, the Office will treat the transmittal
paper as a request for a CPA under 37 CFR
1.53(d) since RCE practice does not apply to design
applications. Other papers filed with the transmittal
paper (e.g., a preliminary amendment or information
disclosure statement) will not be taken into account in
determining whether a transmittal paper is a CPA, or
an RCE, or ambiguous as to whether it is a CPA or an
RCE. If, however, applicant files an unambiguous
transmittal paper that is an RCE in a design application,
it will be treated as an improper RCE and a
“Notice of Improper Request for Continued Examination
(RCE),” Form PTO-2051, will be mailed to the
applicant. An RCE is not a type of new application filing.
Therefore, the Office cannot convert an RCE
(whether proper or improper) to a new application
such as a CPA under 37 CFR 1.53(d).
 
C.Treatment of Conditional RCE
 
If a submission is accompanied by a “conditional”
RCE and payment of the RCE fee under 37
CFR
1.17(e) (i.e., an authorization to charge the 37
CFR
1.17(e) fee to a deposit account in the event that the
submission would not otherwise be entered), the
Office will treat the “conditional” RCE and payment
as if an RCE and payment of the fee set forth in
37
CFR 1.17(e) had been filed.
 
D.Treatment of Proper RCE
 
If the conditions for filing an RCE have been satisfied,
the technical support personnel will process the
proper RCE. Any previously filed unentered amendments,
and amendments filed with the RCE will normally
be entered. Such amendments will be entered in
the order in which they were filed in the absence of
any specific instructions for entry. For example, if
applicant files an amendment after final rejection
which is denied entry by the examiner and applicant
subsequently files an RCE with an amendment but the
RCE is silent as to whether or not the previously filed
after-final amendment should be entered, then the
Office will enter both amendments in the order in
which they were filed. If, however, applicant files an
amendment after final rejection which is denied entry
by the examiner and applicant subsequently files an
RCE with an amendment including specific instructions
that the previously filed after-final amendment is
not to be entered, then the Office will enter the
amendment filed with the RCE but will not enter the
after-final amendment. If conflicting amendments
have been previously filed, applicant should clarify
which amendments should be entered upon filing the
RCE (and fee). Applicants are encouraged to file all
amendments no later than the filing of the RCE to
avoid disapproval of entry under 37 CFR 1.111(b).
See MPEP § 714.03(a). If additional time is needed
to prepare and file a supplement (e.g., affidavit or declaration
containing test data) to the previously filed
submission, applicant should consider filing a suspension
of action by the Office under 37 CFR 1.103(c)
with the RCE. For more details on suspension of
action, see MPEP § 709.
 
After entry of any amendments and processing of
the fee(s), the application will be forwarded to the
examiner. Applicant does not need to pay a fee for
excess claims previously paid for prior to the filing of
the RCE. Of course, new claims in excess of the number
previously paid for, which are filed with the RCE
or thereafter, will require payment of the appropriate
fees(s) under 37 CFR 1.16.
 
 
 
 
 
IV.IMPROPER CPA TREATED AS RCE
 
37
CFR 1.53(d)(1) has been amended to provide
that CPA practice under 37
CFR 1.53(d) does notapply to utility and plant applications. Effective July
14, 2003, a CPA may only be filed if the prior nonprovisional
application is a design application that is
complete as defined by 37 CFR 1.51(b).
 
In the event that an applicant files a request for a
CPA (on or after July 14, 2003) of a utility or plant
application that was filed on or after June 8, 1995, the
Office will automatically treat the improper CPA as
an RCE of the prior application (identified in the
request for CPA) under 37
CFR 1.114. If the CPA
does not satisfy the requirements of 37 CFR 1.114 to
be a proper RCE (e.g., lacks a submission under 37
CFR 1.114(b), or is not accompanied by the fee set
forth in 37 CFR 1.17(e)), the improper CPA will be
treated as an improper RCE, and the time period set in
the last Office action (or notice of allowance) will
continue to run. If the time period (considering any
available extension under 37 CFR 1.136(a)) has
expired, the applicant will need to file a petition under
37 CFR 1.137 (with the lacking submission under 37
CFR 1.114(b) or fee set forth in 37 CFR 1.17(e)) to
revive the abandoned application.
 
Effective July 14, 2003, the Office will not convert
an improper CPA into an application under 37
CFR
1.53(b) simply because it is requested by the applicant.
The Office will convert an improper CPA into an
application under 37 CFR 1.53(b) only if the applicant
shows that there are extenuating circumstances that
warrant the burdensome process of converting a CPA
into an application under 37 CFR 1.53(b) (e.g., restoring
the application to pending status and correcting
the improper RCE is not possible because the application
has issued as a patent).
 
Form paragraph 7.42.15 should be used by the
examiner to inform applicant that a CPA is being
treated as a RCE.
 
¶ 7.42.15 Continued Prosecution Application Treated as
Continued Examination under 37 CFR 1.114
 
The request for a continued prosecution application (CPA)
under 37 CFR 1.53(d) filed on [1] is acknowledged. 37 CFR
1.53(d)(1) was amended to provide that a CPA must be for a
design patent and the prior application of the CPA must be a
design application that is complete as defined by 37 CFR 1.51(b).
See Elimination of Continued Prosecution Application Practice as
to Utility and Plant Patent Applications, final rule, 68 Fed. Reg.
32376 (May 30, 2003), 1271 Off. Gaz. Pat. Office 143 (June 24,
2003). Since a CPA of this application is not permitted under 37
CFR 1.53(d)(1), the improper request for a CPA is being treated as
a request for continued examination of this application under 37
CFR 1.114.
 
Examiner Note:
 
1.Use this form paragraph to advise the applicant that a CPA is
being treated as an RCE.
 
2.Also use form paragraph 7.42.04, 7.42.05, 7.42.06, or
7.42.07 as applicable, to acknowledge entry of applicant’s submission
if the fee set forth in 37 CFR 1.17(e) has been timely paid.
 
3. If the fee set forth in 37 CFR 1.17(e) and/or a submission as
required by 37 CFR 1.114 is/are missing and the application is not
under appeal, a Notice of Improper Request for Continued Examination
should be mailed. If the application is under appeal and the
fee set forth in 37 CFR 1.17(e) and/or submission is/are missing,
this form paragraph should be followed with one of form paragraphs
7.42.10 - 7.42.14, as applicable.
 
V.AFTER FINAL REJECTION
 
If an applicant timely files an RCE with the fee set
forth in 37
CFR 1.17(e) and a submission that meets
the reply requirements of 37 CFR 1.111, the Office
will withdraw the finality of any Office action to
which a reply is outstanding and the submission will
be entered and considered. See 37
CFR 1.114(d). The
submission meeting the reply requirements of 37
CFR
1.111 must be timely received to continue prosecution
of an application. In other words, the mere request for,
and payment of the fee for, continued examination
will not operate to toll the running of any time period
set in the previous Office action for reply to avoid
abandonment of the application.
 
Any submission that is an amendment must comply
with the manner of making amendments as set forth in
37 CFR 1.121. See MPEP § 714.03. The amendment
must include markings showing the changes relative
to the last entered amendment. Even though previously
filed unentered amendments after final may satisfy
the submission requirement under 37
CFR
1.114(c), applicants are encouraged to file an amendment
at the time of filing the RCE that incorporates all
of the desired changes, including changes presented in
any previously filed unentered after final amendments,
accompanied by instructions not to
enter the
unentered after final amendments. See subsection VI
for treatment of not fully responsive submissions
including noncompliant amendments.
 
If the RCE is proper, form paragraph 7.42.04should be used to notify applicant that the finality of
the previous Office action has been withdrawn.
 
 
 
 
 
¶ 7.42.04 Continued Examination under 37 CFR 1.114after Final Rejection
 
A request for continued examination under 37 CFR 1.114,
including the fee set forth in 37 CFR 1.17(e), was filed in this
application after final rejection. Since this application is eligible
for continued examination under 37 CFR 1.114, and the fee set
forth in 37 CFR 1.17(e) has been timely paid, the finality of the
previous Office action has been withdrawn pursuant to 37 CFR
1.114. Applicant's submission filed on [1] has been entered.
 
Examiner Note:
 
1.Use this form paragraph if a request for continued examination
(RCE), including the fee set forth in 37 CFR 1.17(e) and a
submission, was filed after a final rejection.
 
2.In bracket 1, insert the date(s) of receipt of the submission.
The submission may be a previously filed amendment(s) after
final rejection and/or an amendment accompanying the RCE. As
set forth in 37 CFR 1.114, a submission may include an information
disclosure statement, an amendment to the written description,
claims, or drawings, new arguments, or new evidence in
support of patentability. If a reply to the Office action is outstanding
the submission must meet the reply requirements of 37 CFR
1.111. Use instead form paragraph 7.42.08 if the submission does
not comply with 37 CFR 1.111. Arguments which were previously
submitted in a reply after final rejection, which were entered
but not found persuasive, may be considered a submission under
37 CFR 1.114 if the arguments are responsive within the meaning
of 37 CFR 1.111 to the outstanding Office action. If the last sentence
of this form paragraph does not apply (e.g., the submission
consists of previously entered arguments), it may be deleted or
modified as necessary.
 
3.To be eligible for continued examination under 37 CFR
1.114, the application must be a utility or plant application filed
under 35 U.S.C. 111(a) on or after June 8, 1995, or an international
application filed under 35 U.S.C. 363 on or after June 8,
1995. The RCE must be filed on or after May 29, 2000.
 
VI.NOT FULLY RESPONSIVE SUBMISSION
 
If reply to a final Office action is outstanding and
the submission is not fully responsive to the final
Office action, then it must be a bona fide attempt to
provide a complete reply to the final Office action in
order for the RCE to toll the period for reply.
 
If the submission is not a bona fide attempt to provide
a complete reply, the RCE should be treated as an
improper RCE. Thus, a “Notice of Improper Request
for Continued Examination (RCE),” Form PTO-2051,
should be prepared by the technical support personnel
and mailed to the applicant indicating that the request
was not accompanied by a submission complying
with the requirements of 37 CFR 1.111 (see 37 CFR
1.114(c)). The RCE will not toll the period for reply
and the application will be abandoned after the expiration
of the statutory period for reply if no submission
complying with 37 CFR 1.111 is filed. For
example, if a reply to a final Office action is outstanding
and the submission only includes an information
disclosure statement (IDS), the submission will not be
considered a bona fide attempt to provide a complete
reply to the final Office action and the period for reply
will not be tolled. Similarly, an amendment that would
cancel all of the claims in an application and does not
present any new or substitute claims is not a bona fideattempt to advance the application to final action. The
Office will not enter such an amendment. See Exxon
Corp. v. Phillips Petroleum Co., 265 F.3d 1249,
60
USPQ2d 1368 (Fed. Cir. 2001).
 
If the submission is a bona fide attempt to provide a
complete reply, applicant should be informed that the
submission is not fully responsive to the final Office
action, along with the reasons why, and given a new
shortened statutory period of one month or thirty days
(whichever is longer) to complete the reply. See
37
CFR 1.135(c). Form paragraph 7.42.08 set forth
below should be used.
 
Situations where a submission is not a fully responsive
submission, but is a bona fide attempt to provide
a complete reply are:
 
(A)Non-compliant amendment - An RCE filed
with a submission which is an amendment that is not
in compliance with 37 CFR 1.121, but which is a
bona fide attempt to provide a complete reply to the
last Office action, should be treated as a proper RCE
and a Notice of Noncompliant Amendment should be
mailed to the applicant. Applicant is given a time
period of one month or thirty days from the mailing
date of the notice, whichever is longer, to provide an
amendment complying with 37 CFR 1.121. See
MPEP § 714.03 for information on the amendment
practice under 37 CFR 1.121.
 
(B)Presentation of claims for different invention
- Applicants cannot file an RCE to obtain continued
examination on the basis of claims that are independent
and distinct from the claims previously claimed
and examined as a matter of right (i.e., applicant cannot
switch inventions). See 37 CFR 1.145. If an RCE
is filed with an amendment canceling all claims
drawn to the elected invention and presenting only
claims drawn to a nonelected invention, the RCE
should be treated as a proper RCE but the amendment
should not be entered. The amendment is not fully
responsive and applicant should be given a time
 
 
 
 
 
period of one month or thirty days (whichever is
longer) to submit a complete reply. See MPEP
§
821.03. Form paragraphs 8.04 or 8.26 should be
used as appropriate.
 
¶ 7.42.08 Request For Continued Examination With
Submission Filed Under 37 CFR 1.114 Which is Not Fully
Responsive
 
Receipt is acknowledged of a request for continued examination
under 37 CFR 1.114, including the fee set forth in 37 CFR
1.17(e) and a submission, filed on [1]. The submission, however,
is not fully responsive to the prior Office action because [2]. Since
the submission appears to be a bona fide attempt to provide a
complete reply to the prior Office action, applicant is given a
shortened statutory period of ONE MONTH or THIRTY DAYS
from the mailing date of this letter, whichever is longer, to submit
a complete reply. This shortened statutory period for reply supersedes
the time period set in the prior Office action. This time
period may be extended pursuant to 37 CFR 1.136(a).
 
Examiner Note:
 
1.Use this form paragraph to acknowledge an RCE filed with
the fee and a submission where the submission is not fully responsive
to the prior Office action. This form paragraph may be used
for any RCE filed with a submission which is not fully responsive,
i.e., an RCE filed after final rejection, after allowance, after an
Office action under Ex parte Quayle, 25 USPQ 74, 453 O.G. 213
(Comm’r Pat. 1935), or after appeal.
 
2.In bracket 2, identify the reasons why the examiner considers
the submission not to be fully responsive.
 
3.To be eligible for continued examination under 37 CFR
1.114, the application must be a utility or plant application filed
under 35 U.S.C. 111(a) on or after June 8, 1995, or an international
application filed under 35 U.S.C. 363 on or after June 8,
1995. The RCE must be filed on or after May 29, 2000.
 
VII.NEW MATTER
 
35
U.S.C. 132(a) provides that “[n]o amendment
shall introduce new matter into the disclosure of the
invention.” Any amendment entered pursuant to
37
CFR 1.114 that is determined to contain new matter
should be treated in the same manner that a reply
under 37
CFR 1.111 determined to contain new matter
is currently treated. See MPEP § 706.03(o). In those
instances in which an applicant seeks to add new matter
to the disclosure of an application, the procedure in
37
CFR 1.114 is not available, and the applicant must
file a continuation-in-part application under 37
CFR
1.53(b) containing such new matter.
 
VIII.FIRST ACTION FINAL AFTER FILING
AN RCE
 
The action immediately subsequent to the filing of
an RCE with a submission and fee under 37
CFR
1.114 may be made final only if the conditions set
forth in MPEP § 706.07(b) for making a first action
final in a continuing application are met.
 
Form paragraph 7.42.09 should be used if it is
appropriate to make the first action after the filing of
the RCE final.
 
¶ 7.42.09 Action Is Final, First Action Following Request
for Continued Examination under 37 CFR 1.114
 
All claims are drawn to the same invention claimed in the
application prior to the entry of the submission under 37 CFR
1.114 and could have been finally rejected on the grounds and art
of record in the next Office action if they had been entered in the
application prior to entry under 37
CFR 1.114. Accordingly,
THIS ACTION IS MADE FINAL even though it is a first action
after the filing of a request for continued examination and the submission
under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is
reminded of the extension of time policy as set forth in 37 CFR
1.136(a).
 
A shortened statutory period for reply to this final action is set
to expire THREE MONTHS from the mailing date of this action.
In the event a first reply is filed within TWO MONTHS of the
mailing date of this final action and the advisory action is not
mailed until after the end of the THREE-MONTH shortened statutory
period, then the shortened statutory period will expire on the
date the advisory action is mailed, and any extension fee pursuant
to 37 CFR 1.136(a) will be calculated from the mailing date of the
advisory action. In no event, however, will the statutory period for
reply expire later than SIX MONTHS from the mailing date of
this final action.
 
Examiner Note:
 
This form paragraph is for a first action final rejection following
a Request for Continued Examination filed under 37 CFR
1.114.
 
IX.AFTER ALLOWANCE OR QUAYLE ACTION
 
 
The phrase “withdraw the finality of any Office
action” in 37
CFR 1.114(d) includes the withdrawal
of the finality of a final rejection, as well as the closing
of prosecution by an Office action under Ex parte
Quayle, 25 USPQ 74, 453 O.G. 213 (Comm’r Pat.
1935), or notice of allowance under 35
U.S.C. 151(or notice of allowability). Therefore, if an applicant
files an RCE with the fee set forth in 37
CFR 1.17(e)
and a submission in an application which has been
allowed, prosecution will be reopened. If the issue fee
 
 
 
 
 
has been paid, however, payment of the fee for an
RCE and a submission without a petition under
37
CFR 1.313 to
withdraw the application from issue
will not avoid
issuance of the application as a patent.
If an RCE (with the fee and a submission) is filed in
an allowed application prior to payment of the issue
fee, a petition under 37 CFR 1.313 to withdraw the
application from issue is not required.
 
If an RCE complying with the requirements of
37
CFR 1.114 is filed in an allowed application after
the issue fee has been paid and a petition under
37
CFR 1.313 is also filed and granted, prosecution
will be reopened. Applicant may not obtain a refund
of the issue fee. If, however, the application is subsequently
allowed, the Notice of Allowance will reflect
an issue fee amount that is due that is the difference
between the current issue fee amount and the issue fee
that was previously paid.
 
Form paragraph 7.42.05 should be used to notify
applicant that prosecution has been reopened.
 
¶ 7.42.05 Continued Examination Under 37 CFR 1.114After Allowance or Quayle Action
 
A request for continued examination under 37 CFR 1.114,
including the fee set forth in 37 CFR 1.17(e), was filed in this
application after allowance or after an Office action under Ex
Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm’r Pat. 1935).
Since this application is eligible for continued examination under
37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been
timely paid, prosecution in this application has been reopened
pursuant to 37 CFR 1.114. Applicant’s submission filed on [1] has
been entered.
 
Examiner Note:
 
1.Use this form paragraph if a request for continued examination
(RCE), including the fee set forth in 37 CFR 1.17(e) and a
submission, was filed after a notice of allowance (or notice of
allowability) or Office action under Ex parte Quayle, 25 USPQ
74, 453 O.G. 213 (Comm’r Pat. 1935).
 
2.In bracket 1 insert the date(s) of receipt of the submission. As
set forth in 37 CFR 1.114, a submission may include an information
disclosure statement, an amendment to the written description,
claims, or drawings, new arguments, or new evidence in
support of patentability.
 
3.To be eligible for continued examination under 37 CFR
1.114, the application must be a utility or plant application filed
under 35 U.S.C. 111(a) on or after June 8, 1995, or an international
application filed under 35 U.S.C. 363 on or after June 8,
1995. The RCE must be filed on or after May 29, 2000.
 
4.If the RCE was filed after the issue fee was paid, a petition
under 37 CFR 1.313 to withdraw the application from issue must
have been filed and granted.
 
X.AFTER APPEAL BUT BEFORE DECISION
BY THE BOARD
 
If an applicant files an RCE under 37
CFR 1.114after the filing of a Notice of Appeal to the Board of
Patent Appeals and Interferences (Board), but prior to
a decision on the appeal, it will be treated as a request
to withdraw the appeal and to reopen prosecution of
the application before the examiner, regardless of
whether the RCE is proper or improper. See 37 CFR
1.114(d). The Office will withdraw the appeal upon
the filing of an RCE. Applicants should advise the
Board when an RCE under 37 CFR 1.114 is filed in an
application containing an appeal awaiting decision.
Otherwise, the Board of Patent Appeals and Interferences
may refuse to vacate a decision rendered after
the filing (but before the recognition by the Office) of
an RCE under 37 CFR 1.114.
 
A.Proper RCE
 
If the RCE is accompanied by a fee (37 CFR
1.17(e)) and a submission that includes a reply which
is responsive within the meaning of 37 CFR 1.111 to
the last outstanding Office action, the Office will
withdraw the finality of the last Office action and the
submission will be entered and considered. If the submission
is not fully responsive to the last outstanding
Office action but is considered to be a bona fideattempt to provide a complete reply, applicant will be
notified that the submission is not fully responsive,
along with the reasons why, and will be given a new
time period to complete the reply (using form paragraph
7.42.08). See 37 CFR 1.135(c) and subsection
VI.
 
If the RCE is proper, form paragraph 7.42.06
should be used to notify applicant that the appeal has
been withdrawn and prosecution has been reopened.
 
¶ 7.42.06 Continued Examination Under 37 CFR 1.114After Appeal But Before A Board Decision
 
A request for continued examination under 37 CFR 1.114 was
filed in this application after appeal to the Board of Patent
Appeals and Interferences, but prior to a decision on the appeal.
Since this application is eligible for continued examination under
37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been
timely paid, the appeal has been withdrawn pursuant to 37 CFR1.114 and prosecution in this application has been reopened pursuant
to 37 CFR 1.114. Applicant’s submission filed on [1] has
been entered.
 
 
 
 
 
Examiner Note:
 
1.Use this form paragraph if a request for continued examination
(RCE), including the fee set forth in 37 CFR 1.17(e) and a
submission, was filed after a Notice of Appeal or an appeal brief,
but there has not been a decision on the appeal. Note that it is not
necessary for an appeal brief to have been filed.
 
2.As set forth in 37 CFR 1.114, a submission may include an
information disclosure statement, an amendment to the written
description, claims, or drawings, new arguments, or new evidence
in support of patentability. The submission may consist of arguments
in a previously filed appeal brief or reply brief, or an incorporation
of such arguments in the transmittal letter or other paper
accompanying the RCE.
 
3.To be eligible for continued examination under 37 CFR
1.114, the application must be a utility or plant application filed
under 35 U.S.C. 111(a) on or after June 8, 1995, or an international
application filed under 35 U.S.C. 363 on or after June 8,
1995. The RCE must be filed on or after May 29, 2000.
 
B.Improper RCE
 
The appeal will be withdrawn even if the RCE is
improper. If an RCE is filed in an application after
appeal to the Board but the request does not include
the fee required by 37 CFR 1.17(e) or the submission
required by 37 CFR 1.114, or both, the examiner
should treat the request as an improper RCE and withdraw
the appeal pursuant to 37 CFR 1.114(d). If the
submission is not considered to be a bona fide attempt
to provide a complete reply to the last outstanding
Office action (e.g., an IDS only), the submission will
be treated as an improper submission or no submission
at all under 37 CFR 1.114(c) (thus the request is
an improper RCE). See subsection VI.
 
Upon withdrawal of the appeal, the application
will be treated in accordance with MPEP § 1215.01based on whether there are any allowed claims or not.
The proceedings as to the rejected claims are considered
terminated. Therefore, if no claim is allowed, the
application is abandoned. Claims which are allowable
except for their dependency from rejected claims will
be treated as if they were rejected. See MPEP §
1215.01. If there is at least one allowed claim, the
application should be passed to issue on the allowed
claim(s). If there is at least one allowed claim but formal
matters are outstanding, applicant should be
given a shortened statutory period of one month or
thirty days (whichever is longer) in which to correct
the formal matters. Form paragraphs 7.42.10-7.42.14should be used as appropriate.
 
¶ 7.42.10 Application On Appeal, Request For Continued
Examination Under 37 CFR 1.114 Without Submission/
Fee; No Claims Allowed
 
A request for continued examination under 37 CFR 1.114 was
filed in this application on [1] after appeal to the Board of Patent
Appeals and Interferences. Therefore, the appeal has been withdrawn
pursuant to 37 CFR 1.114. The request, however, lacks the
fee required by 37 CFR 1.17(e) and/or the submission required by
37 CFR 1.114. Since the proceedings as to the rejected claims are
considered terminated, and no claim is allowed, the application is
abandoned. See MPEP 1215.01.
 
Examiner Note:
 
1.If a request for continued examination was filed after a
Notice of Appeal or after an appeal brief, but before a decision on
the appeal, and the request lacks the fee set forth in 37 CFR
1.17(e) or a submission or both, use this form paragraph to withdraw
the appeal and hold the application abandoned if there are no
allowed claims.
 
2.To be eligible for continued examination under 37 CFR
1.114, the application must be a utility or plant application filed
under 35 U.S.C. 111(a) on or after June 8, 1995, or an international
application filed under 35 U.S.C. 363 on or after June 8,
1995. The RCE must be filed on or after May 29, 2000.
 
¶ 7.42.11 Application On Appeal, Request For Continued
Examination Under 37 CFR 1.114 Without Submission;
Claim Allowed
 
A request for continued examination under 37 CFR 1.114,
including the fee set forth in 37 CFR 1.17(e), was filed in this
application on [1] after appeal to the Board of Patent Appeals and
Interferences. Therefore, the appeal has been withdrawn pursuant
to 37 CFR 1.114. The request, however, lacks the submission
required by 37 CFR 1.114. Since the proceedings as to the rejected
claims are considered terminated, the application will be passed to
issue on allowed claim[2] . Claim[3] been canceled. See MPEP §
1215.01.
 
Examiner Note:
 
1.If a request for continued examination, including the fee, was
filed after a Notice of Appeal or after an appeal brief but before a
decision on the appeal, and the request lacks the required submission,
use this form paragraph to withdraw the appeal and pass the
application to issue on the allowed claims.
 
2.In bracket 3, insert the claim number(s) of the claim(s) which
has/have been canceled followed by either --has-- or --have--.
Claims which have been indicated as containing allowable subject
matter but are objected to as being dependent upon a rejected
claim are to be considered as if they were rejected and therefore
are to be canceled along with the rejected claims. See MPEP §
1215.01.
 
3.This form paragraph should be used with the mailing of a
Notice of Allowability.
 
4.To be eligible for continued examination under 37 CFR
1.114, the application must be a utility or plant application filed
under 35 U.S.C. 111(a) on or after June 8, 1995, or an international
application filed under 35 U.S.C. 363 on or after June 8,
1995. The RCE must be filed on or after May 29, 2000.
 
 
 
 
 
¶ 7.42.12 Application on Appeal, Request for Continued
Examination under 37 CFR 1.114 Without Submission;
Claim Allowed with Formal Matters Outstanding
 
A request for continued examination under 37 CFR 1.114,
including the fee set forth in 37 CFR 1.17(e), was filed in this
application on [1] after appeal to the Board of Patent Appeals and
Interferences. Therefore, the appeal has been withdrawn pursuant
to 37 CFR 1.114. The request, however, lacks the submission
required by 37 CFR 1.114. The proceedings as to the rejected
claims are considered terminated, and the application will be
passed to issue on allowed claim [2] provided the following formal
matters are promptly corrected: [3]. Prosecution is otherwise
closed. See MPEP § 1215.01. Applicant is required to make the
necessary corrections addressing the outstanding formal matters
within a shortened statutory period set to expire ONE MONTH or
THIRTY DAYS, whichever is longer, from the mailing date of
this letter. Extensions of time may be granted under 37 CFR1.136.
 
Examiner Note:
 
1.If a request for continued examination, including the fee, was
filed after a Notice of Appeal or an appeal brief but before a decision
on the appeal, and the request lacks the required submission,
use this form paragraph to withdraw the appeal if there are
allowed claims but outstanding formal matters need to be corrected.
 
 
2.In bracket 3, explain the formal matters which must be corrected.
 
 
3.To be eligible for continued examination under 37 CFR
1.114, the application must be a utility or plant application filed
under 35 U.S.C. 111(a) on or after June 8, 1995, or an international
application filed under 35 U.S.C. 363 on or after June 8,
1995. The RCE must be filed on or after May 29, 2000.
 
¶ 7.42.13 Application on Appeal, Request for Continued
Examination under 37 CFR 1.114 Without Fee; Claim
Allowed
 
A request for continued examination under 37 CFR 1.114,
including a submission, was filed in this application on [1] after
appeal to the Board of Patent Appeals and Interferences. Therefore,
the appeal has been withdrawn pursuant to 37 CFR 1.114.
The request, however, lacks the fee required by 37 CFR 1.17(e).
Therefore, the submission has not been entered. See 37 CFR
1.116(c). Since the proceedings as to the rejected claims are considered
terminated, the application will be passed to issue on
allowed claim[2]. Claim[3] been canceled. See MPEP § 1215.01.
 
Examiner Note:
 
1.If a request for continued examination, including the submission,
was filed after a Notice of Appeal or an appeal brief but
before a decision on the appeal, and the request lacks the required
fee, use this form paragraph to withdraw the appeal and pass the
application to issue on the allowed claims.
 
2.In bracket 3, insert the claim number(s) of the claim(s) which
has/have been canceled followed by either --has-- or --have--.
Claims which have been indicated as containing allowable subject
matter but are objected to as being dependent upon a rejected
claim are to be considered as if they were rejected and therefore
are to be canceled along with the rejected claims. See MPEP §
1215.01.
 
3.This form paragraph should be used with the mailing of a
Notice of Allowability.
 
4.To be eligible for continued examination under 37 CFR
1.114, the application must be a utility or plant application filed
under 35 U.S.C. 111(a) on or after June 8, 1995, or an international
application filed under 35 U.S.C. 363 on or after June 8,
1995. The RCE must be filed on or after May 29, 2000.
 
¶ 7.42.14 Application on Appeal, Request for Continued
Examination under 37 CFR 1.114 Without Fee; Claim
Allowed With Formal Matters Outstanding
 
A request for continued examination under 37 CFR 1.114,
including a submission, was filed in this application on [1] after
appeal to the Board of Patent Appeals and Interferences. Therefore,
the appeal has been withdrawn pursuant to 37 CFR 1.114.
The request, however, lacks the fee required by 37 CFR 1.17(e).
Therefore, the submission has not been entered. See 37 CFR
1.116(c). The proceedings as to the rejected claims are considered
terminated, and the application will be passed to issue on allowed
claim[2] provided the following formal matters are promptly corrected:
[3]. Prosecution is otherwise closed. See MPEP §
1215.01.Applicant is required to make the necessary corrections
addressing the outstanding formal matters within a shortened statutory
period set to expire ONE MONTH or THIRTY DAYS,
whichever is longer, from the mailing date of this letter. Extensions
of time may be granted under 37 CFR 1.136.
 
Examiner Note:
 
1.If a request for continued examination, including a submission,
was filed after a Notice of Appeal or an appeal brief but
before a decision on the appeal, and the request lacks the fee
required by 37 CFR 1.17(e), use this form paragraph to withdraw
the appeal if there are allowed claims but outstanding formal matters
need to be corrected.
 
2. In bracket 3, explain the formal matters that must be corrected.
 
 
3.To be eligible for continued examination under 37 CFR
1.114, the application must be a utility or plant application filed
under 35 U.S.C. 111(a) on or after June 8, 1995, or an international
application filed under 35 U.S.C. 363 on or after June 8,
1995. The RCE must be filed on or after May 29, 2000.
 
XI.AFTER DECISION BY THE BOARD
 
A.Proper RCE After Board Decision
 
The filing of an RCE (accompanied by the fee and a
submission) after a decision by the Board of Patent
Appeals and Interferences, but before the filing of
a
Notice of Appeal to the Court of Appeals for the
Federal Circuit (Federal Circuit) or the commencement
of a civil action in federal district court, will
also
result in the finality of the rejection or
action
being withdrawn and the submission being
 
 
 
 
 
considered. Generally, the time period for filing a
notice of appeal to the Federal Circuit or for commencing
a civil action is within two months of the
Board’s decision. See 37
CFR 1.304 and MPEP §
1216. Thus, an RCE filed within this two month time
period and before the filing of a notice of appeal to the
Federal Circuit or the commencement of a civil action
would be timely filed. In addition to the res judicataeffect of a Board of Patent Appeals and Interferences
decision in an application (see MPEP § 706.03(w)), a
Board decision in an application is the “law of the
case,” and is thus controlling in that application and
any subsequent, related application. See MPEP
§
1214.01 (where a new ground of rejection is entered
by the Board of Patent Appeals and Interferences pursuant
to 37
CFR 1.196(b), argument without either
amendment of the claims so rejected or the submission
of a showing of facts can only result in a final
rejection of the claims, since the examiner is without
authority to allow the claims unless amended or
unless the rejection is overcome by a showing of facts
not before the Board of Patent Appeals and Interferences).
As such, a submission containing arguments
without either amendment of the rejected claims or
the submission of a showing of facts will not be effective
to remove such rejection.
 
Form paragraph 7.42.07 should be used to notify
applicant that the appeal has been withdrawn and
prosecution has been reopened.
 
¶ 7.42.07 Continued Examination under 37 CFR 1.114after Board Decision but Before Further Appeal or Civil
Action
 
A request for continued examination under 37 CFR 1.114 was
filed in this application after a decision by the Board of Patent
Appeals and Interferences, but before the filing of a Notice of
Appeal to the Court of Appeals for the Federal Circuit or the commencement
of a civil action. Since this application is eligible for
continued examination under 37 CFR 1.114 and the fee set forth
in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn
pursuant to 37 CFR 1.114 and prosecution in this application
has been reopened pursuant to 37 CFR 1.114. Applicant’s
submission filed on [1] has been entered.
 
Examiner Note:
 
1.Use this form paragraph if a request for continued examination
(RCE), including the fee set forth in 37 CFR 1.17(e) and a
submission, was timely filed after a decision by the Board of
Patent Appeals and Interferences but before further appeal or civil
action. Generally, the time for filing a notice of appeal to the Federal
Circuit or for commencing a civil action is within two months
of the Board's decision. See MPEP § 1216 and 37 CFR 1.304.
 
2.A Board of Patent Appeals and Interferences decision in an
application has res judicata effect and is the “law of the case” and
is thus controlling in that application and any subsequent, related
application. Therefore, a submission containing arguments without
either an amendment of the rejected claims or the submission
of a showing of facts will not be effective to remove such rejection.
See MPEP § 706.03(w) and 1214.01.
 
3.To be eligible for continued examination under 37 CFR
1.114, the application must be a utility or plant application filed
under 35 U.S.C. 111(a) on or after June 8, 1995, or an international
application filed under 35 U.S.C. 363 on or after June 8,
1995. The RCE must be filed on or after May 29, 2000.
 
B.Improper RCE After Board Decision
 
If an RCE is filed after a decision by the Board of
Patent Appeals and Interferences, but before the filing  
of a Notice of Appeal to the Federal Circuit or the  
of a Notice of Appeal to the Federal Circuit or the  
commencement of a civil action in federal district
court, and the RCE was not accompanied by the fee
and/or the submission, the examiner should notify the
applicant that the RCE is improper by using form
paragraph 7.42.16 set forth below. If the time for
seeking court review has passed without such review
being sought, the examiner should include the form
paragraph with the mailing of a Notice of Allowability
or a Notice of Abandonment depending on the status
of the claims. See MPEP § 1214.06. If the time for
seeking court review remains, the examiner should
include the form paragraph on a PTOL-90. No time
period should be set. If a submission is filed with the
RCE, but the fee is missing, the examiner should also
include a statement as to whether or not the submission
has been entered. In general, such a submission
should not be entered. If, however, the submission is
an amendment that obviously places the application in
condition for allowance, it should be entered with the
approval of the supervisory patent examiner. See
MPEP § 1214.07. Form paragraph 7.42.16 should not
be used if the application is not a utility or plant application
filed under 35 U.S.C. 111(a) on or after June 8,
1995, or an international application filed under
35
U.S.C. 363 on or after June 8, 1995. In that situation,
a “Notice of Improper Request for Continued
Examination (RCE),” Form PTO-2051, should be prepared
and mailed by the technical support personnel
to notify applicant that continued examination
does
not apply to the application. When the time
for
seeking court review has passed without such
review being sought, the examiner must take up the
application for consideration. See MPEP § 1214.06for guidance on the action to be taken.
¶ 7.42.16 After Board Decision But Before Further Appeal
Or Civil Action, Request for Continued Examination Under
37 CFR 1.114 Without Submission and/or Fee
A request for continued examination (RCE) under 37 CFR
1.114 was filed in this application on [1] after a decision by the
Board of Patent Appeals and Interferences, but before the filing of
a Notice of Appeal to the Court of Appeals for the Federal Circuit
or the commencement of a civil action. The request, however,
lacks the fee required by 37 CFR 1.17(e) and/or the submission
required by 37 CFR 1.114. Accordingly, the RCE is improper and
any time period running was not tolled by the filing of the
improper request.
Examiner Note:
1.This form paragraph should be used with the mailing of a
Notice of Allowability or a Notice of Abandonment, as appropriate,
if the time for seeking court review has passed without such
review being sought, or it should be used on a PTOL-90 if time
still remains.
2.This form paragraph should not be used if the application is
not a utility application or a plant application filed under 35
U.S.C. 111(a) on or after June 8, 1995, or an international application
filed under 35 U.S.C. 363 on or after June 8, 1995. In that situation,
a “Notice of Improper Request for Continued Examination
(RCE),” Form PTO-2051, should be prepared and mailed by the
technical support personnel to notify applicant that continued
examination does not apply to the application.
3.In general, if a submission was filed with the improper RCE
in this situation, it should not be entered. An exception exists for
an amendment which obviously places the application in condition
for allowance. See MPEP § 1214.07. The examiner should
also include a statement as to whether or not any such submission
has been entered (e.g., “The submission filed with the improper
RCE has not been entered.”).
XII.AFTER APPEAL TO THE FEDERAL CIRCUIT
OR CIVIL ACTION
The procedure set forth in 37
CFR 1.114 is
not
available in an application after the filing
of
a
Notice of Appeal to the Federal Circuit or the
commencement of a civil action in federal district  
commencement of a civil action in federal district  
court, unless the appeal or civil action is terminated  
court, unless the appeal or civil action is terminated  
Line 9,484: Line 4,981:
an unsuccessful appeal or civil action results in abandonment  
an unsuccessful appeal or civil action results in abandonment  
of the application. See MPEP § 1216.01.
of the application. See MPEP § 1216.01.
XIII.FORMS
Form PTO/SB/30, “Request for Continued Examination
(RCE) Transmittal,” may be used by applicant
for filing a RCE under 37 CFR 1.114. The form used
by the Technology Centers to notify applicant of an
improper RCE, “Notice of Improper Request for Continued
Examination (RCE),” Form PTO-2051, is
shown below.
Form PTO/SB/30. Request for Continued Examination (RCE) TransmittalForm PTO/SB/30. Request for Continued Examination (RCE) Transmittal
Doc Code:PTO/SB/30(07-06)
Approved for use through 09/30/2006. OMB 0651-0031
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
Under the Paperwork Reduction Act of 1995, no persons are requiredto respond to a collection of information unlessitcontains a valid OMB control number.
Application NumberFiling Date
First Named InventorArt Unit
Examiner NameRequestforContinued Examination (RCE)
Transmittal
Address to:
Mail Stop RCE
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450Attorney Docket NumberThis is a Request for Continued Examination (RCE) under 37 CFR 1.114 of the above-identified application.
Request for Continued Examination (RCE) practice under 37 CFR1.114 does not applyto any utility or plant application filed prior to June 8,
1995, or to any design application. See Instruction Sheet for RCEs(not to be submitted to the USPTO) on page 2.
1. Submission required under 37 CFR 1.114Note: If the RCE is proper, any previously filed unentered amendments and
amendments enclosed with the RCEwill be entered in the order in which theywerefiled unless applicant instructs otherwise. Ifapplicant does not wish to have any previously filed unentered amendment(s) entered, applicant must request non-entry of such
amendment(s).
a. Previously submitted. If a final Office action is outstanding, anyamendments filed after the final Office action may be
considered as a submission evenif this box is not checked.
i. Consider the arguments in the Appeal Brief or Reply Brief previously filed on ________________
Ii. Other _____________________________________________________________
b.EnclosedI.Amendment/Replyiii.Information Disclosure Statement (IDS)
ii.Affidavit(s)/ Declaration(s) iv.Other______________________________
2.Miscellaneousa.
Suspension of action on the above-identified application is requested under 37 CFR1.103(c) for aperiod of ________ months.(Period ofsuspension shall notexceed 3months; Fee under 37 CFR 1.17(i)required)
b.Other____________________________________________________
3. Fees The RCE fee under 37 CFR 1.17(e) is required by 37 CFR 1.114when the RCE is filed.
a.
The Directoris hereby authorized to charge thefollowingfees,any underpayment of fees, or credit anyoverpayments, to
Deposit Account No. ____________________.I have enclosed a duplicate copy of this sheet.
i.RCE fee required under 37 CFR1.17(e)
ii.Extension of time fee (37 CFR 1.136 and 1.17)
iii.Other ___________________________________________________________________________________
b.Check in the amount of $ __________________________________enclosedc.Payment by credit card (Form PTO-2038 enclosed)
WARNING: Information on thisformmaybecome public.Credit card information should notbe includedonthis form. Provide credit
card information and authorizationon PTO-2038.
SIGNATUREOF APPLICANT, ATTORNEY, OR AGENTREQUIREDSignatureDateName(Print/Type)RegistrationNo.
CERTIFICATE OF MAILING OR TRANSMISSIONI hereby certify that this correspondence is being deposited withthe United States PostalService with sufficient postage asfirstclass mail in an envelopeaddressed to: Mail Stop RCE, Commissioner for Patents,P.O.Box 1450, Alexandria, VA 22313-1450 orfacsimiletransmitted to the U.S. Patent and TrademarkOffice on the date shown below.
SignatureName (Print/Type)DateThis collection of information is requiredby 37 CFR 1.114. The information is required to obtainor retain a benefit by the public which is to file (and by the USPTOto process)an application. Confidentiality is governed by35 U.S.C. 122 and37 CFR 1.11 and 1.14.This collection is estimatedto take 12 minutesto complete,
including gathering, preparing, andsubmitting thecompletedapplicationformtothe USPTO. Time willvary depending upon the individual case. Any comments onthe amount of timeyou require to completethis form and/or suggestions for reducingthis burden, should be sent to the Chief Information Officer, U.S. Patent andTrademark Office,U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THISADDRESS.SEND TO:Mail Stop RCE,Commissioner for Patents, P.O. Box 1450,Alexandria, VA22313-1450.
If you need assistance in completing the form, call 1-800-PTO-9199 and select option 2.
Form PTO/SB/30 Instruction Sheet for RCEsForm PTO/SB/30 Instruction Sheet for RCEs
PTO/SB/30(07-06)
Approved for use through 09/30/2006. OMB 0651-0031
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number.
Instruction Sheet for RCEs
(not to be submitted to the USPTO)
NOTES:
An RCE is not a new application, and filing an RCE will not result in an application being accorded a new filing
date.
Filing Qualifications:
The application must be a utility or plant application filed on or after June 8, 1995. The application cannot be a provisional
application, a utility or plant application filed before June 8, 1995, a design application, or a patent under reexamination. See37 CFR 1.114(e).
Filing Requirements:
Prosecution in the application must be closed.Prosecution is closed if the application is under appeal, or the last Office
action is a final action, a notice of allowance, or an action that otherwise closes prosecution in the application (e.g., an Officeaction under Ex parte Quayle). See 37 CFR 1.114(b).
A submission and a fee are required at the time the RCE is filed. If reply to an Office action under 35 U.S.C. 132 is
outstanding (e.g., the application is under final rejection), the submission must meet the reply requirements of 37 CFR 1.111. If
there is no outstanding Office action, the submission can be an information disclosure statement, an amendment, new
arguments, or new evidence. See 37 CFR 1.114(c). The submission may be a previously filed amendment (e.g., an
amendment after final rejection).
WARNINGS:
Request for Suspension of Action:
All RCE filing requirements must be met before suspension of action is granted. A request for a suspension of
action under 37 CFR 1.103(c) does not satisfy the submission requirement and does not permit the filing of the
required submission to be suspended.
Improper RCE will NOT toll Any Time Period:
Before Appeal - If the RCE is improper (e.g., prosecution in the application is not closed or the submission or
fee has not been filed) and the application is not under appeal, the time period set forth in the last Office action
will continue to run and the application will be abandoned after the statutory time period has expired if a reply to
the Office action is not timely filed. No additional time will be given to correct the improper RCE.
Under Appeal - If the RCE is improper (e.g., the submission or the fee has not been filed) and the application is
under appeal, the improper RCE is effective to withdraw the appeal. Withdrawal of the appeal results in the
allowance or abandonment of the application depending on the status of the claims. If there are no allowed
claims, the application is abandoned. If there is at least one allowed claim, the application will be passed to issue
on the allowed claim(s). See MPEP 1215.01.
See MPEP 706.07(h) for further information on the RCE practice.
Page 2 of 2
Privacy Act StatementPrivacy Act Statement
Privacy Act Statement
ThePrivacy Act of 1974 (P.L. 93-579) requires that you be given certain information in connection
with your submission of the attached form related to a patent application or patent. Accordingly,
pursuant to the requirements of the Act, please be advised that: (1) the general authority for the
collection of this information is 35 U.S.C. 2(b)(2); (2) furnishing of the information solicited is voluntary;
and (3) the principal purpose for which the information is used by the U.S. Patent and Trademark
Office is to process and/or examine your submission related to a patent application or patent. If you do
not furnish the requested information, the U.S. Patent and Trademark Office may not be able to
process and/or examine your submission, which may result in termination of proceedings or
abandonment of the application or expiration of the patent.
The information provided by you in this form will be subject to the following routine uses:
1. The information on this form will be treated confidentially to the extent allowed under the
Freedom of Information Act (5 U.S.C. 552) and the Privacy Act (5 U.S.C 552a). Records from
this system of records may be disclosed to the Department of Justice to determine whether
disclosure of these records is required by the Freedom of Information Act.
2. A record from this system of records may be disclosed, as a routine use, in the course of
presenting evidence to a court, magistrate, or administrative tribunal, including disclosures to
opposing counsel in the course of settlement negotiations.
3. A record in this system of records may be disclosed, as a routine use, to a Member of
Congress submitting a request involving an individual, to whom the record pertains, when the
individual has requested assistance from the Member with respect to the subject matter of the
record.
4. A record in this system of records may be disclosed, as a routine use, to a contractor of the
Agency having need for the information in order to perform a contract. Recipients of
information shall be required to comply with the requirements of the Privacy Act of 1974, as
amended, pursuant to 5 U.S.C. 552a(m).
5. A record related to an International Application filed under the Patent Cooperation Treaty in
this system of records may be disclosed, as a routine use, to the International Bureau of the
World Intellectual Property Organization, pursuant to the Patent Cooperation Treaty.
6. A record in this system of records may be disclosed, as a routine use, to another federal
agency for purposes of National Security review (35 U.S.C. 181) and for review pursuant to
the Atomic Energy Act (42 U.S.C. 218(c)).
7. A record from this system of records may be disclosed, as a routine use, to the Administrator,
General Services, or his/her designee, during an inspection of records conducted by GSA as
part of that agency’s responsibility to recommend improvements in records management
practices and programs, under authority of 44 U.S.C. 2904 and 2906. Such disclosure shall
be made in accordance with the GSA regulations governing inspection of records for this
purpose, and any other relevant (i.e., GSA or Commerce) directive. Such disclosure shall not
be used to make determinations about individuals.
8. A record from this system of records may be disclosed, as a routine use, to the public after
either publication of the application pursuant to 35 U.S.C. 122(b) or issuance of a patent
pursuant to 35 U.S.C. 151. Further, a record may be disclosed, subject to the limitations of 37
CFR 1.14, as a routine use, to the public if the record was filed in an application which
became abandoned or in which the proceedings were terminated and which application is
referenced by either a published application, an application open to public inspection or an
issued patent.
9. A record from this system of records may be disclosed, as a routine use, to a Federal, State,
or local law enforcement agency, if the USPTO becomes aware of a violation or potential
violation of law or regulation.
Notice of Improper Request for Continued ExaminationNotice of Improper Request for Continued Examination

Latest revision as of 04:40, December 16, 2023

← MPEP 705 ↑ MPEP 700 MPEP 707 →


706 Rejection of Claims[edit | edit source]

After the application has been read and the claimed invention understood, a prior art search for the claimed invention is made. With the results of the prior art search, including any references provided by the applicant, the patent application should be reviewed and analyzed in conjunction with the state of the prior art to determine whether the claims define a useful, novel, nonobvious, and enabled invention that has been clearly described in the specification. The goal of examination is to clearly articulate any rejection early in the prosecution process so that the applicant has the opportunity to provide evidence of patentability and otherwise reply completely at the earliest opportunity. The examiner then reviews all the evidence, including arguments and evidence responsive to any rejection, before issuing the next Office action. Where the examiner determines that information reasonably necessary for the examination should be required from the applicant under 37 CFR 1.105, such a requirement should generally be made either prior to or with the first Office action on the merits and should follow the procedures in MPEP § 704.10 et seq.

Although this part of the Manual explains the procedure in rejecting claims, the examiner should never overlook the importance of his or her role in allowing claims which properly define the invention.

37 CFR 1.104 Nature of examination.
.          .          .

(c)Rejection of claims.

(1)If the invention is not considered patentable, or not considered patentable as claimed, the claims, or those considered unpatentable will be rejected.

(2)In rejecting claims for want of novelty or for obviousness, the examiner must cite the best references at his or her command. When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.

(3)In rejecting claims the examiner may rely upon admissions by the applicant, or the patent owner in a reexamination proceeding, as to any matter affecting patentability and, insofar as rejections in applications are concerned, may also rely upon facts within his or her knowledge pursuant to paragraph (d)(2) of this section.

(4)Subject matter which is developed by another person which qualifies as prior art only under 35 U.S.C. 102(e), (f) or (g) may be used as prior art under 35 U.S.C. 103 against a claimed invention unless the entire rights to the subject matter and the claimed invention were commonly owned by the same person or subject to an obligation of assignment to the same person at the time the claimed invention was made.

(i)Subject matter developed by another person and a claimed invention shall be deemed to have been commonly owned by the same person or subject to an obligation of assignment to the same person in any application and in any patent granted on or after December 10, 2004, if:

(A)The claimed invention and the subject matter was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made;

(B)The claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and

(C)The application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

(ii)For purposes of paragraph (c)(4)(i) of this section, the term “joint research agreement” means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.

(iii)To overcome a rejection under 35 U.S.C. 103(a) based upon subject matter which qualifies as prior art under only one or more of 35 U.S.C. 102(e), (f) or (g) via 35 U.S.C. 103(c)(2), the applicant must provide a statement to the effect that the prior art and the claimed invention were made by or on the behalf of parties to a joint research agreement, within the meaning of 35 U.S.C. 103(c)(3) and paragraph (c)(4)(ii) of this section, that was in effect on or before the date the claimed invention was made, and that the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement.

(5)The claims in any original application naming an inventor will be rejected as being precluded by a waiver in a published statutory invention registration naming that inventor if the same subject matter is claimed in the application and the statutory invention registration. The claims in any reissue application naming an inventor will be rejected as being precluded by a waiver in a published statutory invention registration naming that inventor if the reissue application seeks to claim subject matter:

(i)Which was not covered by claims issued in the patent prior to the date of publication of the statutory invention registration; and

(ii)Which was the same subject matter waived in the statutory invention registration.

I. UNIFORM APPLICATION OF THE PATENTABILITY STANDARD

The standards of patentability applied in the examination of claims must be the same throughout the Office. In every art, whether it be considered "complex," "newly developed," "crowded," or "competitive," all of the requirements for patentability (e.g., novelty, usefulness and unobviousness, as provided in 35 U.S.C. 101, 102, and 103) must be met before a claim is allowed. The mere fact that a claim recites in detail all of the features of an invention (i.e., is a "picture" claim) is never, in itself, justification for the allowance of such a claim.

An application should not be allowed, unless and until issues pertinent to patentability have been raised and resolved in the course of examination and prosecution, since otherwise the resultant patent would not justify the statutory presumption of validity (35 U.S.C. 282), nor would it “strictly adhere” to the requirements laid down by Congress in the 1952 Act as interpreted by the Supreme Court. The standard to be applied in all cases is the “preponderance of the evidence” test. In other words, an examiner should reject a claim if, in view of the prior art and evidence of record, it is more likely than not that the claim is unpatentable.

II. DEFECTS IN FORM OR OMISSION OF A LIMITATION; CLAIMS OTHERWISE ALLOWABLE

When an application discloses patentable subject matter and it is apparent from the claims and the applicant's arguments that the claims are intended to be directed to such patentable subject matter, but the claims in their present form cannot be allowed because of defects in form or omission of a limitation, the examiner should not stop with a bare objection or rejection of the claims. The examiner’s action should be constructive in nature and when possible should offer a definite suggestion for correction.

III.PATENTABLE SUBJECT MATTER DISCLOSED BUT NOT CLAIMED

If the examiner is satisfied after the search has been completed that patentable subject matter has been disclosed and the record indicates that the applicant intends to claim such subject matter, he or she may note in the Office action that certain aspects or features of the patentable invention have not been claimed and that if properly claimed such claims may be given favorable consideration.

IV.RECONSIDERATION OF CLAIMS AFTER REPLY BY APPLICANT

37 CFR 1.112 Reconsideration before final action.

After reply by applicant or patent owner (§ 1.111 or § 1.945) to a non-final action and any comments by an inter partes reexamination requester (§ 1.947), the application or the patent under reexamination will be reconsidered and again examined. The applicant, or in the case of a reexamination proceeding the patent owner and any third party requester, will be notified if claims are rejected, objections or requirements made, or decisions favorable to patentability are made, in the same manner as after the first examination (§ 1.104). Applicant or patent owner may reply to such Office action in the same manner provided in § 1.111 or § 1.945, with or without amendment, unless such Office action indicates that it is made final (§ 1.113) or an appeal (§ 41.31 of this title) has been taken (§ 1.116), or in an inter partes reexamination, that it is an action closing prosecution (§ 1.949) or a right of appeal notice (§ 1.953).

37 CFR 1.112 provides for the reconsideration and continued examination of an application after reply by the applicant, and for the reconsideration and continued examination of a reexamination proceeding after a response by the patent owner. If claims are rejected, or objections or requirements are made, the applicant or patent owner will be notified in the same manner as notification was provided after the first examination. Applicant or patent owner may reply to such Office action (with or without amendment) in the same manner provided in 37 CFR 1.111, or 37 CFR 1.945 for an inter partes reexamination, unless such Office action indicates that it is made final (37 CFR 1.113), or an appeal under 37 CFR 41.31 has been taken (37 CFR 1.116), or such Office action indicates in an inter partes reexamination that it is an action closing prosecution (37 CFR 1.949) or a right of appeal notice (37 CFR 1.953). Once an appeal has been taken in an application or in an ex parte reexamination proceeding, any amendment (filed prior to an appeal brief) is subject to the provisions of 37 CFR 1.116(b) and (c), even if the appeal is in reply to a non-final Office action. See 37 CFR 41.33(b) for amendments filed with or after the filing of an appeal brief.

V. REJECTIONS IN STATUTORY INVENTION REGISTRATIONS

See MPEP 1100 for rejection of claims in an application for a Statutory Invention Registration.

706.01 Contrasted With Objections[edit | edit source]

The refusal to grant claims because the subject matter as claimed is considered unpatentable is called a “rejection.” The term “rejected” must be applied to such claims in the examiner’s action. If the form of the claim (as distinguished from its substance) is improper, an “objection” is made. An example of a matter of form as to which objection is made is dependency of a claim on a rejected claim, if the dependent claim is otherwise allowable. See MPEP § 608.01(n). The practical difference between a rejection and an objection is that a rejection, involving the merits of the claim, is subject to review by the Board of Patent Appeals and Interferences, while an objection, if persisted, may be reviewed only by way of petition to the Director of the USPTO.

Similarly, the Board will not hear or decide issues pertaining to objections and formal matters which are not properly before the Board. These formal matters should not be combined in appeals to the Board.

706.02 Rejection on Prior Art[edit | edit source]

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)the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

(b)the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or

(c)he has abandoned the invention, or

(d)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, or

(e)the invention was described in — (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; or

(f)he did not himself invent the subject matter sought to be patented, or

(g)(1)during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.


35 U.S.C. 103. Conditions for patentability; non-obvious subject matter.

(a)A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

(b)(1)Notwithstanding subsection (a), and upon timely election by the applicant for patent to proceed under this subsection, a biotechnological process using or resulting in a composition of matter that is novel under section 102 and nonobvious under subsection (a) of this section shall be considered nonobvious if-

(A)claims to the process and the composition of matter are contained in either the same application for patent or in separate applications having the same effective filing date; and

(B)the composition of matter, and the process at the time it was invented, were owned by the same person or subject to an obligation of assignment to the same person.

(2)A patent issued on a process under paragraph (1)-

(A)shall also contain the claims to the composition of matter used in or made by that process, or

(B)shall, if such composition of matter is claimed in another patent, be set to expire on the same date as such other patent, notwithstanding section 154.

(3)For purposes of paragraph (1), the term “biotechnological process” means-

(A)a process of genetically altering or otherwise inducing a single- or multi-celled organism to-

(i)express an exogenous nucleotide sequence,

(ii)inhibit, eliminate, augment, or alter expression of an endogenous nucleotide sequence, or

(iii)express a specific physiological characteristic not naturally associated with said organism;

(B)cell fusion procedures yielding a cell line that expresses a specific protein, such as a monoclonal antibody; and

(C)a method of using a product produced by a process defined by subparagraph (A) or (B), or a combination of subparagraphs (A) and (B).

(c)(1) Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.

(2)For purposes of this subsection, subject matter developed by another person and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person if —

(A)the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made;

(B)the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and

(C)the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

(3)For purposes of paragraph (2), the term “joint research agreement” means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.

By far the most frequent ground of rejection is on the ground of unpatentability in view of the prior art, that is, that the claimed subject matter is either not novel under 35 U.S.C. 102, or else it is obvious under 35 U.S.C. 103. The language to be used in rejecting claims should be unequivocal. See MPEP § 707.07(d).

I.CHOICE OF PRIOR ART; BEST AVAILABLE

Prior art rejections should ordinarily be confined strictly to the best available art. Exceptions may properly be made, for example, where:

(A)the propriety of a 35 U.S.C. 102 or 103 rejection depends on a particular interpretation of a claim;

(B)a claim is met only in terms by a reference which does not disclose the inventive concept involved; or

(C)the most pertinent reference seems likely to be antedated by a 37 CFR 1.131 affidavit or declaration.

Such rejections should be backed up by the best other art rejections available. Merely cumulative rejections, i.e., those which would clearly fall if the primary rejection were not sustained, should be avoided.

See also MPEP § 707.05.

II.RELIANCE UPON ABSTRACTS AND FOREIGN LANGUAGE DOCUMENTS IN SUPPORT OF A REJECTION

Prior art uncovered in searching the claimed subject matter of a patent application often includes English language abstracts of underlying documents, such as technical literature or foreign patent documents which may not be in the English language. When an abstract is used to support a rejection, the evidence relied upon is the facts contained in the abstract, not additional facts that may be contained in the underlying full text document. Citation of and reliance upon an abstract without citation of and reliance upon the underlying scientific document is generally inappropriate where both the abstract and the underlying document are prior art. See Ex parte Jones, 62 USPQ2d 1206, 1208 (Bd. Pat. App. & Inter. 2001) (unpublished).

To determine whether both the abstract and the underlying document are prior art, a copy of the underlying document must be obtained and analyzed. If the document is in a language other than English and the examiner seeks to rely on that document, a translation must be obtained so that the record is clear as to the precise facts the examiner is relying upon in support of the rejection. The record must also be clear as to whether the examiner is relying upon the abstract or the full text document to support a rejection. The rationale for this is several-fold. It is not uncommon for a full text document to reveal that the document fully anticipates an invention that the abstract renders obvious at best. The converse may also be true, that the full text document will include teachings away from the invention that will preclude an obviousness rejection under 35 U.S.C. 103, when the abstract alone appears to support the rejection. An abstract can have a different effective publication date than the full text document. Because all patentability determinations are fact dependent, obtaining and considering full text documents at the earliest practicable time in the examination process will yield the fullest available set of facts upon which to determine patentability, thereby improving quality and reducing pendency.

When both the abstract and the underlying document qualify as prior art, the underlying document should normally be used to support a rejection. In limited circumstances, it may be appropriate for the examiner to make a rejection in a non-final Office action based in whole or in part on the abstract only without relying on the full text document. In such circumstances, the full text document and a translation (if not in English) may be supplied in the next Office action. Whether the next Office action may be made final is governed by MPEP § 706.07(a).

III. REEXAMINATION

For scope of rejections in ex parte reexamination proceedings, see MPEP § 2258 and in inter partesreexamination, see MPEP § 2658.

IV.DISTINCTION BETWEEN 35 U.S.C. 102 AND 103

The distinction between rejections based on 35 U.S.C. 102 and those based on 35 U.S.C. 103 should be kept in mind. Under the former, the claim is anticipated by the reference. No question of obviousness is present. In other words, for anticipation under 35 U.S.C. 102, the reference must teach every aspect of the claimed invention either explicitly or impliedly. Any feature not directly taught must be inherently present. Whereas, in a rejection based on 35 U.S.C. 103, the reference teachings must somehow be modified in order to meet the claims. The modification must be one which would have been obvious to one of ordinary skill in the art at the time the invention was made. See MPEP § 2131 - § 2146 for guidance on patentability determinations under 35 U.S.C. 102 and 103.

V.DETERMINING THE EFFECTIVE FILING DATE OF THE APPLICATION

The effective filing date of a U.S. application may be determined as follows:

(A)If the application is a continuation or divisional of one or more earlier U.S. applications or international applications and if the requirements of 35 U.S.C. 120 and 365(c), respectively, have been satisfied, the effective filing date is the same as the earliest filing date in the line of continuation or divisional applications.

(B)If the application is a continuation-in-part of an earlier U.S. application or international application, any claims in the new application not supported by the specification and claims of the parent application have an effective filing date equal to the filing date of the new application. Any claims which are fully supported under 35 U.S.C. 112 by the earlier parent application have the effective filing date of that earlier parent application.

(C)If the application claims foreign priority under 35 U.S.C. 119(a)-(d) or 365(a)or (b), the effective filing date is the filing date of the U.S. application, unless situation (A) or (B) as set forth above applies. The filing date of the foreign priority document is not the effective filing date, although the filing date of the foreign priority document may be used to overcome certain references. See MPEP § 706.02(b) and § 2136.05.

(D)If the application properly claims benefit under 35 U.S.C. 119(e) to a provisional application, the effective filing date is the filing date of the provisional application for any claims which are fully supported under the first paragraph of 35 U.S.C. 112 by the provisional application.

See MPEP § 1893.03(b) for determining the effective filing date of an application under 35 U.S.C. 371. See MPEP § 201.11(a) and § 1895 for additional information on determining the effective filing date of a continuation, divisional, or continuation-in-part of a PCT application designating the U.S. See also MPEP § 1895.01 and § 1896 which discuss differences between applications filed under 35 U.S.C. 111(a) and international applications that enter national stage under 35 U.S.C. 371.

706.02(a)Rejections Under 35 U.S.C. 102(a), (b), or (e); Printed Publication or Patent[edit | edit source]

Once the examiner conducts a search and finds a printed publication or patent which discloses the claimed invention, the examiner should determine whether the rejection should be made under 35 U.S.C. 102(a), (b), or (e).

In order to determine which section of 35 U.S.C. 102 applies, the effective filing date of the application must be determined and compared with the date of the reference. See MPEP § 706.02 regarding determination of effective filing date of the application.

I.DETERMINING THE REFERENCE ISSUE OR PUBLICATION DATE

The examiner must determine the issue or publication date of the reference so that a proper comparison between the application and reference dates can be made. A magazine is effective as a printed publication under 35 U.S.C. 102(b) as of the date it reached the addressee and not the date it was placed in the mail. Protein Foundation Inc. v. Brenner, 260 F. Supp. 519, 151 USPQ 561 (D.D.C. 1966). See MPEP § 707.05(f). For foreign patents see MPEP § 901.05. See MPEP § 2124, § 2126, and § 2128 - § 2128.02 for case law relevant to reference date determination.

II.DETERMINING WHETHER TO APPLY 35 U.S.C. 102(a), (b), or (e)

A.35 U.S.C. 102(b)

First, the examiner should consider whether the reference qualifies as prior art under 35 U.S.C. 102(b) because this section results in a statutory bar to obtaining a patent. If the publication or issue date of the reference is more than 1 year prior to the effective filing date of the application (MPEP § 706.02), the reference qualifies as prior art under 35 U.S.C. 102(b).

Where the last day of the year dated from the date of publication falls on a Saturday, Sunday or Federal holiday, the publication is not a statutory bar under 35 U.S.C. 102(b) if the application was filed on the next succeeding business day.

B.35 U.S.C. 102(e)

If the publication or issue date of the reference is too recent for 35 U.S.C. 102(b) to apply, then the examiner should consider 35 U.S.C. 102(e).

In order to apply a reference under 35 U.S.C. 102(e), the inventive entity of the application must be different than that of the reference. Note that, where there are joint inventors, only one inventor needs to be different for the inventive entities to be different and a rejection under 35 U.S.C. 102(e) is applicable even if there are some inventors in common between the application and the reference.

Revised 35 U.S.C. 102(e), as amended by the American Inventors Protection Act of 1999 (AIPA) (Pub. L. 106-113, 113 Stat. 1501 (1999)), and as further amended by the Intellectual Property and High Technology Technical Amendments Act of 2002 (Pub. L. 107-273, 116 Stat. 1758 (2002)), applies in the examination of all applications, whenever filed, and the reexamination of, or other proceedings to contest, all patents. The filing date of the application being examined is no longer relevant in determining what version of 35 U.S.C. 102(e) to apply in determining the patentability of that application, or the patent resulting from that application. The revised statutory provisions supersede all previous versions of 35 U.S.C. 102(e) and 374, with only one exception, which is when the potential reference is based on an international application filed prior to November 29, 2000 (discussed further below). Furthermore, the provisions amending 35 U.S.C. 102(e) and 374 in Pub. L. 107-273 are completely retroactive to the effective date of the relevant provisions in the AIPA (November 29, 2000). See MPEP § 706.02(f)(1) for examination 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.
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(e)the invention was described in — (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; or

.          .          .

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.

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-

.          .          .

(e)the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371(c) of this title before the invention thereof by the applicant for patent.

Revised 35 U.S.C. 102(e) has two separate clauses, namely, 35 U.S.C. 102(e)(1) for publications of patent applications and 35 U.S.C. 102(e)(2) for U.S. patents. 35 U.S.C. 102(e)(1), in combination with amended 35 U.S.C. 374, created a new category of prior art by providing prior art effect for certain publications of patent applications, including certain international applications, as of their effective United States filing dates (which will include certain international filing dates). Under revised 35 U.S.C. 102(e), an international filing date which is on or after November 29, 2000 is a United States filing date if the international application designated the United States and was published by the World Intellectual Property Organization (WIPO) under the Patent Cooperation Treaty (PCT) Article 21(2) in the English language. Therefore, the prior art date of a reference under 35 U.S.C. 102(e) may be the international filing date (if all three conditions noted above are met) or an earlier U.S. filing date for which priority or benefit is properly claimed. Publication under PCT Article 21(2) may result from a request for early publication by an applicant of an international application or after the expiration of 18-months after the earliest claimed filing date in an international application. An applicant of an international application that has designated only the U.S. would continue to be required to request publication from WIPO as the reservation under PCT Article 64(3) continues to be in effect for such applicants. 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).

Revised 35 U.S.C. 102(e) eliminated the reference to fulfillment of the 35 U.S.C. 371(c)(1), (2) and (4) requirements. As a result, United States patents issued directly from international applications filed on or after November 29, 2000 will no longer be available as prior art under 35 U.S.C. 102(e) as of the date the requirements of 35 U.S.C. 371(c)(1), (2) and (4) have been satisfied. Under 35 U.S.C. 102(e)(2), as amended by the AIPA and Pub. L. 107-273, an international filing date which is on or after November 29, 2000 is a United States filing date for purposes of determining the earliest effective prior art date of a patent if the international application designated the United States and was published in the English language under PCT Article 21(2) by WIPO.

No international filing dates prior to November 29, 2000 may be relied upon as a prior art date under 35 U.S.C. 102(e) in accordance with the last sentence of the effective date provisions of Pub. L. 107-273. Patents issued directly, or indirectly, from international applications filed before November 29, 2000 may only be used as prior art based on the provisions 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 art patent is the earliest of the date of compliance with 35 U.S.C. 371(c)(1), (2) and (4), or the filing date of the later-filed U.S. continuing application that claimed the benefit of the international application. Publications of international applications filed before November 29, 2000 (which would include WIPO publications and U.S. publications of the national stage (35 U.S.C. 371)) do not have a 35 U.S.C. 102(e) date at all (however, such publications are available as prior art under 35 U.S.C. 102(a) or (b) as of the publication date). Specifically, under revised 35 U.S.C. 374, the international application must be filed on or after November 29, 2000 for its WIPO publication to be “deemed a publication under section 122(b)” and thus available as a possible prior art reference under 35 U.S.C. 102(e) as amended by the AIPA.

C.35 U.S.C. 102(a)

Even if the reference is prior art under 35 U.S.C. 102(e), the examiner should still consider 35 U.S.C. 102(a) for two reasons. First, if the reference is a U.S. patent or patent application publication of, or claims benefit of, an international application, the publication of the international application under PCT Article 21(2) may be the earliest prior art date under 35 U.S.C. 102(a) for the disclosure. Second, references that are only prior art under 35 U.S.C. 102(e), (f), or (g) and applied in a rejection under 35 U.S.C. 103(a) are subject to being disqualified under 35 U.S.C. 103(c) if the reference and the application were commonly owned, or subject to an obligation of common assignment, at the time the invention was made. For 35 U.S.C. 102(a) to apply, the reference must have a publication date earlier in time than the effective filing date of the application, and must not be applicant’s own work.

706.02(b) Overcoming a 35 U.S.C. 102 Rejection Based on a Printed Publication or Patent[edit | edit source]

A rejection based on 35 U.S.C. 102(b) can be overcome by:

(A)Persuasively arguing that the claims are patentably distinguishable from the prior art;

(B)Amending the claims to patentably distinguish over the prior art;

(C)Perfecting benefit under 35 U.S.C. 120, within the time period set in 37 CFR 1.78(a) or filing a grantable petition under 37 CFR 1.78(a), by amending the specification of the application to contain a specific reference to a prior application or by filing an application data sheet under 37 CFR 1.76 which contains a specific reference to a prior application in accordance with 37 CFR 1.78(a), and by establishing that the prior application satisfies the enablement and written description requirements of 35 U.S.C. 112, first paragraph. See MPEP § 201.11 and § 706.02; or

(D)Perfecting benefit claim under 35 U.S.C. 119(e) by complying with the requirements of 37 CFR 1.78(a) (see item (C) above). Since a provisional application could not have been filed more than one year prior to the filing of a nonprovisional application that claims benefit to the provisional application, in order to overcome a rejection under 35 U.S.C. 102(b), there must be at least one intermediate application between the provisional application and the nonprovisional application under examination, e.g., chain of prior applications. In order to overcome the rejection under 35 U.S.C. 102(b), benefit claim must be perfected for the chain of prior applications (35 U.S.C. 119(e) and 120 must be perfected). See MPEP § 201.11.

A rejection based on 35 U.S.C. 102(e) can be overcome by:

(A)Persuasively arguing that the claims are patentably distinguishable from the prior art;

(B)Amending the claims to patentably distinguish over the prior art;

(C)Filing an affidavit or declaration under 37 CFR 1.132 showing that the reference invention is not by “another.” See MPEP § 715.01(a), § 715.01(c), and § 716.10;

(D)Filing an affidavit or declaration under 37 CFR 1.131 showing prior invention, if the reference is not a U.S. patent or a U.S. patent application publication claiming the same patentable invention as defined in 37 CFR 41.203(a). See MPEP § 715 for more information on 37 CFR 1.131 affidavits. When the claims of the reference U.S. patent or U.S. patent application publication and the application are directed to the same invention or are obvious variants, an affidavit or declaration under 37 CFR 1.131 is not an acceptable method of overcoming the rejection. Under these circumstances, the examiner must determine whether a double patenting rejection or interference is appropriate. If there is a common assignee or inventor between the application and patent, a double patenting rejection must be made. See MPEP § 804. If there is no common assignee or inventor and the rejection under 35 U.S.C. 102(e) is the only possible rejection, the examiner must determine whether an interference should be declared. See MPEP Chapter 2300 for more information regarding interferences;

(E)Perfecting a claim to priority under 35 U.S.C. 119(a)-(d) within the time period set in 37 CFR 1.55(a)(1) or filing a grantable petition under 37 CFR 1.55(c). See MPEP § 201.13. The foreign priority filing date must antedate the reference and be perfected. The filing date of the priority document is not perfected unless applicant has filed a certified priority document in the application (and an English language translation, if the document is not in English) (see 37 CFR 1.55(a)(3)) and the examiner has established that the priority document satisfies the enablement and description requirements of 35 U.S.C. 112, first paragraph; or

(F)Perfecting benefit under 35 U.S.C. 119(e) or 120, within the time periods set in 37 CFR 1.78(a) or filing a grantable petition under 37 CFR 1.78(a), by amending the specification of the application to contain a specific reference to a prior application or by filing an application data sheet under 37 CFR 1.76 which contains a specific reference to a prior application in accordance with 37 CFR 1.78(a), and by establishing that the prior application satisfies the enablement and written description requirements of 35 U.S.C. 112, first paragraph. See MPEP § 201.11 and § 706.02.

A rejection based on 35 U.S.C. 102(a) can be overcome by:

(A)Persuasively arguing that the claims are patentably distinguishable from the prior art;

(B)Amending the claims to patentably distinguish over the prior art;

(C)Filing an affidavit or declaration under 37 CFR 1.131 showing prior invention, if the reference is not a U.S. patent or a U.S. patent application publication claiming the same patentable invention as defined in 37 CFR 41.203(a). See MPEP § 715 for information on the requirements of 37 CFR 1.131affidavits. When the claims of the reference U.S. patent or U.S. patent application publication and the application are directed to the same invention or are obvious variants, an affidavit or declaration under 37 CFR 1.131 is not appropriate to overcome the rejection.

(D)Filing an affidavit or declaration under 37 CFR 1.132 showing that the reference invention is not by “another.” See MPEP § 715.01(a), § 715.01(c), and § 716.10;

(E)Perfecting a claim to priority under 35 U.S.C. 119(a)-(d) as explained in reference to 35 U.S.C. 102(e) above;

(F)Perfecting benefit under 35 U.S.C. 119(e) or 120 as explained in reference to 35 U.S.C. 102(e) above.

706.02(c) Rejections Under 35 U.S.C. 102(a) or (b); Knowledge by Others or Public Use or Sale[edit | edit source]

An applicant may make an admission, or submit evidence of sale of the invention or knowledge of the invention by others, or the examiner may have personal knowledge that the invention was sold by applicant 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 countries. In these cases the examiner must determine if 35 U.S.C. 102(a) or 102(b) applies. See MPEP § 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 or assignee, such as sale by another, manufacture by another or disclosure of the invention by applicant to another then both 35 U.S.C. 102(a) and (b) may be applicable. If the evidence only points to knowledge within the year prior to the effective filing date then 35 U.S.C. 102(a) applies. However, no rejection under 35 U.S.C. 102(a) should be made if there is evidence that applicant made the invention and only disclosed it to others within the year prior to the effective filing date.

35 U.S.C. 102(b) is applicable if the activity occurred more than 1 year prior to the effective filing date of the application. See MPEP § 2133.03 for a dis 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 issues, as well as to other related matters of 35 U.S.C. 102(b) activity, an applicant may be required to answer specific questions posed by the examiner and to explain or supplement any evidence of record. See 35 U.S.C. 132, 37 CFR 1.104(a)(2). Information sought should be restricted to that which is reasonably necessary for the examiner to render a decision on patentability. The examiner may consider making a requirement for information under 37 CFR 1.105 where the evidence of record indicates reasonable necessity. See MPEP § 704.10 et seq.

A 1- or 2-month time period should be set by the examiner for any reply to the requirement, unless the requirement is part of an Office action having a shortened statutory period, in which case the period for reply to the Office action will also apply to the requirement. If applicant fails to reply in a timely fashion to a requirement for information, the application will be regarded as abandoned. 35 U.S.C. 133. See MPEP § 2133.03.

If there is not enough information on which to base a public use or on sale rejection, the examiner should make a requirement for more information.

706.02(d) Rejections Under 35 U.S.C. 102(c)[edit | edit source]

Under 35 U.S.C. 102(c), abandonment of the “invention” (as distinguished from abandonment of an application) results in loss of right to a patent. See MPEP § 2134 for case law which sets forth the criteria for abandonment under 35 U.S.C. 102(c).

706.02(e) Rejections Under 35 U.S.C. 102(d)[edit | edit source]

35 U.S.C. 102(d) establishes four conditions which, if all are present, establish a statutory bar against the granting of a patent in this country:

(A)The foreign application must be filed more than 12 months before the effective filing date of the United States application. See MPEP § 706.02 regarding determination of the effective filing date of the application.

(B)The foreign and United States applications must be filed by the same applicant, his or her legal representatives or assigns.

(C)The foreign application must have actually issued as a patent or inventor’s certificate (e.g., granted by sealing of the papers in Great Britain) before the filing in the United States. It need not be published but the patent rights granted must be enforceable.

(D)The same invention must be involved.

If such a foreign patent or inventor’s certificate is discovered by the examiner, the rejection is made under 35 U.S.C. 102(d) on the ground of statutory bar.

706.02(f) Rejection Under 35 U.S.C. 102(e)[edit | edit source]

35 U.S.C. 102(e), in part, allows for certain prior art (i.e., U.S. patents, U.S. patent application publications and WIPO publications of international applications) to be applied against the claims as of its effective U.S. filing date. This provision of 35 U.S.C. 102 is mostly utilized when the publication or issue date is too recent for the reference to be applied under 35 U.S.C. 102(a) or (b). In order to apply a reference under 35 U.S.C. 102(e), the inventive entity of the application must be different than that of the reference. Note that, where there are joint inventors, only one inventor needs to be different for the inventive entities to be different and a rejection under 35 U.S.C. 102(e) is applicable even if there are some inventors in common between the application and the reference.

706.02(f)(1)Examination Guidelines for Applying References Under 35 U.S.C. 102(e)[edit | edit source]
I. DETERMINE THE APPROPRIATE 35 U.S.C. 102(e) DATE FOR EACH POTENTIAL REFERENCE BY FOLLOWING THE GUIDELINES, EXAMPLES, AND FLOW CHARTS SET FORTH BELOW:[edit | edit source]

(A)The potential reference must be a U.S. patent, a U.S. application publication (35 U.S.C. 122(b)) or a WIPO publication of an international application under PCT Article 21(2) in order to apply the reference under 35 U.S.C. 102(e).

(B)Determine if the potential reference resulted from, or claimed the benefit of, an international application. If the reference does, go to step (C) below. The 35 U.S.C. 102(e) date of a reference that did not result from, nor claimed the benefit of, an international application is its earliest effective U.S. filing date, taking into consideration any proper benefit claims to prior U.S. applications under 35 U.S.C. 119(e) or 120 if the prior application(s) properly supports the subject matter used to make the rejection in compliance with 35 U.S.C. 112, first paragraph. See MPEP § 2136.02.

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

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

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

(b)designated the United States; and

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

then 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 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), 119(e), 120, or 365(c) are met. The subject matter used in the rejection must be disclosed in the earlier-filed application in compliance with 35 U.S.C. 112, first paragraph, in order for that subject matter to be entitled to 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).

(2)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 for prior art purposes. In this situation, do not apply the reference as of its international filing date, its date of completion of the35 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).

(3)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:

(a)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;

(b)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);

(c)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.

(4)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.

(D)Foreign applications’ filing dates that are claimed (via 35 U.S.C. 119(a)-(d), (f), or 365(a) or (b)) 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) or (b).

II. EXAMPLES[edit | edit source]

In order to illustrate the prior art dates of U.S. and WIPO publications of patent applications and U.S. patents under 35 U.S.C. 102(e), nine examples are presented below. The examples only cover the most common factual situations that might be encountered when determining the 35 U.S.C. 102(e) date of a reference. Examples 1 and 2 involve only U.S. application publications and U.S. patents. Example 3 involves a priority claim to a foreign patent application. Examples 4-9 involve international applications. The time lines in the examples below show the history of the prior art references that could be applied against the claims of the application under examination, or the patent under reexamination.

The examples only show the information necessary to determine a prior art date under 35 U.S.C. 102(e). Also, the dates in the examples below are arbitrarily used and are presented for illustrative purposes only. Therefore, correlation of patent grant dates with Tuesdays or application publication dates with Thursdays may not be portrayed in the examples.

Example 1: Reference Publication and Patent of 35 U.S.C. 111(a) Application with no Priority/Benefit Claims.

For reference publications and patents of patent applications filed under 35 U.S.C. 111(a) with no claim for the benefit of, or priority to, a prior application, the prior art dates under 35 U.S.C. 102(e) accorded to these references are the earliest effective U.S. filing dates. Thus, a publication and patent of a 35 U.S.C. 111(a) application, which does not claim any benefit under either 35 U.S.C. 119(e), 120 or 365(c), would be accorded the application’s actual filing date as its prior art date under 35 U.S.C. 102(e).

11/29/00
AIPA effective date
08 Dec 2000
35 U.S.C. 111(a) application filed with no claims for benefit/priority
12 Jun 2002
Publication of 35 U.S.C. 111(a) application under 35 U.S.C. 122(b)
03 Dec 2002
Patent granted





The 35 U.S.C. 102(e)(1) date for the Publication is 08 Dec. 2000. The 35 U.S.C. 102(e)(2) date for the Patent is: 08 Dec. 2000.

Example 2: Reference Publication and Patent of 35 U.S.C. 111(a) Application with a Benefit Claim to a Prior U.S. Provisional or Nonprovisional Application.

For reference publications and patents of patent applications filed under 35 U.S.C. 111(a), the prior art dates under 35 U.S.C. 102(e) accorded to these references are the earliest effective U.S. filing dates. Thus, a publication and patent of a 35 U.S.C. 111(a) application, which claims benefit under 35 U.S.C. 119(e) to a prior U.S. provisional application or claims the benefit under 35 U.S.C. 120 of a prior nonprovisional application, would be accorded the earlier filing date as its prior art date under 35 U.S.C. 102(e), assuming the earlier-filed application has proper support for the subject matter as required by 35 U.S.C. 119(e) or 120.

01 Jan 2000
1st 35 U.S.C. 111(a)/(b) application filed before effective date
11/29/00
AIPA effective date
01 Jan 2001
2nd application, file under 35 U.S.C. 111(a), claiming the benefit or priority of the prior application under 35 U.S.C. 120/119(e)
05 Jul 2001
Publication of the 2nd application under 35 U.S.C. 122(b)
02 Dec 2002
Patent granted on 2nd application




The 35 U.S.C. 102(e)(1) date for the Publication is: 01 Jan. 2000. The 35 U.S.C. 102(e)(2) date for the Patent is: 01 Jan. 2000.


Example 3: Reference Publication and Patent of 35 U.S.C. 111(a) Application with 35 U.S.C. 119(a)-(d) Priority Claim to a Prior Foreign Application.

For reference publications and patents of patent applications filed under 35 U.S.C. 111(a), the prior art dates under 35 U.S.C. 102(e) accorded to these references are the earliest effective U.S. filing dates. No benefit of the filing date of the foreign application is given under 35 U.S.C. 102(e) for prior art purposes (In re Hilmer, 149 USPQ 480 (CCPA 1966)). Thus, a publication and patent of a 35 U.S.C. 111(a) application, which claims priority under 35 U.S.C. 119(a)-(d) to a prior foreign-filed application (or under 35 U.S.C. 365(a) to an international application), would be accorded its U.S. filing date as its prior art date under 35 U.S.C. 102(e). In the example below, it is assumed that the earlier-filed U.S. application has proper support for the subject matter of the later-filed U.S. application as required by 35 U.S.C. 120.

22 Jun 1998
Foreign application filed in Japan
21 Jun 1999
1st 35 U.S.C. 111(a) application filed claiming 35 U.S.C. 199(a)-(d) priority to Japanese application
11/29/00
AIPA effective date
16 Aug 2001
2nd 35 U.S.C. 111(a) application filed under 37 CFR 1.53(b) or (d) with 35 U.S.C. 120 priority claim
14 Mar 2002
Publication of the 2nd 35 U.S.C. 111(a) application under 35 U.S.C. 122(b)
01 Nov 2003
Patent granted on the 2nd 35 U.S.C. 111(a) application




The 35 U.S.C. 102(e)(1) date for the Publication is: 21 June 1999. The 35 U.S.C. 102(e)(2) date for the Patent is: 21 June 1999.


Example 4: References based on the national stage (35 U.S.C. 371) of an International Application filed on or after November 29, 2000 and which was published in English under PCT Article 21(2).

All references, whether the WIPO publication, the U.S. patent application publication or the U.S. patent, of an international application (IA) that was filed on or after November 29, 2000, designated the U.S., and was published in English under PCT Article 21(2) by WIPO have the 35 U.S.C. 102(e) prior art date of the international filing date or earlier effective U.S. filing date. No benefit of the international filing date (nor any U.S. filing dates prior to the IA), however, is given for 35 U.S.C. 102(e) prior art purposes if the IA was published under PCT Article 21(2) in a language other than English.

11/29/2000
AIPA effective date
01 Jan 2001
IA filed in Swedish, US designated
01 July 2002
IA publication by WIPO in English
01 Jun 2003
35 U.S.C. 371(c)(1), (2), and (4) fullfillment)
01 Jul 2003
Publication by USPTO under 35 U.S.C. 122(b)
01 Nov 2003
Patent granted on 35 U.S.C. 371 application




The 35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: 01 Jan. 2001. The 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: 01 Jan. 2001. The 35 U.S.C. 102(e)(2) date for the Patent is: 01 Jan. 2001.

Additional Benefit Claims:

If a later-filed U.S. nonprovisional (35 U.S.C. 111(a)) application claimed the benefit of the IA in the example above, the 35 U.S.C. 102(e) date of the patent or publication of the later-filed U.S. application would be the international filing date, assuming the earlier-filed IA has proper support for the subject matter relied upon as required by 35 U.S.C. 120.

If the IA properly claimed the benefit of an earlier-filed U.S. provisional (35 U.S.C. 111(b)) application or the benefit of an earlier-filed U.S. nonprovisional (35 U.S.C. 111(a)) application, the 35 U.S.C. 102(e) date for all the references would be the filing date of the earlier-filed U.S. application, assuming the earlier-filed application has proper support for the subject matter relied upon as required by 35 U.S.C. 119(e) or 120.

Example 5: References based on the national stage (35 U.S.C. 371) of an International Application filed on or after November 29, 2000 and which was not published in English under PCT Article 21(2).

All references, whether the WIPO publication, the U.S. patent application publication or the U.S. patent, of an international application (IA) that was filed on or after November 29, 2000 but was not published in English under PCT Article 21(2) have no 35 U.S.C. 102(e) prior art date at all. According to 35 U.S.C. 102(e), no benefit of the international filing date (nor any U.S. filing dates prior to the IA) is given for 35 U.S.C. 102(e) prior art purposes if the IA was published under PCT Article 21(2) in a language other than English, regardless of whether the international application entered the national stage. Such references may be applied under 35 U.S.C. 102(a) or (b) as of their publication dates, but never under 35 U.S.C. 102(e).

11/29/2000
AIPA effective date
01 Jan 2001
IA filed, US designated
01 July 2002
IA publication by WIPO NOT in English
01 Jun 2003
35 U.S.C. 371(c)(1), (2), and (4) fullfillment)
02 Oct 2003
Publication by USPTO under 35 U.S.C. 122(b)
02 Nov 2004
Patent granted on 35 U.S.C. 371 application




The 35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: None. The 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: None. The 35 U.S.C. 102(e)(2) date for the Patent is: None.

The IA publication by WIPO can be applied under 35 U.S.C. 102(a) or (b) as of its publication date (01 July 2002).

Additional Benefit Claims:

If the IA properly claimed the benefit of to any earlier-filed U.S. application (whether provisional or nonprovisional), there would still be no 35 U.S.C. 102(e) date for all the references.

If a later-filed U.S. nonprovisional (35 U.S.C. 111(a)) application claimed the benefit of the IA in the example above, the 35 U.S.C. 102(e) date of the patent or publication of the later-filed U.S. application would be the actual filing date of the later-filed U.S. application.


Example 6: References based on the national stage (35 U.S.C. 371) of an International Application filed prior to November 29, 2000 (language of the publication under PCT Article 21(2) is not relevant).

The reference U.S. patent issued from an international application (IA) that was filed prior to November 29, 2000 has a 35 U.S.C. 102(e) prior art date of the date of fulfillment of the requirements of 35 U.S.C. 371(c)(1), (2) and (4). This is the pre-AIPA 35 U.S.C. 102(e). The application publications, both the WIPO publication and the U.S. publication, published from an international application that was filed prior to November 29, 2000, do not have any 35 U.S.C. 102(e) prior art date. According to the effective date provisions as amended by Pub. L. 107-273, the amendments to 35 U.S.C. 102(e) and 374 are not applicable to international applications having international filing dates prior to November 29, 2000. The application publications can be applied under 35 U.S.C. 102(a) or (b) as of their publication dates.

01 Jan 2000
IA filed in Canada, desig. the US
11/29/2000
AIPA effective date
01 July 2001
Publication of IA in any language under PCT Art. 21(2) by WIPO
01 July 2002
National Stage (NS)fulfilling 35 U.S.C. 371(c)(1), (2), and (4)
03 Oct 2002
Voluntary Publication of NS under 35 U.S.C. 122(b)
01 Nov 2003
Patent granted on 35 U.S.C. 371 application




The 35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: None.The 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: None. The 35 U.S.C. 102(e) date for the Patent is: 01 July 2002.

The IA publication by WIPO can be applied under 35 U.S.C. 102(a) or (b) as of its publication date (01 July 2001).

Additional Benefit Claims:

If the IA properly claimed the benefit of any earlier-filed U.S. application (whether provisional or nonprovisional), there would still be no 35 U.S.C. 102(e)(1) date for the U.S. and WIPO application publications, and the 35 U.S.C. 102(e) date for the patent will still be 01 July 2002 (the date of fulfillment of the requirements under 35 U.S.C. 371(c)(1), (2) and (4)).

If a later-filed U.S. nonprovisional (35 U.S.C. 111(a)) application claimed the benefit of the IA in the example above, the 35 U.S.C. 102(e)(1) date of the application publication of the later-filed U.S. application would be the actual filing date of the later-filed U.S. application, and the 35 U.S.C. 102(e) date of the patent of the later- filed U.S. application would be 01 July 2002 (the date that the earlier-filed IA fulfilled the requirements of 35 U.S.C. 371(c)(1), (2) and (4)).

If the patent was based on a later-filed U.S. application that claimed the benefit of the international application and the later filed U.S. application’s filing date is before the date the requirements of 35 U.S.C. 371(c)(1), (2) and (4) were fulfilled (if fulfilled at all), the 35 U.S.C. 102(e) date of the patent would be the filing date of the later-filed U.S. application that claimed the benefit of the international application.


Example 7: References based on a 35 U.S.C. 111(a) Application which is a Continuation of an International Application, which was filed on or after November 29, 2000, designated the U.S. and was published in English under PCT Article 21(2).

All references, whether the WIPO publication, the U.S. patent application publication or the U.S. patent of, or claiming the benefit of, an international application (IA) that was filed on or after November 29, 2000, designated the U.S., and was published in English under PCT Article 21(2) have the 35 U.S.C. 102(e) prior art date of the international filing date or earlier effective U.S. filing date. No benefit of the international filing date (nor any U.S. filing dates prior to the IA), however, is given for 35 U.S.C. 102(e) purposes if the IA was published under PCT Article 21(2) by WIPO in a language other than English. In the example below, it is assumed that the earlier-filed IA has proper support for the subject matter of the later-filed U.S. application as required by 35 U.S.C. 120 and 365(c).

11/29/00
AIPA effective date
01 Mar 2001
IA filed, US was designated
01 Sep 2002
IA Publication by WIPO in English'
01 May 2003
35 U.S.C. 111(a) application claiming the benefit of the IA under 35 U.S.C. 365(c) is filed
01 July 2003
Publication of 35 U.S.C. 111(a) appl. by USPTO under 35 U.S.C. 122(b)
01 Nov 2004
Patent granted on 35 U.S.C. 111 (a) application




The 35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: 01 Mar. 2001.The 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: 01 Mar. 2001.The 35 U.S.C. 102(e)(2) date for the Patent is: 01 Mar. 2001.

Additional Benefit Claims:

If the IA properly claimed the benefit of an earlier-filed U.S. provisional (35 U.S.C. 111(b)) application or the benefit of an earlier-filed U.S. nonprovisional (35 U.S.C. 111(a)) application, the 35 U.S.C. 102(e) date for all the references would be the filing date of the earlier-filed U.S. application, assuming the earlier-filed application has proper support for the subject matter relied upon as required by 35 U.S.C. 119(e) or 120.

If a second, later-filed U.S. nonprovisional (35 U.S.C. 111(a)) application claimed the benefit of the 35 U.S.C. 111(a) application in the example above, the 35 U.S.C. 102(e) date of the patent or publication of the second, later-filed U.S. application would still be the international filing date of the IA, assuming the earlier-filed IA has proper support for the subject matter relied upon as required by 35 U.S.C. 120 and 365(c).

Example 8: References based on a 35 U.S.C. 111(a) Application which is a Continuation of an International Application, which was filed on or after November 29, 2000 and was not published in English under PCT Article 21(2).

Both the U.S. publication and the U.S. patent of the 35 U.S.C. 111(a) continuation of an international application (IA) that was filed on or after November 29, 2000 but not published in English under PCT Article 21(2) have the 35 U.S.C. 102(e) prior art date of the actual U.S. filing date of the 35 U.S.C. 111(a) application. No benefit of the international filing date (nor any U.S. filing dates prior to the IA) is given for 35 U.S.C. 102(e) purposes since the IA was published under PCT Article 21(2) in a language other than English. The IA publication under PCT Article 21(2) does not have a prior art date under 35 U.S.C. 102(e)(1) because the IA was not published in English under PCT Article 21(2). The IA publication under PCT Article 21(2) can be applied under 35 U.S.C. 102(a) or (b) as of its publication date.

11/29/00
AIPA effective date
01 Mar 2001
IA filed, US was designated
01 Sep 2002
IA Publication by WIPO NOT in English'
01 May 2003
35 U.S.C. 111(a) application claiming the benefit of the IA under 35 U.S.C. 365(c) is filed
01 July 2003
Publication of 35 U.S.C. 111(a) appl. by USPTO under 35 U.S.C. 122(b)
01 Nov 2004
Patent granted on 35 U.S.C. 111 (a) application




The 35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: None.The 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: 01 May 2003.The 35 U.S.C. 102(e)(2) date for the Patent is: 01 May 2003

The IA publication by WIPO can be applied under 35 U.S.C. 102(a) or (b) as of its publication date (01 Sept 2002).

Additional Benefit Claims:

If the IA properly claimed the benefit of any earlier-filed U.S. application (whether provisional or nonprovisional), there would still be no 35 U.S.C. 102(e)(1) date for the IA publication by WIPO, and the U.S. patent application publication and patent would still have a 35 U.S.C. 102(e) date of the actual filing date of the later-filed 35 U.S.C. 111(a) application in the example above (01 May 2003).

If a second, later-filed U.S. nonprovisional (35 U.S.C. 111(a)) application claimed the benefit of the 35 U.S.C. 111(a) application in the example above, the 35 U.S.C. 102(e) date of the patent or publication of the second, later-filed U.S. application would still be the actual filing date of the 35 U.S.C. 111(a) application in the example above (01 May 2003).


Example 9: References based on a 35 U.S.C. 111(a) Application which is a Continuation (filed prior to any entry of the national stage) of an International Application, which was filed prior to November 29, 2000 (language of the publication under PCT Article 21(2) is not relevant).

Both the U.S. publication and the U.S. patent of the 35 U.S.C. 111(a) continuation (filed prior to any entry of the national stage) of an international application (IA) that was filed prior to November 29, 2000 have the 35 U.S.C. 102(e) prior art date of their actual U.S. filing date under 35 U.S.C. 111(a). No benefit of the international filing date (nor any U.S. filing dates prior to the IA) is given for 35 U.S.C. 102(e) prior art purposes since the IA was filed prior to November 29, 2000. The IA publication under PCT Article 21(2) does not have a prior art date under 35 U.S.C. 102(e)(1) because the IA was filed prior to November 29, 2000. The IA publication under PCT Article 21(2) can be applied under 35 U.S.C. 102(a) or (b) as of its publication date.

01 Mar 2000
IA filed, with priority claim, US designated
01 Sep 2000
IA Publication by WIPO in any language'
11/29/00
AIPA effective date
01 Dec 2000
35 U.S.C. 111(a) application filed claiming benefit of the prior IA application
06 Dec 2001
Publication of 35 U.S.C. 111(a) appl. by USPTO under 35 U.S.C. 122(b)
06 Aug 2002
Patent granted to 35 U.S.C. 111 (a) application




The 35 U.S.C. 102(e)(1) date for the IA Publication by WIPO is: None.The 35 U.S.C. 102(e)(1) date for the Publication by USPTO is: 01 Dec. 2000.The 35 U.S.C. 102(e)(2) date for the Patent is: 01 Dec. 2000.

The IA publication by WIPO can be applied under 35 U.S.C. 102(a) or (b) as of its publication date (01 Sept 2000).

Additional Benefit Claims:

If the IA properly claimed the benefit of any earlier-filed U.S. application (whether provisional or nonprovisional), there would still be no 35 U.S.C. 102(e)(1) date for the IA publication by WIPO, and the U.S. application publication and patent would still have a 35 U.S.C. 102(e) date of the actual filing date of later- filed 35 U.S.C. 111(a) application in the example above (01 Dec 2000).

If a second, later-filed U.S. nonprovisional (35 U.S.C. 111(a)) application claimed the benefit of 35 U.S.C. 111(a) application in the example above, the 35 U.S.C. 102(e) date of the patent or publication of the second, later-filed U.S. application would still be the actual filing date of the 35 U.S.C. 111(a) application in the example above (01 Dec 2000).

III. FLOWCHARTS[edit | edit source]

Flowchart for 35 U.S.C. 102(e)DatesFlowchart for 35 U.S.C. 102(e)Dates FLOWCHARTS FOR 35 U.S.C. § 102(e) DATES: Apply to all applications and patents, whenever filed Chart I: For U.S. patent or U.S. patent application publication under 35 U.S.C. § 122(b) (includes publications of § 371 applications) NoNoYesNoYesNoYesYesNoYesNoYesIs the reference a U.S. patent or U.S. application publication of an International Application (IA) after National Stage entry? (look for any of the following indicators: “35 U.S.C. § 371,” “§ 371,” “(22) PCT Filed:,” and/or “(86) PCT No.”) Was the IA filed on or after Nov. 29, 2000? - look at the international filing date Is there an IA in the continuity chain for which a benefit is properly sought via §§ 120 or 365(c)? Was the WIPO publication of the IA in English and did the IA designate the U.S.? For a patent:§ 102(e) date is the § 371(c)(1), (2) and (4) dateForm Paragraph 7.12.01 For a U.S. appl. publication: no § 102(e) date Reference is prior art as of its publication date under § 102(a) or (b) Form Paragraph 7.08 or 7.09 For a patent and a U.S. application publication: § 102(e) date is the international filing date or an earlier filing date for which a benefit is properly sought Form Paragraph 7.12 For a patent and a U.S. application publication: no § 102(e) date Reference is prior art as of its publication or grant date under § 102(a) or (b) Form Paragraph 7.08 or 7.09 Was the IA filed on or after Nov. 29, 2000? -look at the international filingdateWas the WIPO publication of the IA in English and did the IA designate the U.S.? For a patent: § 102(e) date is the § 371(c)(1), (2) and (4) date; or § 111(a) filing date if the IA never entered national stage. Form Paragraph 7.12.01 For a U.S. application publication: § 102(e) date is the filing date of the U.S. application that claimed benefit to the IAForm Paragraph 7.12 For a patent and a U.S. application publication: § 102(e) date is the international filing date or an earlier date for which a benefit is properly sought Form Paragraph 7.12 For a patent and a U.S. application publication: § 102(e) date is the filing date of the U.S. application that claimed benefit to the IA Form Paragraph 7.12 The reference was filed under § 111(a) and only claims benefit to other U.S. applications filed under § 111(a) or (b) or does not make any benefit claims. The § 102(e) date of the reference is the earliest U.S. filing date for which a benefit is properly sought via §§ 119(e) and/or 120 (do not consider foreign priority claims under §§ 119(a)-(d)).Form Paragraph 7.12 Consider benefit claims properly made under § 119(e) to U.S. provisional applications, § 120 to U.S. nonprovisional applications, and § 365(c) involving IAs. Do NOT consider foreign priority claims. § 371 (National Stage) Benefit claimto an IA (§§ 120 or 365(c)) No IA involved No




Flowchart for 35 U.S.C. 102(e)DatesFlowchart for 35 U.S.C. 102(e)Dates FLOWCHARTS FOR 35 U.S.C. § 102(e) DATES: Apply to all applications and patents, whenever filed Chart II: For WIPO publicationof International Applications (IAs) NoYesNoYesWas the IA filed on or after Nov. 29, 2000? - look at the international filing date Was the WIPO publication of the IA in English and did the IA designate the U.S.? no § 102(e) date Reference is prior art as of its publication date under § 102(a) or (b) no matter what the language of publication was. Form Paragraph 7.08 or 7.09 § 102(e) date is the international filing dateor an earlier filing date for which a benefit is properly sought FormParagraph7.12no § 102(e) date Reference is prior art as of its publication date under § 102(a) or (b) no matter what the language of publication was. Form Paragraph 7.08 or 7.09 Consider benefit claims properly made under § 119(e) to U.S. provisional applications, § 120 to U.S. nonprovisional applications, and § 365(c) involving IAs. Do NOT consider foreign priority claims. Glossary of Terms: U.S. patent application publication = pre-grant publication by the USPTO under 35 U.S.C. § 122(b) International application (IA) = an application filed under the Patent Cooperation Treaty (PCT) § 371 application = an IA that has entered the national stage in the U.S. (35 U.S.C. § 371(c)(1), (2) and (4)) November 29, 2000 = the effective date for the amendments to §§ 102(e) and 374 WIPO = World Intellectual Property Organization WIPO Publication = a publication of an IA under PCT Article 21(2) (e.g., Publication No. WO 99/12345) § 111(a) = provision of the patent code that states the filing requirements for nonprovisionalapplications § 111(b) = provision of the patent code that states the filing requirements for provisionalapplications § 119(e) = provision of the patent code that allows for benefit claims to provisionalapplications § 119(a)-(d) = provision of the patent code that allows for priority claims to foreignapplications § 120 = provision of the patent code that allows for benefit claims to nonprovisionalapplications § 365(c) = provision of the patent code that allows for benefit claims to international applications





706.02(f)(2) Provisional Rejections Under35 U.S.C. 102(e); Reference Is a Copending U.S. Patent Application[edit | edit source]

If an earlier filed, copending, and unpublished U.S. patent application discloses subject matter which would anticipate the claims in a later filed pending U.S. application which has a different inventive entity, the examiner should determine whether a provisional 35 U.S.C. 102(e) rejection of the later filed application can be made. In addition, a provisional 35 U.S.C. 102(e) rejection may be made, in the circumstances described below, if the earlier filed, pending 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.

I. COPENDING U.S. APPLICATIONS HAVING AT LEAST ONE COMMON INVENTOR OR ARE COMMONLY ASSIGNED[edit | edit source]

If (1) at least one common inventor exists between the applications or the applications are commonly assigned and (2) the effective filing dates are different, then a provisional rejection of the later filed application should be made. The provisional rejection is appropriate in circumstances where if the earlier filed application is published or becomes a patent it would constitute actual prior art under 35 U.S.C. 102. Since the earlier-filed application is not published at the time of the rejection, the rejection must be provisionally made under 35 U.S.C. 102(e).

A provisional rejection under 35 U.S.C. 102(e) can be overcome in the same manner that a 35 U.S.C. 102(e) rejection can be overcome. See MPEP § 706.02(b). The provisional rejection can also be overcome by abandoning the applications and filing a new application containing the subject matter of both.

II. COPENDING APPLICATIONS HAVING NO COMMON INVENTOR OR ASSIGNEE[edit | edit source]

If there is no common assignee or common inventor and the application was not published pursuant to 35 U.S.C. 122(b), the confidential status of applications under 35 U.S.C. 122(a) must be maintained and no rejection can be made relying on the earlier filed, unpublished application, or subject matter not supported in a redacted application publication, as prior art under 35 U.S.C. 102(e). If the filing dates of the applications are within 6 months of each other (3 months for simple subject matter) then interference may be proper. See MPEP Chapter 2300. If the application with the earliest effective U.S. filing date will not be published pursuant to 35 U.S.C. 122(b), it must be allowed to issue once all the statutory requirements are met. After the patent is published, it may be used as a reference in a rejection under 35 U.S.C. 102(e) in the still pending application as appropriate. See MPEP § 706.02(a) and § 2136 et seq.

706.02(g) Rejections Under 35 U.S.C. 102(f)[edit | edit source]

35 U.S.C. 102(f) bars the issuance of a patent where an applicant did not invent the subject matter being claimed and sought to be patented. See also 35 U.S.C. 101, which requires that whoever invents or discovers is the party who may obtain a patent for the particular invention or discovery. The examiner must presume the applicants are the proper inventors unless there is proof that another made the invention and that applicant derived the invention from the true inventor.

See MPEP § 2137 - § 2137.02 for more information on the substantive requirements of rejections under 35 U.S.C. 102(f).

706.02(h) Rejections Under 35 U.S.C. 102(g)[edit | edit source]

35 U.S.C. 102(g) bars the issuance of a patent where another made the invention in the United States before applicant and had not abandoned, suppressed, or concealed it. This section of 35 U.S.C. 102 forms a basis for interference practice. See MPEP Chapter 2300 for more information on interference procedure. See MPEP § 2138 - § 2138.06 for more information on the requirements of 35 U.S.C. 102(g).

706.02(j) Contents of a 35 U.S.C. 103 Rejection[edit | edit source]

35 U.S.C. 103 authorizes a rejection where, to meet the claim, it is necessary to modify a single reference or to combine it with one or more other references. After indicating that the rejection is under 35 U.S.C. 103, the examiner should set forth in the Office action:

(A)the relevant teachings of the prior art relied upon, preferably with reference to the relevant column or page number(s) and line number(s) where appropriate,

(B)the difference or differences in the claim over the applied reference(s),

(C)the proposed modification of the applied reference( s) necessary to arrive at the claimed subject matter, and

(D)an explanation why one of ordinary skill in the art at the time the invention was made would have been motivated to make the proposed modification.

To establish a prima facie case of obviousness, three basic criteria must be met. First, there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings. Second, there must be a reasonable expectation of success. Finally, the prior art reference (or references when combined) must teach or suggest all the claim limitations. The teaching or suggestion to make the claimed combination and the reasonable expectation of success must both be found in the prior art and not based on applicant’s disclosure. In re Vaeck, 947 F.2d 488, 20 USPQ2d 1438 (Fed. Cir. 1991). See MPEP § 2143- § 2143.03 for decisions pertinent to each of these criteria.

The initial burden is on the examiner to provide some suggestion of the desirability of doing what the inventor has done. “To support the conclusion that the claimed invention is directed to obvious subject matter, either the references must expressly or impliedly suggest the claimed invention or the examiner must present a convincing line of reasoning as to why the artisan would have found the claimed invention to have been obvious in light of the teachings of the references.” Ex parte Clapp, 227 USPQ 972, 973 (Bd. Pat. App. & Inter. 1985). See MPEP § 2144 - § 2144.09 for examples of reasoning supporting obviousness rejections.

Where a reference is relied on to support a rejection, whether or not in a minor capacity, that reference should be positively included in the statement of the rejection. See In re Hoch, 428 F.2d 1341, 1342 n.3 166 USPQ 406, 407 n. 3 (CCPA 1970).

It is important for an examiner to properly communicate the basis for a rejection so that the issues can be identified early and the applicant can be given fair opportunity to reply. Furthermore, if an initially rejected application issues as a patent, the rationale behind an earlier rejection may be important in interpreting the scope of the patent claims. Since issued patents are presumed valid (35 U.S.C. 282) and constitute a property right (35 U.S.C. 261), the written record must be clear as to the basis for the grant. Since patent examiners cannot normally be compelled to testify in legal proceedings regarding their mental processes (see MPEP § 1701.01), it is important that the written record clearly explain the rationale for decisions made during prosecution of the application.

See MPEP § 2141 - § 2144.09 generally for guidance on patentability determinations under 35 U.S.C. 103, including a discussion of the requirements of Graham v. John Deere, 383 U.S. 1, 148 USPQ 459 (1966). See MPEP § 2145 for consideration of applicant’s rebuttal arguments. See MPEP § 706.02(l) - § 706.02(l)(3) for a discussion of prior art disqualified under 35 U.S.C. 103(c).

706.02(k) Provisional Rejection (Obviousness) Under 35 U.S.C. 102(e)/103[edit | edit source]

For patent applications pending on or after Dec. 10, 2004, examination proceedings, subject matter which was prior art under former 35 U.S.C. 103 via 35 U.S.C. 102(e) was disqualified as prior art against the claimed invention if that subject matter and the claimed invention "were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person."

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 three conditions are met:

(A) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made;

(B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and

(C) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

For reexamination proceedings, the above rules are in effect only for patents granted on or after December 10, 2004.

Where two applications of different inventive entities are copending, not published under 35 U.S.C. 122(b), and the filing dates differ, a provisional rejection under 35 U.S.C. 102(e)/103 should be made in the later filed application unless the application has been excluded under 35 U.S.C. 103(c).

Provisional rejections are used to maintain confidentiality of unpublished applications.

A provisional rejection alerts the applicant that he or she can expect an actual rejection on the same ground if one of the applications issues and also lets applicant know that action must be taken to avoid the rejection.

This gives applicant the opportunity to analyze the propriety of the rejection and possibly avoid the loss of rights to desired subject matter. Provisional rejections of the obviousness type under 35 U.S.C. 102(e)/ 103 are rejections applied to copending applications having different effective filing dates wherein each application has a common assignee or a common inventor. The earlier filed application, if patented or published, would constitute prior art under 35 U.S.C. 102(e). The rejection can be overcome by:

(A) Arguing patentability over the earlier filed application;

(B) Combining the subject matter of the copending applications into a single application claiming benefit under 35 U.S.C. 120 of the prior applications and abandoning the copending applications (Note that a claim in a subsequently filed application that relies on a combination of prior applications may not be entitled to the benefit of an earlier filing date under 35 U.S.C. 120 since 35 U.S.C. 120 requires that the earlier filed application contain a disclosure which complies with 35 U.S.C. 112, first paragraph for each claim in the subsequently filed application.);

(C) Filing an affidavit or declaration under 37 CFR 1.132 showing that any unclaimed invention disclosed in the copending application was derived from the inventor of the other application and is thus not invention "by another" (see MPEP § 715.01(a), § 715.01(c), and § 716.10);

(D) Filing an affidavit or declaration under 37 CFR 1.131 showing a date of invention prior to the effective U.S. filing date of the copending application. See MPEP § 715; or

(E) For an application that is pending on or after December 10, 2004, a showing that (1) the prior art and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person, or (2) the subject matter is disqualified under the amendment to 35 U.S.C. 103(c) made by the CREATE Act (i.e., joint research agreement disqualification).

Where the applications are claiming the same patentable invention, a terminal disclaimer and an affidavit or declaration under 37 CFR 1.130 may be used to overcome a rejection under 35 U.S.C. 103 in a common ownership situation if the earlier filed application has been published or matured into a patent. See MPEP 718.

If a provisional rejection is made and the copending applications are combined into a single application and the resulting single application is subject to a restriction requirement, the divisional application would not be subject to a provisional or actual rejection under 35 U.S.C. 102(e)/103 since the provisions of 35 U.S.C. 121 preclude the use of a patent issuing therefrom as a reference against the other application. Additionally, the resulting continuation-in-part is entitled to 35 U.S.C. 120 benefit of each of the prior applications. This is illustrated in Example 2, below.

The following examples are instructive as to the application of 35 U.S.C. 102(e)/103 in applications filed prior to November 29, 1999 for which a patent was granted prior to December 10, 2004:


Example 1. Assumption: Employees A and B work for C, each with knowledge of the other's work, and with obligation to assign inventions to C while employed.

SITUATIONS RESULTS
1. A invents X and later files application. This is permissible.
2. B modifies X to XY. B files application before A’s filing. No 35 U.S.C. 102(f)/103 or 102(g)/103 rejection; provisional 35 U.S.C. 102(e)/103 rejection applies. Provisional double patenting rejection made.
3. B’s patent issues. A’s claims rejected under 35 U.S.C. 102(e)/103 and double patenting.
4. A files 37 CFR 1.130 affidavit to disqualify B’s patent as prior art where the same patentable invention is being claimed. Terminal disclaimer filed under 37 CFR 1.321(c). Rejection under 35 U.S.C. 102(e)/103 may be overcome and double patenting rejection may be overcome if inventions X and XY are commonly owned and all requirements of 37 CFR 1.130 and 1.321 are met.

In situation (2.) above, the result is a provisionalrejection by the examiner under 35 U.S.C. 102(e)/ 103. The rejection is provisional since the subject matter and the prior art are pending applications.


Example 2. Assumption: Employees A and B work for C, each with knowledge of the other’s work, and with obligation to assign inventions to C while employed.

SITUATIONS RESULTS
1. A invents X and files application. This is permissible.
2. B modifies X to XY after A’s application is filed. B files application establishing that A and B were both under obligation to assign inventions to C at the time the inventions were made. Provisional 35 U.S.C. 102(e)/103 rejection made; provisional double patenting rejection made; no 35 U.S.C. 102(f)/103 or 102(g)/103 rejection made.
3. A and B file continuing application claiming priority to both their earlier applications and abandon the earlier applications. Assume it is proper that restriction be required between X and XY.
4. X is elected and patent issues on X with divisional application being timely filed on XY. No rejection of divisional application under 35 U.S.C. 102(e)/103 in view of 35 U.S.C. 121.

The following examples are instructive as to rejections under 35 U.S.C. 102(e)/103 in applications that are pending on or after December 10, 2004:


Example 3. Assumption: Employees A and B work for C, each with knowledge of the other’s work, and with obligation to assign inventions to C while employed. Employee A’s application, which is pending on or after December 10, 2004, is being examined.

SITUATIONS RESULTS
1. A invents X and later files application. This is permissible.
2. B modifies X to XY. B files application before A’s filing. A files an application on invention X. Provisional 35 U.S.C. 102(e)/103 rejection and a provisional double patenting rejection are made.
3. B’s patent issues. A’s claims are rejected under 35 U.S.C. 102(e)/103 and double patenting.
4. A files evidence of common ownership of inventions X and XY at the time invention XY was made to disqualify B’s patent as prior art. In addition, A files a terminal disclaimer under 37 CFR 1.321(c). Rejection under 35 U.S.C. 102(e)/103 will be withdrawn and double patenting rejection will be obviated if inventions X and XY are commonly owned at the time invention XY was made and all requirements of 37 CFR 1.321 are met.

In situation (2.) above, the result is a provisionalrejection by the examiner under 35 U.S.C. 102(e)/ 103. The rejection is provisional since the subject matter and the prior art are pending applications.


Example 4. Assumption: Employees A and B work for C, each with knowledge of the other’s work, and with obligation to assign inventions to C while employed. Employee B’s application, which is pending on or after December 10, 2004, is being examined.

SITUATIONS RESULTS
1. A invents X and files application. This is permissible.
2. B modifies X to XY after A’s application is filed. B files evidence establishing that A and B were both under obligation to assign inventions to C at the time the invention XY was made. Provisional 35 U.S.C. 102(e)/103 rejection cannot be made; provisional double patenting rejection is made; no 35 U.S.C. 102(f)/103 or 102(g)/103 rejection made.
3. B files a terminal disclaimer under 37 CFR 1.321(c). The provisional double patenting rejection made in B’s application would be obviated if all requirements of 37 CFR 1.321 are met.


Example 5. Assumption: Employee A works for assignee I and Employee B works for assignee J. There is a joint research agreement, pursuant to 35 U.S.C. 103(c), between assignees I and J. Employees A and B each filed an application as set forth below. Employee B’s invention claimed in his application was made after the joint research agreement was entered into, and it was made as a result of activities undertaken within the scope of the joint agreement. Employee B’s application discloses assignees I and J as the parties to the joint research agreement. Employee B’s application, which is pending on or after December 10, 2004, is being examined.

SITUATIONS RESULTS
1. A invents X and files application. This is permissible.
2. B modifies X to XY after A’s application is filed. B files evidence establishing a joint research agreement in compliance with 35 U.S.C. 103(c). Provisional 35 U.S.C. 102(e)/103 rejection cannot be made; provisional double patenting rejection is made; no 35 U.S.C. 102(f)/103 or 102(g)/103 rejection made.
3. B files a terminal disclaimer under 37 CFR 1.321. The provisional double patenting rejection made in B’s application would be obviated if all requirements of 37 CFR 1.321 are met.


EXAMINATION OF CONTINUING APPLICATION COMMONLY OWNED WITH ABANDONED PARENT APPLICATION TO WHICH BENEFIT IS CLAIMED UNDER 35 U.S.C. 120

An application claiming the benefit of a prior filed copending national or international application under 35 U.S.C. 120 must name as an inventor at least one inventor named in the prior filed application. The prior filed application must also disclose the named inventor’s invention claimed in at least one claim of the later filed application in the manner provided by the first paragraph of 35 U.S.C. 112.

So long as the applications have at least one inventor in common and the other requirements are met, the Office will permit a claim for 35 U.S.C. 120 benefit without any additional submissions or notifications from applicants regarding inventorship differences.

706.02(l) Rejections Under 35 U.S.C. 103(a) Using Prior Art Under Only 35 U.S.C. 102 (e), (f), or (g)[edit | edit source]

35 U.S.C. 103. Conditions for patentability; non-obvious subject matter.
.          .          .

(c)

(1) Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.

(2) For purposes of this subsection, subject matter developed by another person and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person if —

(A) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made;

(B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and

(C) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

(3) For purposes of paragraph (2), the term "joint research agreement" means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.


  • It is important to recognize that 35 U.S.C. 103(c) applies only to consideration of prior art for purposes of obviousness 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.
  • In addition, subject matter that 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).
  • A patent applicant or patentee urging that subject

matter is disqualified has the burden of establishing that the prior art is disqualified under 35 U.S.C. 103(c).

  • The term "another" as used in 35 U.S.C. 103 means any inventive entity other than the inventor and would include the inventor and any other persons.
  • The term "commonly owned" means wholly owned by the same person(s) or organization(s) at the time the invention was made.

FOR APPLICATIONS FILED PRIOR TO NOVEMBER 29, 1999 AND GRANTED AS PATENTS PRIOR TO DECEMBER 10, 2004

Prior to November 29, 1999, 35 U.S.C. 103(c) provided that subject matter developed by another which qualifies as “prior art” only under subsections 35 U.S.C. 102(f) or 35 U.S.C. 102(g) is not to be considered when determining whether an invention sought to be patented is obvious under 35 U.S.C. 103, provided the subject matter and the claimed invention were commonly owned at the time the invention was made. See MPEP § 706.02(l)(1) for information regarding when prior art under 35 U.S.C. 102(e)/103is disqualified under 35 U.S.C. 103(c).

For applications filed prior to November 29, 1999 and granted as patents prior to December 10, 2004, the subject matter that is disqualified as prior art under 35 U.S.C. 103(c) is strictly limited to subject matter that A) qualifies as prior art only under 35 U.S.C. 102(f) or 35 U.S.C. 102(g), and B) was commonly owned with the claimed invention at the time the invention was made. If the subject matter that qualifies as prior art only under 35 U.S.C. 102(f) or 35 U.S.C. 102(g) was not commonly owned at the time of the invention, the subject matter is not disqualified as prior art under 35 U.S.C. 103(c). See OddzOn Products, Inc. v. Just Toys, Inc., 122 F.3d 1396, 1403-04, 43 USPQ2d 1641, 1646 (Fed. Cir. 1997) (“We therefore hold that subject matter derived from another not only is itself unpatentable to the party who derived it under § 102(f), but, when combined with other prior art, may make a resulting obvious invention unpatentable to that party under a combination of §§ 102(f) and 103.”) Therefore, in these applications, information learned from or transmitted to persons outside the organization is not disqualified as prior art.

Inventors of subject matter not commonly owned at the time of the invention, but currently commonly owned, may file as joint inventors in a single application. However, the claims in such an application are not protected from a 35 U.S.C. 102(f)/103 or 35 U.S.C. 102(g)/103 rejection. Applicants in such cases have an obligation pursuant to 37 CFR 1.56 to point out the inventor and invention dates of each claim and the lack of common ownership at the time the later invention was made to enable the examiner to consider the applicability of a 35 U.S.C. 102(f)/103or 35 U.S.C. 102(g)/103 rejection. The examiner will assume, unless there is evidence to the contrary, that applicants are complying with their duty of disclosure.

Foreign applicants will sometimes combine the subject matter of two or more related applications with different inventors into a single U.S. application naming joint inventors. The examiner will make the assumption, absent contrary evidence, that the applicants are complying with their duty of disclosure if no information is provided relative to invention dates and common ownership at the time the later invention was made. Such a claim for 35 U.S.C. 119(a)-(d) priority based upon the foreign filed applications is appropriate and 35 U.S.C. 119(a)-(d) priority can be accorded based upon each of the foreign filed applications.

706.02(l)(1) Rejections Under 35 U.S.C. 103(a) Using Prior Art Under 35 U.S.C. 102(e), (f), or (g); Prior Art Disqualification Under 35 U.S.C. 103(c)[edit | edit source]
35 U.S.C. 103. Conditions for patentability; non-obvious subject matter.
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(c)

(1) Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.

(2) For purposes of this subsection, subject matter developed by another person and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person if —

(A) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made;

(B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and

(C) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

(3) For purposes of paragraph (2), the term "joint research agreement" means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.

I.COMMON OWNERSHIP OR ASSIGNEE PRIOR ART EXCLUSION UNDER 35 U.S.C. 103(c)[edit | edit source]

Enacted on November 29, 1999, the American Inventors Protection Act (AIPA) added subject matter which was prior art under former 35 U.S.C. 103 via 35 U.S.C. 102(e) as disqualified prior art against the claimed invention if that subject matter and the claimed invention “were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.” The 1999 change to 35 U.S.C. 103(c) only applied to all utility, design and plant patent applications filed on or after November 29, 1999. The Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act), in part, redesignated the former 35 U.S.C. 103(c) to 35 U.S.C. 103(c)(1) and made this provision effective to all applications in which the patent is granted on or after December 10, 2004. Therefore, the provision of 35 U.S.C. 103(c)(1) is effective for all applications pending on or after December 10, 2004, including applications filed prior to November 29, 1999. In addition, this provision applies to all patent applications, including utility, design, plant and reissue applications. The amendment to 35 U.S.C. 103(c)(1) does not affect any application filed before November 29, 1999 and issued as a patent prior to December 10, 2004.

In a reexamination proceeding, however, one must look at whether or not the patent being reexamined was granted on or after December 10, 2004 to determine whether 35 U.S.C. 103(c), as amended by the CREATE Act, applies. For a reexamination proceeding of a patent granted prior to December 10, 2004 on an application filed on or after November 29, 1999, it is the 1999 changes to 35 U.S.C. 103(c) that are applicable to the disqualifying commonly assigned/owned prior art provisions of 35 U.S.C. 103(c). For a reexamination proceeding of a patent granted prior to December 10, 2004 on an application filed prior to November 29, 1999, neither the 1999 nor the 2004 changes to 35 U.S.C. 103(c) are applicable. Therefore, only prior art under 35 U.S.C. 102(f) or (g) used in a rejection under 35 U.S.C. 103(a) may be disqualified under the commonly assigned/owned prior art provisions of 35 U.S.C. 103(c).

For reissue applications, the doctrine of recapture may prevent the presentation of claims in the reissue applications that were amended or cancelled from the application which matured into the patent for which reissue is being sought, if the claims were amended or cancelled to distinguish the claimed invention from 35 U.S.C. 102(e)/103 prior art which was not able to be excluded under 35 U.S.C. 103(c) in the application that issued as a patent. If an examiner determines that this situation applies in the reissue application under examination, a consultation with the Office of Patent Legal Administration should be initiated via the Technology Center Special Program Examiner.

35 U.S.C. 103(c) applies only to prior art usable in an obviousness rejection under 35 U.S.C. 103. Subject matter that qualifies as anticipatory prior art under 35 U.S.C. 102 is not affected, and may still be used to reject claims as being anticipated. In addition, double patenting rejections, based on subject matter now disqualified as prior art in amended 35 U.S.C. 103(c), should still be made as appropriate. See 37 CFR 1.78(c) and MPEP § 804.

The burden of establishing that subject matter is disqualified as prior art is placed on applicant once the examiner has established a prima facie case of obviousness based on the subject matter. For example, the fact that the reference and the application have the same assignee is not, by itself, sufficient evidence to disqualify the prior art under 35 U.S.C. 103(c). There must be a statement that the common ownership was “at the time the invention was made.”

See MPEP § 706.02(l)(2) for information regarding establishing common ownership. See MPEP § 706.02(l)(3) for examination procedure with respect to 35 U.S.C. 103(c).

II. JOINT RESEARCH AGREEMENT DISQUALIFICATION UNDER 35 U.S.C. 103(c) BY THE CREATE ACT[edit | edit source]

The CREATE Act (Pub. L. 108-453, 118 Stat. 3596 (2004)) was enacted on December 10, 2004, and is effective for applications for which the patent is granted on or after December 10, 2004. Specifically, the CREATE Act amended 35 U.S.C. 103(c) to provide that:

  • subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of 35 U.S.C. 102 shall not preclude patentability under 35 U.S.C. 103 where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person;
  • for purposes of 35 U.S.C. 103, subject matter developed by another person and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person if
    • the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made,
    • the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement, and
    • the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement;
  • for purposes of 35 U.S.C. 103(c), the term “joint research agreement” means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, development, or research work in the field of the claimed invention.

The effective date provision of the CREATE Act provided that its amendments shall apply to any patent (including any reissue patent) granted on or after December 10, 2004. The CREATE Act also provided that its amendment shall not affect any final decision of a court or the Office rendered before December 10, 2004, and shall not affect the right of any party in any action pending before the Office or a court on December 10, 2004, to have that party’s rights determined on the basis of the provisions of title 35, United States Code, in effect on December 9, 2004. Since the CREATE Act also includes the amendment to 35 U.S.C. 103(c) made by section 4807 of the AIPA (see Pub. L. 106-113, 113 Stat. 1501, 1501A-591 (1999)), the change of “subsection (f) or (g)” to “one or more of subsections (e), (f), or (g)” in 35 U.S.C. 103(c) is now also applicable to applications filed prior to November 29, 1999, that were pending on December 10, 2004.

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. If the rejection is anticipation under 35 U.S.C. 102(e), (f), or (g), 35 U.S.C. 103(c) cannot be relied upon to disqualify the subject matter in order to overcome or prevent the anticipation rejection. Likewise, 35 U.S.C. 103(c) cannot be relied upon to overcome or prevent a double patenting rejection. See 37 CFR 1.78(c) and MPEP § 804.

Because the CREATE Act applies only to patents granted on or after December 10, 2004, the recapture doctrine may prevent the presentation of claims in the reissue applications that had been amended or cancelled (e.g., to avoid a rejection under 35 U.S.C. 103(a) based on subject matter that may now be disqualified under the CREATE Act) during the prosecution of the application which resulted in the patent being reissued.

706.02(l)(2)Establishing Common Ownership or Joint Research Agreement[edit | edit source]

In order to be disqualified as prior art under 35 U.S.C. 103(c), the subject matter which would oth erwise be prior art to the claimed invention and the claimed invention must be commonly owned, or subject to an obligation of assignment to a same person, at the time the claimed invention was made or be subject to a joint research agreement at the time the invention was made. See MPEP § 706.02(l) for 35 U.S.C. 102(f)/103 or 35 U.S.C. 102(g)/103 prior art disqualified under 35 U.S.C. 103(c) in applications granted as patents prior to December 10, 2004. See MPEP § 706.02(l)(1) for 35 U.S.C. 102(e), (f), or (g)/ 103 prior art disqualified under 35 U.S.C. 103(c).

I. DEFINITION OF COMMON OWNERSHIP[edit | edit source]

The term "commonly owned" is intended to mean that the subject matter which would otherwise be prior art to the claimed invention and the claimed invention are entirely or wholly owned by the same person(s) or organization(s)/business entity(ies) at the time the claimed invention was made. If the person(s) or organization(s) owned less than 100 percent of the subject matter which would otherwise be prior art to the claimed invention, or less than 100 percent of the claimed invention, then common ownership would not exist. Common ownership requires that the person( s) or organization(s)/business entity(ies) own 100 percent of the subject matter and 100 percent of the claimed invention.

Specifically, if an invention claimed in an application is owned by more than one entity and those entities seek to exclude the use of a reference under 35 U.S.C. 103, then the reference must be owned by, or subject to an obligation of assignment to, the same entities that owned the application, at the time the later invention was made. For example, assume Company A owns twenty percent of patent Application X and Company B owns eighty percent of patent Application X at the time the invention of Application X was made. In addition, assume that Companies A and B seek to exclude the use of Reference Z under 35 U.S.C. 103. Reference Z must have been co- owned, or have been under an obligation of assignment to both companies, on the date the invention was made in order for the exclusion to be properly requested. A statement such as “Application X and Patent Z were, at the time the invention of Application X was made, jointly owned by Companies A and B” would be sufficient evidence of common ownership.

For applications owned by a joint venture of two or more entities, both the application and the reference must have been owned by, or subject to an obligation of assignment to, the joint venture at the time the invention was made. For example, if Company A and Company B formed a joint venture, Company C, both Application X and Reference Z must have been owned by, or subject to an obligation of assignment to, Company C at the time the invention was made in order for Reference Z to be properly excluded as prior art under 35 U.S.C. 103(c). If Company A by itself owned Reference Z at the time the invention of Application X was made and Application X was owned by Company C on the date the invention was made, then a request for the exclusion of Reference Z as prior art under 35 U.S.C. 103(c) would not be proper.

As long as principal ownership rights to either the subject matter or the claimed invention reside in different persons or organizations common ownership does not exist. A license of the claimed invention to another by the owner where basic ownership rights are retained would not defeat ownership.

The requirement for common ownership at the time the claimed invention was made is intended to preclude obtaining ownership of subject matter after the claimed invention was made in order to disqualify that subject matter as prior art against the claimed invention.

The question of whether common ownership exists at the time the claimed invention was made is to be determined on the facts of the particular case in question. Actual ownership of the subject matter and the claimed invention by the same individual(s) or organization( s) or a legal obligation to assign both the subject matter and the claimed invention to the same individual(s) or organization(s)/business entity(ies) must be in existence at the time the claimed invention was made in order for the subject matter to be disqualified as prior art. A moral or unenforceable obligation would not evidence common ownership.

Under 35 U.S.C. 103(c), an applicant’s admission that subject matter was developed prior to applicant’s invention would not make the subject matter prior art to applicant if the subject matter qualifies as prior art only under sections 35 U.S.C. 102(e), (f), or (g), and if the subject matter and the claimed invention were commonly owned at the time the invention was made. See In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982), for a decision involving an applicant’s admission which was used as prior art against their application. If the subject matter and invention were not commonly owned, an admission that the subject matter is prior art would be usable under 35 U.S.C. 103.

The burden of establishing that subject matter is disqualified as prior art under 35 U.S.C. 103(c) is intended to be placed and reside upon the person or persons urging that the subject matter is disqualified. For example, a patent applicant urging that subject matter is disqualified as prior art under 35 U.S.C. 103(c), would have the burden of establishing that it was commonly owned at the time the claimed invention was made. The patentee in litigation would likewise properly bear the same burden placed upon the applicant before the U.S. Patent and Trademark Office. To place the burden upon the patent examiner or the defendant in litigation would not be appropriate since evidence as to common ownership at the time the claimed invention was made might not be available to the patent examiner or the defendant in litigation, but such evidence, if it exists, should be readily available to the patent applicant or the patentee.

In view of 35 U.S.C. 103(c), the Director has reinstituted in appropriate circumstances the practice of rejecting claims in commonly owned applications of different inventive entities on the grounds of double patenting. Such rejections can be overcome in appropriate circumstances by the filing of terminal disclaimers. This practice has been judicially authorized. See In re Bowers, 359 F.2d 886, 149 USPQ 57 (CCPA 1966). The use of double patenting rejections which then could be overcome by terminal disclaimers preclude patent protection from being improperly extended while still permitting inventors and their assignees to obtain the legitimate benefits from their contributions. See also MPEP § 804.

The following examples are provided for illustration only:

Example 1

Parent Company owns 100% of Subsidiaries A and B

- inventions of A and B are commonly owned by the Parent Company.

Example 2

Parent Company owns 100% of Subsidiary A and 90% of Subsidiary B

- inventions of A and B are not commonly owned by the Parent Company.

Example 3

If same person owns subject matter and invention at time invention was made, license to another may be made without the subject matter becoming prior art.

Example 4

Different Government inventors retaining certain rights (e.g. foreign filing rights) in separate inventions owned by Government precludes common ownership of inventions.

Example 5

Company A and Company B form joint venture Company C. Employees of A, while working for C with an obligation to assign inventions to C, invent invention #1; employees of B while working for C with an obligation to assign inventions to C, invent invention #2, with knowledge of #1.

Question: Are #1 and #2 commonly owned at the time the later invention was made so as to preclude a rejection under 35 U.S.C. 102(e), (f) or (g) in view of 35 U.S.C. 103?

Answer: Yes- If the required evidence of common ownership is made of record in the patent application file. If invention #1 was invented by employees of Company A not working for Company C and Company A maintained sole ownership of invention #1 at the time invention #2 was made, inventions #1 and #2 would not be commonly owned as required by 35 U.S.C. 103(c).

Example 6

Company A owns 40% of invention #1 and 60% of invention #2, and Company B owns 60% of invention

  1. 1 and 40% of invention #2 at the time invention
  2. 2 was made.

-inventions #1 and #2 are commonly owned.

Example 7

Company B has a joint research project with University A. Under the terms of the joint research project, University A has agreed that all of its patents will be jointly owned by Company B and University A. Professor X, who works for University A, has an employee agreement with University A assigning all his patents only to University A. After the joint research project agreement is exe cuted, University A files patent application #1 for the invention of Professor X, before Company B files patent application #2 on a similar invention.

- inventions #1 and #2 are commonly owned because Professor X’s obligation to assign patents to University A who has an obligation to assign patents to the A-B joint venture legally establishes Professor X’s obligation to assign patents to the A- B joint venture.

Example 8

Inventor X working at Company A invents and files patent application #1 on technology T, owned by Company A. After application #1 is filed, Company A spins off a 100% owned Subsidiary B for technology T including the transfer of the ownership of patent application #1 to Subsidiary B. After Subsidiary B is formed, inventor Y (formerly a Company A employee, but now an employee of Subsidiary B obligated to assign to Subsidiary B) jointly files application #2 with inventor X (now also an employee of Subsidiary B with an obligation to assign to Subsidiary B), which is directed to a possibly unobvious improvement to technology T.

- the inventions of applications #1 and #2 are commonly owned since Subsidiary B is a wholly owned subsidiary of Company A.

The examiner must examine the application as to all grounds except 35 U.S.C. 102(e), (f) and (g) as they apply through 35 U.S.C. 103 only if the application file(s) establishes common ownership at the time the later invention was made. Thus, it is necessary to look to the time at which common ownership exists. If common ownership does not exist at the time the later invention was made, the earlier invention is not disqualified as potential prior art under 35 U.S.C. 102(e), (f) and (g) as they apply through 35 U.S.C. 103. An invention is “made” when conception is complete as defined in Mergenthaler v. Scudder, 11 App. D.C. 264, 81 O.G. 1417, 1897 C.D. 724 (D.C. Cir. 1897); In re Tansel, 253 F.2d 241, 117 USPQ 188 (CCPA 1958). See Pfaff v. Wells Elecs., 525 U.S. 55, 119 S. Ct. 304, 312, 48 USPQ2d 1641, 1647 (1998) (“the invention must be ready for patenting . . . . by proof that prior to the critical date the inventor had prepared drawing or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to practice the invention.”) Common ownership at the time the invention was made for purposes of obviating a 35 U.S.C. 102(e)/35 U.S.C. 103, 35 U.S.C. 102(f)/35 U.S.C. 103 or 35 U.S.C. 102(g)/35 U.S.C. 103 rejection may be established irrespective of whether the invention was made in the United States or abroad. The provisions of 35 U.S.C. 104, however, will continue to apply to other proceedings in the U.S. Patent and Trademark Office, e.g. in an interference proceeding, with regard to establishing a date of invention by knowledge or use thereof, or other activity with respect thereto, in a foreign country. The foreign filing date will continue to be used for interference purposes under 35 U.S.C. 119(a)-(d) and 35 U.S.C. 365.

II. EVIDENCE REQUIRED TO ESTABLISH COMMON OWNERSHIP[edit | edit source]

It is important to recognize just what constitutes sufficient evidence to establish common ownership at the time the invention was made. The common ownership must be shown to exist at the time the later invention was made. A statement of present common ownership is not sufficient. In re Onda, 229 USPQ 235 (Comm’r Pat. 1985).

The following statement is sufficient evidence to establish common ownership of, or an obligation for assignment to, the same person(s) or organizations(s):

Applications and references (whether patents, patent applications, patent application publications, etc.) will be considered by the examiner to be owned by, or subject to an obligation of assignment to the same person, at the time the invention was made, if the applicant(s) or an attorney or agent of record makes a statement to the effect that the application and the reference were, at the time the invention was made, owned by, or subject to an obligation of assignment to, the same person.

See “Guidelines Setting Forth a Modified Policy Concerning the Evidence of Common Ownership, or an Obligation of Assignment to the Same Person, as Required by 35 U.S.C. 103(c),” 1241 O.G. 96 (December 26, 2000). The applicant(s) or the representative( s) of record have the best knowledge of the ownership of their application(s) and reference(s), and their statement of such is sufficient evidence because of their paramount obligation of candor and good faith to the USPTO.

The statement concerning common ownership should be clear and conspicuous (e.g., on a separate piece of paper or in a separately labeled section) in order to ensure that the examiner quickly notices the statement. Applicants may, but are not required to, submit further evidence, such as assignment records, affidavits or declarations by the common owner, or court decisions, in addition to the above-mentioned statement concerning common ownership.

For example, an attorney or agent of record receives an Office action for Application X in which all the claims are rejected under 35 U.S.C. 103(a) using Patent A in view of Patent B wherein Patent A is only available as prior art under 35 U.S.C. 102(e), (f), and/or (g). In her response to the Office action, the attorney or agent of record for Application X states, in a clear and conspicuous manner, that:

"Application X and Patent A were, at the time the invention of Application X was made, owned by Company Z."

This statement alone is sufficient evidence to disqualify Patent A from being used in a rejection under 35 U.S.C. 103(a) against the claims of Application X.

In rare instances, the examiner may have independent evidence that raises a material doubt as to the accuracy of applicant’s representation of either (1) the common ownership of, or (2) the existence of an obligation to commonly assign, the application being examined and the applied U.S. patent or U.S. patent application publication reference. In such cases, the examiner may explain why the accuracy of the representation is doubted, and require objective evidence of common ownership of, or the existence of an obligation to assign, the application being examined and the applied reference as of the date of invention of the application being examined. As mentioned above, applicant(s) may submit, in addition to the above- mentioned statement regarding common ownership, the following objective evidence:

(A) Reference to assignments recorded in the U.S. Patent and Trademark Office in accordance with 37 CFR Part 3 which convey the entire rights in the applications to the same person(s) or organization(s);

(B) Copies of unrecorded assignments which convey the entire rights in the applications to the same person(s) or organization(s) are filed in each of the applications;

(C) An affidavit or declaration by the common owner is filed which states that there is common ownership and states facts which explain why the affiant or declarant believes there is common ownership, which affidavit or declaration may be signed by an official of the corporation or organization empowered to act on behalf of the corporation or organization when the common owner is a corporation or other organization; and

(D) Other evidence is submitted which establishes common ownership of the applications.

III.EVIDENCE REQUIRED TO ESTABLISH A JOINT RESEARCH AGREEMENT[edit | edit source]

Once an examiner has established a prima faciecase of obviousness under 35 U.S.C. 103(a), the burden of overcoming the rejection by invoking the joint research agreement provisions of 35 U.S.C. 103(c) as amended by the CREATE Act is on the applicant or the patentee. 35 U.S.C. 103(c)(3) defines a “joint research agreement” as a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention, that was in effect on or before the date the claimed invention (under examination or reexamination) was made.

Like the common ownership or assignment provision, the joint research agreement must be shown to be in effect on or before the time the later invention was made. The joint research agreement may be in effect prior to the effective date (December 10, 2004) of the CREATE Act. In addition, the joint research agreement is NOT required to be in effect on or before the prior art date of the reference that is sought to be disqualified.

To overcome a rejection under 35 U.S.C. 103(a) based upon subject matter (whether a patent document, publication, or other evidence) which qualifies as prior art under only one or more of 35 U.S.C. 102(e), (f), or (g) via the CREATE Act, the applicant must comply with the statute and the rules of practice in effect.

37 CFR 1.71. Detailed description and specification of the invention.
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(g)

(1) The specification may disclose or be amended to disclose the names of the parties to a joint research agreement (35 U.S.C. 103(c)(2)(C)).

(2) An amendment under paragraph (g)(1) of this section must be accompanied by the processing fee set forth § 1.17(i) if not filed within one of the following time periods:

(i) Within three months of the filing date of a national application;

(ii) Within three months of the date of entry of the national stage as set forth in § 1.491 in an international application;

(iii) Before the mailing of a first Office action on the merits; or

(iv) Before the mailing of a first Office action after the filing of a request for continued examination under § 1.114.

(3) If an amendment under paragraph (g)(1) of this section is filed after the date the issue fee is paid, the patent as issued may not necessarily include the names of the parties to the joint research agreement. If the patent as issued does not include the names of the parties to the joint research agreement, the patent must be corrected to include the names of the parties to the joint research agreement by a certificate of correction under 35 U.S.C. 255 and § 1.323 for the amendment to be effective.


37 CFR 1.104. Nature of examination.
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(c) Rejection of claims.

(4) Subject matter which is developed by another person which qualifies as prior art only under 35 U.S.C. 102(e), (f) or (g) may be used as prior art under 35 U.S.C. 103 against a claimed invention unless the entire rights to the subject matter and the claimed invention were commonly owned by the same person or subject to an obligation of assignment to the same person at the time the claimed invention was made.

(i) Subject matter developed by another person and a claimed invention shall be deemed to have been commonly owned by the same person or subject to an obligation of assignment to the same person in any application and in any patent granted on or after December 10, 2004, if:

(A) The claimed invention and the subject matter was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made;

(B) The claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and

(C) The application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

(ii) For purposes of paragraph (c)(4)(i) of this section, the term “joint research agreement” means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.

(iii) To overcome a rejection under 35 U.S.C. 103(a) based upon subject matter which qualifies as prior art under only one or more of 35 U.S.C. 102(e), (f) or (g) via 35 U.S.C. 103(c)(2), the applicant must provide a statement to the effect that the prior art and the claimed invention were made by or on the behalf of parties to a joint research agreement, within the meaning of 35 U.S.C. 103(c)(3) and paragraph (c)(4)(ii) of this section, that was in effect on or before the date the claimed invention was made, and that the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement.

37 CFR 1.71(g) provides for the situation in which an application discloses or is amended to disclose the names of the parties to a joint research agreement to invoke the “safe harbor” provision of 35 U.S.C. 103(c) as amended by the CREATE Act. 37 CFR 1.71(g)(1) specifically provides that the specification may disclose or be amended to disclose the name of each party to the joint research agreement because this information is required by 35 U.S.C. 103(c)(2)(C).

37 CFR 1.71(g)(2) provides that an amendment under 37 CFR 1.71(g)(1) must be accompanied by the processing fee set forth in 37 CFR 1.17(i) if it is not filed within one of the following time periods: (1) within three months of the filing date of a national application; (2) within three months of the date of entry of the national stage as set forth in 37 CFR 1.491 in an international application; (3) before the mailing of a first Office action on the merits; or (4) before the mailing of a first Office action after the filing of a request for continued examination under 37 CFR 1.114.

37 CFR 1.71(g)(3) provides that if an amendment under 37 CFR 1.71(g)(1) is filed after the date the issue fee is paid, the patent as issued may not necessarily include the names of the parties to the joint research agreement. 37 CFR 1.71(g)(3) also provides that if the patent as issued does not include the names of the parties to the joint research agreement, the patent must be corrected to include the names of the parties to the joint research agreement by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 for the amendment to be effective. The requirements of 37 CFR 1.71(g)(3) (correction of the patent by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323) also apply in the situation in which such an amendment is not filed until after the date the patent was granted (in a patent granted on or after December 10, 2004). It is unnecessary to file a reissue application or request for reexamination of the patent to submit the amendment and other information necessary to take advantage of 35 U.S.C. 103(c) as amended by the CREATE Act. See H.R. Rep. No. 108-425, at 9 (“[t]he omission of the names of parties to the agreement is not an error that would justify commencement of a reissue or reexamination proceeding”).

The submission of such an amendment remains subject to the rules of practice: e.g., 37 CFR 1.116, 1.121, and 1.312. For example, if an amendment under 37 CFR 1.71(g) is submitted in an application under final rejection to overcome a rejection under 35 U.S.C. 103(a) based upon a U.S. patent which qualifies as prior art only under 35 U.S.C. 102(e), the examiner may refuse to enter the amendment under 37 CFR 1.71(g) if it is not accompanied by an appropriate terminal disclaimer (37 CFR 1.321(d)). This is because such an amendment may necessitate the reopening of prosecution (e.g., for entry of a double patenting rejection).

If an amendment under 37 CFR 1.71(g) is submitted to overcome a rejection under 35 U.S.C. 103(a) based upon a U.S. patent or U.S. patent application publication which qualifies as prior art only under 35 U.S.C. 102(e), and the examiner withdraws the rejection under 35 U.S.C. 103(a), the examiner may need to issue an Office action containing a new double patenting rejection based upon the disqualified patent or patent application publication. In these situations, such Office action can be made final, provided that the examiner introduces no other new ground of rejection that was not necessitated by either amendment or an information disclosure statement filed during the time period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). The Office action is properly made final because the new double patenting rejection was necessitated by amendment of the application by applicant. This is the case regardless of whether the claims themselves have been amended.

In addition to amending the specification to disclose the names of the parties to the joint research agreement, applicant must submit the required statement to invoke the prior art disqualification under the CREATE Act. 37 CFR 1.104(c)(4) sets forth the requirement for the statement, which includes a statement to the effect that the prior art and the claimed invention were made by or on the behalf of parties to a joint research agreement, within the meaning of 35 U.S.C. 103(c)(3), which was in effect on or before the date the claimed invention was made, and that the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement. The statement should either be on or begin on a separate sheet and must not be directed to other matters (37 CFR 1.4(c)). The statement must be signed in accordance with 37 CFR 1.33(b).

If the applicant disqualifies the subject matter relied upon by the examiner in accordance with 35 U.S.C. 103(c) as amended by the CREATE Act and the procedures set forth in the rules, the examiner will treat the application under examination and the 35 U.S.C. 102(e), (f), or (g) prior art as if they are commonly owned for purposes of 35 U.S.C. 103(a).

The following examples are provided for illustration only:

Example 1

Company A and University B have a joint research agreement (JRA) in place prior to the date invention X’ was made. Professor BB from University B communicates invention X to Company A. On November 12, 2004, University B filed a patent application on invention X. On December 13, 2004, Company A filed a patent application disclosing and claiming invention X’, which is an obvious variant of invention X. Invention X’ was made as a result of the activities undertaken within the scope of the JRA. University B retains ownership of invention X and Company A retains ownership of invention X’, without any obligation to assign the inventions to a common owner. Company A could invoke the joint research agreement provisions of 35 U.S.C. 103(c) to disqualify University B’s application as prior art in a rejection under 35 U.S.C. 103(a).


Example 2

Professor BB from University B communicates invention X to Company A. On November 12, 2004, University B filed a patent application on invention X. On December 13, 2004, Company A filed a patent application disclosing and claiming invention X’, which is an obvious variant of invention X. Company A and University B have a joint research agreement (JRA), which goes into effect on December 20, 2004. University B retains ownership of invention X and Company A retains ownership of invention X’, without any obligation to assign the inventions to a common owner. Company A could not invoke the joint research agreement provisions of 35 U.S.C. 103(c) to disqualify University B’s application as prior art in a rejection under 35 U.S.C. 103(a) because the JRA was not in effect until after the later invention was made.

Example 3

Company A and University B have a joint research agreement (JRA) in place prior to the date invention X’ was made but the JRA is limited to activities for invention Y, which is distinct from invention X. Professor BB from University B communicates invention X to Company A. On November 12, 2004, University B filed a patent application on invention X. On December 13, 2004, Company A filed a patent application disclosing and claiming invention X’, which is an obvious variant of invention X. University B retains ownership of invention X and Company A retains ownership of invention X’, without any obligation to assign the inventions to a common owner. Company A could not invoke the joint research agreement provisions of 35 U.S.C. 103(c) to disqualify University B’s application as prior art in a rejection under 35 U.S.C. 103(a) because the claimed invention was not made as a result of the activities undertaken within the scope of the JRA.

706.02(l)(3)Examination Procedure With Respect to 35 U.S.C. 103(c)[edit | edit source]

Applications and patents will be considered to be owned by, or subject to an obligation of assignment to, the same person, at the time the invention was made, if the applicant(s) or an attorney or agent of record makes a statement to the effect that the application and the reference were, at the time the invention was made, owned by, or subject to an obligation of assignment to, the same person(s) or organization(s). In order to overcome a rejection under 35 U.S.C. 103(a) based upon a reference which qualifies as prior art under only one or more of 35 U.S.C. 102(e), (f), or (g), via the CREATE Act, the applicant must comply with the statute and the rules of practice in effect.

See MPEP § 706.02(l)(2) for additional information pertaining to establishing common ownership.

I. DOUBLE PATENTING REJECTIONS[edit | edit source]
  • Commonly owned applications of different inventive entities may be rejected on the ground of double patenting, even if the later filed application claims 35 U.S.C. 120 benefit to the earlier pplication.
  • For purposes of double patenting analysis, the application or patent and the subject matter disqualified under 35 U.S.C. 103(c) as amended by the CREATE Act will be treated as if commonly owned.

A rejection based on a pending application would be a provisional rejection. The practice of rejecting claims on the ground of double patenting in commonly owned applications of different inventive entities is in accordance with existing case law and prevents an organization from obtaining two or more patents with different expiration dates covering nearly identical subject matter. See MPEP 804 for guidance on double patenting issues. In accordance with established patent law doctrines, double patenting rejections can be overcome in certain circumstances by disclaiming, pursuant to the existing provisions of 37 CFR 1.321, the terminal portion of the term of the later patent and including in the disclaimer a provision that the patent shall be enforceable only for and during the period the patent is commonly owned with the application or patent which formed the basis for the rejection, thereby eliminating the problem of extending patent life. For a double patenting rejection based on a non-commonly owned patent (treated as if commonly owned pursuant to the CREATE Act), the double patenting rejection may be obviated by filing a terminal disclaimer in accordance with 37 CFR 1.321(d). See MPEP § 804 and § 804.02.

706.02(n)Biotechnology Process Applications; 35 U.S.C. 103(b)[edit | edit source]

35 U.S.C. 103. Conditions for patentability; non-obvious subject matter.
.          .          .

(b)(1) Notwithstanding subsection (a), and upon timely election by the applicant for patent to proceed under this subsection, a biotechnological process using or resulting in a composition of matter that is novel under section 102 and nonobvious under subsection (a) of this section shall be considered nonobvious if-

(A)claims to the process and the composition of matter are contained in either the same application for patent or in separate applications having the same effective filing date; and

(B)the composition of matter, and the process at the time it was invented, were owned by the same person or subject to an obligation of assignment to the same person.

(2)A patent issued on a process under paragraph (1)-

(A)shall also contain the claims to the composition of matter used in or made by that process, or

(B)shall, if such composition of matter is claimed in another patent, be set to expire on the same date as such other patent, notwithstanding section 154.

(3)For purposes of paragraph (1), the term “biotechnological process” means-

(A)a process of genetically altering or otherwise inducing a single- or multi-celled organism to-

(i)express an exogenous nucleotide sequence,

(ii)inhibit, eliminate, augment, or alter expression of an endogenous nucleotide sequence, or

(iii)express a specific physiological characteristic not naturally associated with said organism;

(B)cell fusion procedures yielding a cell line that expresses a specific protein, such as a monoclonal antibody; and

(C)a method of using a product produced by a process defined by subparagraph (A) or (B), or a combination of subparagraphs (A) and (B).

.          .          .

35 U.S.C. 103(b) is applicable to biotechnological processes only. 35 U.S.C. 103(b) precludes a rejection of process claims which involve the use or making of certain nonobvious biotechnological compositions of matter under 35 U.S.C. 103(a).

35 U.S.C. 103(b) requires that:

(A)the biotechnological process and composition of matter be contained in either the same application or in separate applications having the same effective filing date;

(B)both the biotechnological process and composition of matter be owned or subject to an assignment to the same person at the time the process was invented;

(C)a patent issued on the process also contain the claims to the composition of matter used in or made by the process, or, if the process and composition of matter are in different patents, the patents expire on the same date;

(D)the biotechnological process falls within the definition set forth in 35 U.S.C. 103(b); and

(E)a timely election be made to proceed under the provisions of 35 U.S.C. 103(b).

An election to proceed under 35 U.S.C. 103(b) shall be made by way of petition under 37 CFR 1.182. The petition must establish that all the requirements set forth in 35 U.S.C. 103(b) have been satisfied.

An election will normally be considered timely if it is made no later than the earlier of either the payment of the issue fee or the filing of an appeal brief in an application which contains a composition of matter claim which has not been rejected under 35 U.S.C. 102 or 103.

In an application where at least one composition of matter claim has not been rejected under 35 U.S.C. 102 or 103, a 35 U.S.C. 103(b) election may be made by submitting the petition and an amendment requesting entry of process claims which correspond to the composition of matter claim.

For applications pending on or after November 1, 1995, in which the issue fee has been paid prior to March 26, 1996, the timeliness requirement for an election under 35 U.S.C. 103(b) will be considered satisfied if the conditions of 37 CFR 1.312(b) are met. However, if a patent is granted on an application entitled to the benefit of 35 U.S.C. 103(b) without an election having been made as a result of error without deceptive intent, patentees may file a reissue application to permit consideration of process claims which qualify for 35 U.S.C. 103(b) treatment.

706.03 Rejections Not Based on Prior Art[edit | edit source]

The primary object of the examination of an application is to determine whether or not the claims are patentable over the prior art. This consideration should not be relegated to a secondary position while undue emphasis is given to nonprior art or “technical” rejections. Effort in examining should be concentrated on truly essential matters, minimizing or eliminating effort on technical rejections which are not really critical. Where a major technical rejection is proper (e.g., lack of proper disclosure, undue breadth, utility, etc.) such rejection should be stated with a full development of the reasons rather than by a mere conclusion coupled with some stereotyped expression.

Rejections based on nonstatutory subject matter are explained in MPEP § 706.03(a), § 2105, § 2106 - § 2106.02, and § 2107 - § 2107.02. Rejections based on subject matter barred by the Atomic Energy Act are explained in MPEP § 706.03(b). Rejections based on duplicate claims are addressed in MPEP § 706.03(k), and double patenting rejections are addressed in MPEP § 804. See MPEP § 706.03(o) for rejections based on new matter. Foreign filing without a license is discussed in MPEP § 706.03(s). Disclaimer, after interference or public use proceeding, res judicata, and reissue are explained in MPEP § 706.03(u) to § 706.03(x). Rejections based on 35 U.S.C. 112 are discussed in MPEP § 2161 - § 2174. IF THE LANGUAGE IN THE FORM PARAGRAPHS IS INCORPORATED IN THE OFFICE ACTION TO STATE THE REJECTION, THERE WILL BE LESS CHANCE OF A MISUNDERSTANDING AS TO THE GROUNDS OF REJECTION.

706.03(a)Rejections Under 35 U.S.C. 101[edit | edit source]

I.SUBJECT MATTER ELIGIBILITY

Patents are not granted for all new and useful inventions and discoveries. The subject matter of the invention or discovery must come within the boundaries set forth by 35 U.S.C. 101, which permits patents to be granted only for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”

The term “process” as defined in 35 U.S.C. 100, means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.

See MPEP § 2105 for patent eligibility of living subject matter and MPEP § 2106 for guidelines pertaining to subject matter eligibility in general.

Decisions have determined the limits of the statutory classes. Examples of subject matter not patentable under the statute follow:

A.Printed Matter

For example, a mere arrangement of printed matter, though seemingly a “manufacture,” is rejected as not being within the statutory classes. See In re Miller, 418 F.2d 1392, 164 USPQ 46 (CCPA 1969); Ex parte Gwinn, 112 USPQ 439 (Bd. App. 1955); and In re Jones, 373 F.2d 1007, 153 USPQ 77 (CCPA 1967).

B.Naturally Occurring Article

Similarly, a thing occurring in nature, which is substantially unaltered, is not a “manufacture.” A shrimp with the head and digestive tract removed is an example. Ex parte Grayson, 51 USPQ 413 (Bd. App. 1941).

C.Scientific Principle

A scientific principle, divorced from any tangible structure, can be rejected as not within the statutory classes. O'Reilly v. Morse, 56 U.S. (15 How.) 62 (1854).

This subject matter is further limited by the Atomic Energy Act explained in MPEP § 706.03(b).

II.UTILITY

A rejection on the ground of lack of utility includes the more specific grounds of inoperativeness, involving perpetual motion. A rejection under 35 U.S.C. 101 for lack of utility should not be based on grounds that the invention is frivolous, fraudulent or against public policy. See Juicy Whip Inc. v. Orange Bang Inc., 185 F.3d 1364, 1367-68, 51 USPQ2d 1700, 1702-03 (Fed. Cir. 1999) (“[Y]ears ago courts invalidated patents on gambling devices on the ground that they were immoral…, but that is no longer the law…Congress never intended that the patent laws should displace the police powers of the States, meaning by that term those powers by which the health, good order, peace and general welfare of the community are promoted…we find no basis in section 101 to hold that inventions can be ruled unpatentable for lack of utility simply because they have the capacity to fool some members of the public.”). The statutory basis for this rejection is 35 U.S.C. 101. See MPEP § 2107 for guidelines governing rejections for lack of utility. See MPEP § 2107.01 - § 2107.03 for legal precedent governing the utility requirement.

706.03(b) Barred by Atomic Energy Act[edit | edit source]

A limitation on what can be patented is imposed by the Atomic Energy Act of 1954. Section 151(a) (42 U.S.C. 2181(a)) thereof reads in part as follows:

No patent shall hereafter be granted for any invention or discovery which is useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon.

The terms “atomic energy” and “special nuclear material” are defined in Section 11 of the Act (42 U.S.C. 2014).

Sections 151(c) and 151(d) (42 U.S.C. 2181(c) and (d)) set up categories of pending applications relating to atomic energy that must be brought to the attention of the Department of Energy. Under 37 CFR 1.14(d), applications for patents which disclose or which appear to disclose, or which purport to disclose, inventions or discoveries relating to atomic energy are reported to the Department of Energy and the Department will be given access to such applications, but such reporting does not constitute a determination that the subject matter of each application so reported is in fact useful or an invention or discovery or that such application in fact discloses subject matter in categories specified by the Atomic Energy Act.

All applications received in the U.S. Patent and Trademark Office are screened by Technology Center (TC) work group 3640 personnel, under 37 CFR 1.14(d), in order for the Director to fulfill his or her responsibilities under section 151(d) (42 U.S.C. 2181(d)) of the Atomic Energy Act. Papers subsequently added must be inspected promptly by the examiner when received to determine whether the application has been amended to relate to atomic energy and those so related must be promptly forwarded to Licensing and Review in TC work group 3640.

All rejections based upon sections 151(a)(42 U.S.C. 2181(a)), 152 (42 U.S.C. 2182), and 155 (42 U.S.C. 2185) of the Atomic Energy Act must be made only by TC work group 3640 personnel.

706.03(c) Rejections Under 35 U.S.C. 112, First Paragraph[edit | edit source]

Rejections based on the first paragraph of 35 U.S.C. 112 are discussed in MPEP § 2161 - § 2165.04. For a discussion of the utility requirements of 35 U.S.C. 112, first paragraph, and 35 U.S.C. 101, see MPEP § 2107 - § 2107.03.

706.03(d) Rejections Under 35 U.S.C. 112, Second Paragraph[edit | edit source]

Rejections under 35 U.S.C. 112, second paragraph, are discussed in MPEP § 2171 - § 2174.

706.03(k) Duplicate Claims[edit | edit source]

Inasmuch as a patent is supposed to be limited to only one invention or, at most, several closely related indivisible inventions, limiting an application to a single claim, or a single claim to each of the related inventions might appear to be logical as well as convenient. However, court decisions have confirmed applicant’s right to restate (i.e., by plural claiming) the invention in a reasonable number of ways. Indeed, a mere difference in scope between claims has been held to be enough.

Nevertheless, when two claims in an application are duplicates, or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other claim under 37 CFR 1.75 as being a substantial duplicate of the allowed claim.

See MPEP § 804 for double patenting rejections of inventions not patentable over each other.

706.03(m) Nonelected Inventions[edit | edit source]

See MPEP § 821 to § 821.03 for treatment of claims held to be drawn to nonelected inventions.

706.03(o) New Matter[edit | edit source]

35 U.S.C. 132. Notice of rejection; reexamination.

(a)Whenever, on examination, any claim for a patent is rejected, or any objection or requirement made, the Director shall notify the applicant thereof, stating the reasons for such rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application; and if after receiving such notice, the applicant persists in his claim for a patent, with or without amendment, the application shall be reexamined. No amendment shall introduce new matter into the disclosure of the invention.

In amended cases, subject matter not disclosed in the original application is sometimes added and a claim directed thereto. Such a claim is rejected on the ground that it recites elements without support in the original disclosure under 35 U.S.C. 112, first paragraph, Waldemar Link, GmbH & Co. v. Osteonics Corp. 32 F.3d 556, 559, 31 USPQ2d 1855, 1857 (Fed. Cir. 1994); In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981). See MPEP § 2163.06 - § 2163.07(b) for a discussion of the relationship of new matter to 35 U.S.C. 112, first paragraph. New matter includes not only the addition of wholly unsupported subject matter, but may also include adding specific percentages or compounds after a broader original disclosure, or even the omission of a step from a method. See MPEP § 608.04 to § 608.04(c). See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) and MPEP § 2163.05 for guidance in determining whether the addition of specific percentages or compounds after a broader original disclosure constitutes new matter.

In the examination of an application following amendment thereof, the examiner must be on the alert to detect new matter. 35 U.S.C. 132 (a) should be employed as a basis for objection to amendments to the abstract, specification, or drawings attempting to add new disclosure to that originally disclosed on filing.

If subject matter capable of illustration is originally claimed and it is not shown in the drawing, the claim is not rejected but applicant is required to add it to the drawing. See MPEP § 608.01(l).

706.03(s) Foreign Filing Without License[edit | edit source]

35 U.S.C. 182. Abandonment of invention for unauthorized disclosure.

The invention disclosed in an application for patent subject to an order made pursuant to section 181 of this title may be held abandoned upon its being established by the Commissioner of Patents that in violation of said order the invention has been published or disclosed or that an application for a patent therefor has been filed in a foreign country by the inventor, his successors, assigns, or legal representatives, or anyone in privity with him or them, without the consent of the Commissioner of Patents. The abandonment shall be held to have occurred as of the time of violation. The consent of the Commissioner of Patents shall not be given without the concurrence of the heads of the departments and the chief officers of the agencies who caused the order to be issued. A holding of abandonment shall constitute forfeiture by the applicant, his successors, assigns, or legal representatives, or anyone in privity with him or them, of all claims against the United States based upon such invention.


35 U.S.C. 184. Filing of application in foreign country.

Except when authorized by a license obtained from the Commissioner of Patents a person shall not file or cause or authorize to be filed in any foreign country prior to six months after filing in the United States an application for patent or for the registration of a utility model, industrial design, or model in respect of an invention made in this country. A license shall not be granted with respect to an invention subject to an order issued by the Commissioner of Patents pursuant to section 181 of this title without the concurrence of the head of the departments and the chief officers of the agencies who caused the order to be issued. The license may be granted retroactively where an application has been filed abroad through error and without deceptive intent and the application does not disclose an invention within the scope of section 181 of this title.

The term "application" when used in this chapter includes applications and any modifications, amendments, or supplements thereto, or divisions thereof.

The scope of a license shall permit subsequent modifications, amendments, and supplements containing additional subject matter if the application upon which the request for the license is based is not, or was not, required to be made available for inspection under section 181 of this title and if such modifications, amendments, and supplements do not change the general nature of the invention in a manner which would require such application to be made available for inspection under such section 181. In any case in which a license is not, or was not, required in order to file an application in any foreign country, such subsequent modifications, amendments, and supplements may be made, without a license, to the application filed in the foreign country if the United States application was not required to be made available for inspection under section 181 and if such modifications, amendments, and supplements do not, or did not, change the general nature of the invention in a manner which would require the United States application to have been made available for inspection under such section 181.

35 U.S.C. 185. Patent barred for filing without license.

Notwithstanding any other provisions of law any person, and his successors, assigns, or legal representatives, shall not receive a United States patent for an invention if that person, or his successors, assigns, or legal representatives shall, without procuring the license prescribed in section 184 of this title, have made, or consented to or assisted another’s making, application in a foreign country for a patent or for the registration of a utility model, industrial design, or model in respect of the invention. A United States patent issued to such person, his successors, assigns, or legal representatives shall be invalid, unless the failure to procure such license was through error and without deceptive intent, and the patent does not disclose subject matter within the scope of section 181 of this title.

If, upon examining an application, the examiner learns of the existence of a corresponding foreign application which appears to have been filed before the United States application had been on file for 6 months, and if the invention apparently was made in this country, he or she shall refer the application to Licensing and Review Section of Technology Center (TC) working group 3640, calling attention to the foreign application. Pending investigation of the possible violation, the application may be returned to the TC for prosecution on the merits. When it is otherwise in condition for allowance, the application will be again submitted to Licensing and Review Section of TC work group 3640 unless the latter has already reported that the foreign filing involves no bar to the United States application.

If it should be necessary to take action under 35 U.S.C. 185, Licensing and Review Section of TC work group 3640 will request transfer of the application to it.

706.03(u) Disclaimer[edit | edit source]

Claims may be rejected on the ground that applicant has disclaimed the subject matter involved. Such disclaimer may arise, for example, from the applicant’s failure to:

(A)make claims suggested for interference with another application under 37 CFR 41.202(c) (See MPEP Chapter 2300),

(B)copy a claim from a patent when suggested by the examiner (MPEP Chapter 2300), or

(C)respond or appeal, within the time limit fixed, to the examiner’s rejection of claims copied from a patent (see MPEP Chapter 2300).

The rejection on disclaimer applies to all claims not patentably distinct from the disclaimed subject matter as well as to the claims directly involved.

706.03(v) After Interference or PublicUse Proceeding[edit | edit source]

For rejections following an interference, see MPEP Chapter 2300.

The outcome of public use proceedings may also be the basis of a rejection. See 37 CFR 1.292 and In re Kaslow, 707 F.2d 1366, 217 USPQ 1089 (Fed. Cir. 1983).

Upon termination of a public use proceeding including a case also involved in an interference, in order for a prompt resumption of the interference proceedings, a notice should be sent to the Board of Patent Appeals and Interferences notifying them of the disposition of the public use proceeding.

706.03(w) Res Judicata[edit | edit source]

Res judicata may constitute a proper ground for rejection. However, as noted below, the Court of Customs and Patent Appeals has materially restricted the use of res judicata rejections. It should be applied only when the earlier decision was a decision of the Board of Appeals or any one of the reviewing courts and when there is no opportunity for further court review of the earlier decision.

The timely filing of a second application copending with an earlier application does not preclude the use of res judicata as a ground of rejection for the second application claims.

When making a rejection on res judicata, action should ordinarily be made also on the basis of prior art, especially in continuing applications. In most situations the same prior art which was relied upon in the earlier decision would again be applicable.

706.03(x) Reissue[edit | edit source]

The examination of reissue applications is covered in MPEP Chapter 1400.

35 U.S.C. 251 forbids the granting of a reissue “enlarging the scope of the claims of the original patent” unless the reissue is applied for within 2 years from the grant of the original patent. This is an absolute bar and cannot be excused. This prohibition has been interpreted to apply to any claim which is broader in any respect than the claims of the original patent. Such claims may be rejected as being barred by 35 U.S.C. 251. However, when the reissue is applied for within 2 years or properly claims the benefit of a broadening reissue application filed within 2 years of the patent grant, the examiner does not go into the question of undue delay.

The same section permits the filing of a reissue application by the assignee of the entire interest only in cases where it does not “enlarge the scope of the claims of the original patent.” Such claims which do enlarge the scope may also be rejected as barred by the statute. In In re Bennett, 766 F.2d 524, 226 USPQ 413 (Fed. Cir. 1985), however, the court permitted the erroneous filing by the assignee in such a case to be corrected.

A defective reissue oath affords a ground for rejecting all the claims in the reissue application. See MPEP § 1444.

Note that a reissue application is “special” and remains so even if applicant does not make a prompt reply.

706.04 Rejection of Previously Allowed Claims[edit | edit source]

A claim noted as allowable shall thereafter be rejected only after the proposed rejection has been submitted to the primary examiner for consideration of all the facts and approval of the proposed action.

Great care should be exercised in authorizing such a rejection. See Ex parte Grier, 1923 C.D. 27, 309 O.G. 223 (Comm’r Pat. 1923); Ex parte Hay, 1909 C.D. 18, 139 O.G. 197 (Comm’r Pat. 1909).

PREVIOUS ACTION BY DIFFERENT EXAMINER

Full faith and credit should be given to the search and action of a previous examiner unless there is a clear error in the previous action or knowledge of other prior art. In general, an examiner should not take an entirely new approach or attempt to reorient the point of view of a previous examiner, or make a new search in the mere hope of finding something. Amgen, Inc. v. Hoechst Marion Roussel, Inc., 126 F. Supp. 2d 69, 139, 57 USPQ2d 1449, 1499-50 (D. Mass. 2001).

706.05 Rejection After Allowance of Application[edit | edit source]

See MPEP § 1308.01 for a rejection based on a reference after allowance.

706.06 Rejection of Claims Copied From Patent[edit | edit source]

See MPEP Chapter 2300.

706.07 Final Rejection[edit | edit source]

37 CFR 1.113. Final rejection or action.


(a) On the second or any subsequent examination or consideration by the examiner the rejection or other action may be made final, whereupon applicant’s, or for ex parte reexaminations filed under § 1.510, patent owner’s reply is limited to appeal in the case of rejection of any claim (§ 41.31 of this title), or to amendment as specified in § 1.114 or § 1.116. Petition may be taken to the Director in the case of objections or requirements not involved in the rejection of any claim (§ 1.181). Reply to a final rejection or action must comply with § 1.114 or paragraph (c) of this section. For final actions in an inter partes reexamination filed under § 1.913, see § 1.953.

(b)In making such final rejection, the examiner shall repeat or state all grounds of rejection then considered applicable to the claims in the application, clearly stating the reasons in support thereof.

(c)Reply to a final rejection or action must include cancellation of, or appeal from the rejection of, each rejected claim. If any claim stands allowed, the reply to a final rejection or action must comply with any requirements or objections as to form.

STATEMENT OF GROUNDS

In making the final rejection, all outstanding grounds of rejection of record should be carefully reviewed, and any such grounds relied on in the final rejection should be reiterated. They must also be clearly developed to such an extent that applicant may readily judge the advisability of an appeal unless a single previous Office action contains a complete statement supporting the rejection.

706.07(a) Final Rejection, When Proper on Second Action[edit | edit source]

A second or any subsequent action on the merits shall be final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p).

Where information is submitted in an information disclosure statement during the period set forth in 37 CFR 1.97(c) with a fee, the examiner may use the information submitted, e.g., a printed publication or evidence of public use, and make the next Office action final whether or not the claims have been amended, provided that no other new ground of rejection which was not necessitated by amendment to the claims is introduced by the examiner. See MPEP § 609.04(b). Furthermore, a second or any subsequent action on the merits in any application or patent undergoing reexamination proceedings will not be made final if it includes a rejection, on newly cited art, other than information submitted in an information disclosure statement filed under 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p), of any claim not amended by applicant or patent owner in spite of the fact that other claims may have been amended to require newly cited art. Where information is submitted in a reply to a requirement under 37 CFR 1.105, the examiner may NOT make the next Office action relying on that art final unless all instances of the application of such art are necessitated by amendment.

A second or any subsequent action on the merits in any application or patent involved in reexamination proceedings should not be made final if it includes a rejection, on prior art not of record, of any claim amended to include limitations which should reasonably have been expected to be claimed. See MPEP § 904 et seq. For example, one would reasonably expect that a rejection under 35 U.S.C. 112 for the reason of incompleteness would be replied to by an amendment supplying the omitted element.

A second or any subsequent action on the merits in any application or patent involved in reexamination proceedings may not be made final if it contains a new ground of rejection necessitated by the amendments to 35 U.S.C. 102(e) by the Intellectual Property and High Technology Technical Amendments Act of 2002 (Pub. L. 107-273, 116 Stat. 1758 (2002)), unless the new ground of rejection was necessitated by an amendment to the claims or as a result of information submitted in an information disclosure statement under 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p).

When applying any 35 U.S.C. 102(e)/103 references against the claims of an application the examiner should anticipate that a statement averring common ownership at the time the invention was made may disqualify any patent or application applied in a rejection under 35 U.S.C. 103 based on 35 U.S.C. 102(e). If such a statement is filed in reply to the 35 U.S.C. 102(e)/103 rejection and the claims are not amended, the examiner may not make the next Office action final if a new rejection is made. See MPEP § 706.02(l)(3). If a reference is disqualified under the joint research agreement provision of 35 U.S.C. 103(c) and a new subsequent double patenting rejection based upon the disqualified reference is applied, the next Office action, which contains the new double patenting rejection, may be made final even if applicant did not amend the claims (provided that the examiner introduces no other new ground of rejection that was not necessitated by either amendment or an information disclosure statement filed during the time period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p)). The Office action is properly made final because the new double patenting rejection was necessitated by amendment of the application by applicant.

See MPEP § 809.02(a) for actions which indicate generic claims as not allowable.

In the consideration of claims in an amended case where no attempt is made to point out the patentable novelty, the examiner should be on guard not to allow such claims. See MPEP § 714.04. The claims may be finally rejected if, in the opinion of the examiner, they are clearly open to rejection on grounds of record.

706.07(b) Final Rejection, When Properon First Action[edit | edit source]

The claims of a new application may be finally rejected in the first Office action in those situations where (A) the new application is a continuing application of, or a substitute for, an earlier application, and (B) all claims of the new application (1) are drawn to the same invention claimed in the earlier application, and (2) would have been properly finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application.

A first Office action in a continuing or substitute application may not be made final if it contains a new ground of rejection necessitated by the amendments to 35 U.S.C. 102(e) by the Intellectual Property and High Technology Technical Amendments of 2002 (Pub. L. 107-273, 116 Stat. 1758 (2002)).

However, it would not be proper to make final a first Office action in a continuing or substitute application where that application contains material which was presented in the earlier application after final rejection or closing of prosecution but was denied entry because (A) new issues were raised that required further consideration and/or search, or (B) the issue of new matter was raised.

Further, it would not be proper to make final a first Office action in a continuation-in-part application where any claim includes subject matter not present in the earlier application.

A request for an interview prior to first action on a continuing or substitute application should ordinarily be granted.

706.07(c) Final Rejection, Premature[edit | edit source]

Any question as to prematureness of a final rejection should be raised, if at all, while the application is still pending before the primary examiner. This is purely a question of practice, wholly distinct from the tenability of the rejection. It may therefore not be advanced as a ground for appeal, or made the basis of complaint before the Board of Patent Appeals and Interferences. It is reviewable by petition under 37 CFR 1.181. See MPEP § 1002.02(c).

706.07(d) Final Rejection, Withdrawal of, Premature[edit | edit source]

If, on request by applicant for reconsideration, the primary examiner finds the final rejection to have been premature, he or she should withdraw the finality of the rejection. The finality of the Office action must be withdrawn while the application is still pending. The examiner cannot withdraw the final rejection once the application is abandoned.

706.07(e) Withdrawal of Final Rejection, General[edit | edit source]

See MPEP § 714.12 and § 714.13 for amendments after final rejection.

Once a final rejection that is not premature has been entered in an application/reexamination proceeding, it should not be withdrawn at the applicant’s or patent owner’s request except on a showing under 37 CFR 1.116(b). Further amendment or argument will be considered in certain instances. An amendment that will place the application either in condition for allowance or in better form for appeal may be admitted. Also, amendments complying with objections or requirements as to form are to be permitted after final action in accordance with 37 CFR 1.116(a).

The examiner may withdraw the rejection of finally rejected claims. If new facts or reasons are presented such as to convince the examiner that the previously rejected claims are in fact allowable or patentable in the case of reexamination, then the final rejection should be withdrawn. Occasionally, the finality of a rejection may be withdrawn in order to apply a new ground of rejection.

Although it is permissible to withdraw a final rejection for the purpose of entering a new ground of rejection, this practice is to be limited to situations where a new reference either fully meets at least one claim or meets it except for differences which are shown to be completely obvious. Normally, the previous rejection should be withdrawn with respect to the claim or claims involved.

The practice should not be used for application of subsidiary references, or of cumulative references, or of references which are merely considered to be better than those of record.

When a final rejection is withdrawn, all amendments filed after the final rejection are ordinarily entered.

New grounds of rejection made in an Office action reopening prosecution after the filing of an appeal brief require the approval of the supervisory patent examiner. See MPEP § 1002.02(d).

706.07(f) Time for Reply to Final Rejection[edit | edit source]

The time for reply to a final rejection is as follows:

(A)All final rejections setting a 3-month shortened statutory period (SSP) for reply should contain one of form paragraphs 7.39, 7.40, 7.40.01, 7.40.02, 7.41, 7.41.03, 7.42.03, 7.42.031, or 7.42.09 advising applicant that if the reply is filed within 2 months of the date of the final Office action, the shortened statutory period will expire at 3 months from the date of the final rejection or on the date the advisory action is mailed, whichever is later. Thus, a variable reply period will be established. If the last day of “2 months of the date of the final Office action” falls on Saturday, Sunday, or a Federal holiday within the District of Columbia, and a reply is filed on the next succeeding day which is not a Saturday, Sunday, or a Federal holiday, pursuant to 37 CFR 1.7(a), the reply is deemed to have been filed within the 2 months period and the shortened statutory period will expire at 3 months from the date of the final rejection or on the mailing date of the advisory action, whichever is later (see MPEP §710.05). In no event can the statutory period for reply expire later than 6 months from the mailing date of the final rejection.

(B)This procedure of setting a variable reply period in the final rejection dependent on when applicant files a first reply to a final Office action does not apply to situations where a SSP less than 3 months is set, e.g., reissue litigation applications (1-month SSP) or any reexamination proceeding.

I.ADVISORY ACTIONS

(C)Where the final Office action sets a variable reply period as set forth in paragraph (A) above AND applicant files a complete first reply to the final Office action within 2 months of the date of the final Office action, the examiner must determine if the reply:

(1)places the application in condition for allowance — then the application should be processed as an allowance and no extension fees are due;

(2)places the application in condition for allowance except for matters of form which the examiner can change without authorization from applicant, MPEP § 1302.04 — then the application should be amended as required and processed as an allowance and no extension fees are due; or

(3)does not place the application in condition for allowance — then the advisory action should inform applicant that the SSP for reply expires 3 months from the date of the final rejection or as of the mailing date of the advisory action, whichever is later, by checking box 1.b) at the top portion of the Advisory Action form, PTOL-303.

(D) Where the final Office action sets a variable reply period as set forth in paragraph (A) above, and applicant does NOT file a complete first reply to the final Office action within 2 months, examiners should check box 1.a) at the top portion of the Advisory Action form, PTOL-303.

(E)When box 1.b) at the top portion of the Advisory Action form, PTOL-303 is checked, the time for applicant to take further action (including the calculation of extension fees under 37 CFR 1.136(a)) begins to run 3 months from the date of the final rejection, or from the date of the advisory action, whichever is later. Extension fees cannot be prorated for portions of a month. In no event can the statutory period for reply expire later than 6 months from the date of the final rejection. For example, if applicant initially replies within 2 months from the date of mailing of a final rejection and the examiner mails an advisory action before the end of 3 months from the date of mailing of the final rejection, the shortened statutory period will expire at the end of 3 months from the date of mailing of the final rejection. In such case, if a petition for extension of time is granted, the due date for a reply is computed from the date stamped or printed on the Office action with the final rejection. See MPEP § 710.01(a). If the examiner, however, does not mail an advisory action until after the end of the 3-month period, the shortened statutory period will expire on the date the examiner mails the advisory action and any extension of time fee would be calculated from the mailing date of the advisory action.

II.EXAMINER’S AMENDMENTS

(F)Where a complete first reply to a final Office action has been filed within 2 months of the final Office action, an examiner’s amendment to place the application in condition for allowance may be made without the payment of extension fees even if the examiner’s amendment is made more than 3 months from the date of the final Office action. Note that an examiner’s amendment may not be made more than 6 months from the date of the final Office action, as the application would be abandoned at that point by operation of law.

(G)Where a complete first reply to a final Office action has not been filed within 2 months of the final Office action, applicant’s authorization to make an amendment to place the application in condition for allowance must be made either within the 3 month shortened statutory period or within an extended period for reply that has been petitioned and paid for by applicant pursuant to 37 CFR 1.136(a). However, an examiner’s amendment correcting only formal matters which are identified for the first time after a reply is made to a final Office action would not require any extension fee, since the reply to the final Office action put the application in condition for allowance except for the correction of formal matters, the correction of which had not yet been required by the examiner.

(H)An extension of time under 37 CFR 1.136(a) requires a petition for an extension and the appropriate fee provided for in 37 CFR 1.17. Where an extension of time is necessary to place an application in condition for allowance (e.g., when an examiner’s amendment is necessary after the shortened statutory period for reply has expired), applicant may file the required petition and fee or give authorization to the examiner to make the petition of record and charge a specified fee to a deposit account. Office employees may not accept oral (telephonic) instructions to complete the Credit Card Payment Form or otherwise charge a patent process fee (as opposed to information product or service fees) to a credit card. When authorization to make a petition for an extension of time of record is given to the examiner, the authorization must be given before the extended period expires. The authorization must be made of record in an examiner’s amendment by indicating the name of the person making the authorization, when the authorization was given, the deposit account number to be charged, the length of the extension requested and the amount of the fee to be charged to the deposit account.

III.PRACTICE AFTER FINAL

(I)Replies after final should be processed and considered promptly by all Office personnel.

(J)Replies after final should not be considered by the examiner unless they are filed within the SSP or are accompanied by a petition for an extension of time and the appropriate fee (37 CFR 1.17 and 37 CFR 1.136(a)). See also MPEP § 710.02(e). This requirement also applies to supplemental replies filed after the first reply.

(K)Interviews may be conducted after the expiration of the shortened statutory period for reply to a final Office action but within the 6-month statutory period for reply without the payment of an extension fee.

(L)Formal matters which are identified for the first time after a reply is made to a final Office action and which require action by applicant to correct may be required in an Ex parte Quayle action if the application is otherwise in condition for allowance. No extension fees would be required since the reply puts the application in condition for allowance except for the correction of formal matters — the correction of which had not yet been required by the examiner.

(M) If prosecution is to be reopened after a final Office action has been replied to, the finality of the previous Office action should be withdrawn to avoid the issue of abandonment and the payment of extension fees. For example, if a new reference comes to the attention of the examiner which renders unpatentable a claim indicated to be allowable, the Office action should begin with a statement to the effect: “The finality of the Office action mailed is hereby withdrawn in view of the new ground of rejection set forth below.” Form paragraph 7.42 could be used in addition to this statement. See MPEP § 706.07(d).

706.07(g) Transitional After-Final Practice[edit | edit source]

37 CFR 1.129. Transitional procedures for limited examination after final rejection and restriction practice.


(a)An applicant in an application, other than for reissue or a design patent, that has been pending for at least two years as of June 8, 1995, taking into account any reference made in such application to any earlier filed application under 35 U.S.C. 120, 121 and 365(c), is entitled to have a first submission entered and considered on the merits after final rejection under the following circumstances: The Office will consider such a submission, if the first submission and the fee set forth in § 1.17(r) are filed prior to the filing of an appeal brief and prior to abandonment of the application. The finality of the final rejection is automatically withdrawn upon the timely filing of the submission and payment of the fee set forth in § 1.17(r). If a subsequent final rejection is made in the application, applicant is entitled to have a second submission entered and considered on the merits after the subsequent final rejection under the following circumstances: The Office will consider such a submission, if the second submission and a second fee set forth in § 1.17(r) are filed prior to the filing of an appeal brief and prior to abandonment of the application. The finality of the subsequent final rejection is automatically withdrawn upon the timely filing of the submission and payment of the second fee set forth in § 1.17(r). Any submission filed after a final rejection made in an application subsequent to the fee set forth in § 1.17(r) having been twice paid will be treated as set forth in § 1.116. A submission as used in this paragraph includes, but is not limited to, an information disclosure statement, an amendment to the written description, claims or drawings and a new substantive argument or new evidence in support of patentability.

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(c)The provisions of this section shall not be applicable to any application filed after June 8, 1995.

In order to facilitate the completion of prosecution of applications pending in the USPTO as of June 8, 1995 and to ease the transition between a 17-year patent term and a 20-year patent term, Public Law 103-465 provided for the further limited reexamination of an application pending for 2 years or longer as of June 8, 1995, taking into account any reference made in the application to any earlier filed application under 35 U.S.C. 120, 121, or 365(c). The further limited reexamination permits applicants to present for consideration, as a matter of right upon payment of a fee, a submission after a final rejection has been issued on an application. An applicant will be able to take advantage of this provision on two separate occasions provided the submission and fee are presented prior to the filing of the Appeal Brief and prior to abandonment of the application. This will have the effect of enabling an applicant to essentially remove the finality of the prior Office action in the pending application on two separate occasions by paying a fee for each occasion, and avoid the impact of refiling the application to obtain consideration of additional claims and/or information relative to the claimed subject matter. The transitional after-final practice is only available to applications filed on or before June 8, 1995 and it is not available for reissue or design applications or reexamination proceedings.

Effective June 8, 1995, in any pending application having an actual or effective filing date of June 8, 1993 or earlier, applicant is entitled, under 37 CFR 1.129(a), to have a first submission after final rejection entered and considered on the merits, if the submission and the fee set forth in 37 CFR 1.17(r) are filed prior to the filing of an Appeal Brief under 37 CFR 41.37 and prior to abandonment. For an application entering national stage under 35 U.S.C. 371 or an application filed under 35 U.S.C. 111(a) claiming benefit under 35 U.S.C. 120 of a PCT application designating the U.S., the PCT international filing date will be used to determine whether the application has been pending for at least 2 years as of June 8, 1995.

The submission under 37 CFR 1.129(a) may comprise, but is not limited to, an information disclosure statement (IDS), an amendment to the written description, claims or drawings, a new substantive argument and/or new evidence. No amendment considered as a result of payment of the fee set forth in 37 CFR 1.17(r) may introduce new matter into the disclosure of the application 35 U.S.C. 132. In view of the fee set forth in 37 CFR 1.17(r), any (IDS) previously refused consideration in the application because of applicant’s failure to comply with 37 CFR 1.97(c) or (d) will be treated as though it has been filed within one of the time periods set forth in 37 CFR 1.97(b) and will be considered without the petition and petition fee required in 37 CFR 1.97(d), if it complies with the requirements of 37 CFR 1.98. Any IDS submitted under 37 CFR 1.129(a) on or after June 8, 2005 without a statement specified in 37 CFR 1.97(e) will be treated as though it had been filed within the time period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). The examiner may introduce a new ground of rejection based on the information submitted in the IDS and make the next Office action final provided that the examiner introduces no other new ground of rejection, which has not been necessitated by amendment to the claims. See MPEP § 706.07(a).

If the application qualifies under 37 CFR 1.129(a), that is, it was filed on or before June 8, 1995 and the application has an effective U.S. filing date of June 8, 1993 or earlier, the examiner must check to see if the submission and 37 CFR 1.17(r) fee were filed prior to the filing of the Appeal Brief and prior to abandonment of the application. If an amendment was timely filed in reply to the final rejection but the fee set forth in 37 CFR 1.17(r) did not accompany the amendment, examiners will continue to consider these amendments in an expedited manner as set forth in MPEP § 714.13 and issue an advisory action notifying applicant whether the amendment has been entered. If the examiner indicated in an advisory action that the amendment has not been entered, applicant may then pay the fee set forth in 37 CFR 1.17(r) and any necessary fee to avoid abandonment of the application and obtain entry and consideration of the amendment as a submission under 37 CFR 1.129(a). If the submission and the fee set forth in 37 CFR 1.17(r) were timely filed in reply to the final rejection and no advisory action has been issued prior to the payment of the fee set forth in 37 CFR 1.17(r), no advisory action will be necessary. The examiner will notify applicant that the finality of the previous office action has been withdrawn pursuant to 37 CFR 1.129(a). It is noted that if the submission is accompanied by a “conditional” payment of the fee set forth in 37 CFR 1.17(r), i.e., an authorization to charge the fee set forth in 37 CFR 1.17(r) to a deposit account or to a credit card in the event that the submission would not otherwise be entered, the Office will treat the conditional payment as an unconditional payment of the 37 CFR 1.17(r) fee.

The finality of the final rejection is automatically withdrawn upon the timely filing of the submission and payment of the fee set forth in 37 CFR 1.17(r). Upon the timely payment of the fee set forth in 37 CFR 1.17(r), all previously unentered submissions, and submissions filed with the 37 CFR 1.17(r) fee will be entered in the order in which they were filed absent specific instructions for entry. Any conflicting amendments should be clarified for entry by the applicant upon payment of the 37 CFR 1.17(r) fee.

If a Notice of Appeal and the appeal fee set forth in 37 CFR 1.17(b) were filed prior to or with the payment of the fee set forth 37 CFR 1.17(r), the payment of the fee set forth in 37 CFR 1.17(r) by applicant is construed as a request to dismiss the appeal and to continue prosecution under 37 CFR 1.129(a).

Upon the timely payment of the fee set forth in 37 CFR 1.17(r), if the examiner determines that the submission is not fully responsive to the previous Office action, e.g., if the submission only includes an information disclosure statement, applicant will be given a new shortened statutory period of 1 month or 30 days, whichever is longer, to submit a complete reply.

I.SUBMISSIONS UNDER 37 CFR 1.129(a) FILED PRIOR TO JUNE 8, 2005

After submission and payment of the fee set forth in 37 CFR 1.17(r), the next Office action on the merits may be made final only under the conditions for making a first action in a continuing application final set forth in MPEP § 706.07(b).

If a subsequent final rejection is made in the application, applicant would be entitled to have a second submission entered and considered on the merits under the same conditions set forth for consideration of the first submission.

Any submission filed after a final rejection made in the application subsequent to the fee set forth in 37 CFR 1.17(r) having been twice paid will be treated in accordance with the current after-final practice set forth in 37 CFR 1.116.

II.SUBMISSIONS UNDER 37 CFR 1.129(a) FILED ON OR AFTER JUNE 8, 2005

For timely submission and payment of the fee set forth in 37 CFR 1.17(r) on or after June 8, 2005, the next Office action on the merits will be equivalent to the next Office action following a reply to a non-final Office action. Under existing second Office action final practice, such an Office action on the merits will be made final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims nor based on information submitted in an IDS filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). See MPEP § 706.07(a).

An applicant whose application is eligible for the transitional further limited examination procedure set forth in 37 CFR 1.129(a) is entitled to consideration of two after final submissions. Thus, if such an applicant has filed one submission under 37 CFR 1.129(a) and the application is again under a final rejection, the applicant is entitled to only one additional submission under 37 CFR 1.129(a). If such an applicant has filed two submissions under 37 CFR 1.129(a) and the application is again under a final rejection, applicant is not entitled to have any additional submissions considered under 37 CFR 1.129(a). Applicant may be entitled to consideration of an additional submission if the submission meets the conditions set forth in 37 CFR 1.116.

706.07(h) Request for Continued Examination (RCE) Practice[edit | edit source]

35 U.S.C. 132. Notice of rejection; reexamination.
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(b)The Director shall prescribe regulations to provide for the continued examination of applications for patent at the request of the applicant. The Director may establish appropriate fees for such continued examination and shall provide a 50 percent reduction in such fees for small entities that qualify for reduced fees under section 41(h)(1) of this title.


37 CFR 1.114. Request for continued examination.

(a)If prosecution in an application is closed, an applicant may request continued examination of the application by filing a submission and the fee set forth in § 1.17(e) prior to the earliest of:

(1)Payment of the issue fee, unless a petition under § 1.313 is granted;

(2)Abandonment of the application; or

(3)The filing of a notice of appeal to the U.S. Court of Appeals for the Federal Circuit under 35 U.S.C. 141, or the commencement of a civil action under 35 U.S.C. 145 or 146, unless the appeal or civil action is terminated.

(b)Prosecution in an application is closed as used in this section means that the application is under appeal, or that the last Office action is a final action (§ 1.113), a notice of allowance (§ 1.311), or an action that otherwise closes prosecution in the application.

(c)A submission as used in this section includes, but is not limited to, an information disclosure statement, an amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability. If reply to an Office action under 35 U.S.C. 132 is outstanding, the submission must meet the reply requirements of § 1.111.

(d) If an applicant timely files a submission and fee set forth in § 1.17(e), the Office will withdraw the finality of any Office action and the submission will be entered and considered. If an applicant files a request for continued examination under this section after appeal, but prior to a decision on the appeal, it will be treated as a request to withdraw the appeal and to reopen prosecution of the application before the examiner. An appeal brief (§ 41.37 of this title) or a reply brief (§ 41.41 of this title), or related papers, will not be considered a submission under this section.

(e)The provisions of this section do not apply to:

(1)A provisional application;

(2)An application for a utility or plant patent filed under 35 U.S.C. 111(a) before June 8, 1995;

(3)An international application filed under 35 U.S.C. 363before June 8, 1995;

(4)An application for a design patent; or

(5)A patent under reexamination.

35 U.S.C. 132(b) provides for continued examination of an application at the request of the applicant (request for continued examination or RCE) upon payment of a fee, without requiring the applicant to file a continuing application under 37 CFR 1.53(b). To implement the RCE practice, 37 CFR 1.114 provides a procedure under which an applicant may obtain continued examination of an application in which prosecution is closed (e.g., the application is under final rejection or a notice of allowance) by filing a submission and paying a specified fee. Applicants cannot file an RCE to obtain continued examination on the basis of claims that are independent and distinct from the claims previously claimed and examined as a matter of right (i.e., applicant cannot switch inventions). See 37 CFR 1.145. Any newly submitted claims that are directed to an invention that is independent and distinct from the invention previously claimed will be withdrawn from consideration and not entered. See subsection VI. below. An RCE is not the filing of a new application. Thus, the Office will not convert an RCE to a new application such as an application filed under 37 CFR 1.53(b) or a continued prosecution application (CPA) under 37 CFR 1.53(d).

I.CONDITIONS FOR FILING AN RCE

The provisions of 37 CFR 1.114 apply to utility or plant applications filed under 35 U.S.C. 111(a) on or after June 8, 1995, or international applications filed under 35 U.S.C. 363 on or after June 8, 1995. The RCE provisions of 37 CFR 1.114 do not apply to:

(A)a provisional application;

(B)an application for a utility or plant patent filed under 35 U.S.C. 111(a) before June 8, 1995;

(C)an international application filed under 35 U.S.C. 363 before June 8, 1995;

(D)an application for a design patent; or

(E)a patent under reexamination.

See 37 CFR 1.114(e).

An applicant may obtain continued examination of an application by filing a request for continued examination (see form PTO/SB/30), a submission and the fee set forth in 37 CFR 1.17(e) prior to the earliest of:

(A)payment of the issue fee (unless a petition under 37 CFR 1.313 is granted);

(B)abandonment of the application; or

(C)the filing of a notice of appeal to the U.S. Court of Appeals for the Federal Circuit or the commencement of a civil action (unless the appeal or civil action is terminated).

See 37 CFR 1.114(a). An applicant cannot request continued examination of an application until after prosecution in the application is closed. See 37 CFR 1.114(a). Prosecution in an application is closed if the application is under appeal, or the last Office action is a final action (37 CFR 1.113), a notice of allowance (37 CFR 1.311), or an action that otherwise closes prosecution in the application (e.g., an Office action under Ex parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm’r Pat. 1935)).

II.SUBMISSION REQUIREMENT

A "submission" as used in 37 CFR 1.114 includes, but is not limited to, an information disclosure statement, an amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability. See 37 CFR 1.114(c). If a reply to an Office action under 35 U.S.C. 132 is outstanding, the submission must meet the reply requirements of 37 CFR 1.111. See 37 CFR 1.114(c). Thus, an applicant may file a submission under 37 CFR 1.114 containing only an information disclosure statement (37 CFR 1.97 and 1.98) in an application subject to a notice of allowance under 35 U.S.C. 151, but not in an application where the last Office action is a final rejection or an Office action under Ex parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm’r Pat. 1935), or in an application that is under appeal. A request for a suspension of action, an appeal brief or a reply brief (or related papers) will not be considered a submission under 37 CFR 1.114. See 37 CFR 1.103 and 1.114(d). The submission, however, may consist of the arguments in a previously filed appeal brief or reply brief, or may simply consist of a statement that incorporates by reference the arguments in a previously filed appeal brief or reply brief. In addition, a previously filed amendment after final (whether or not entered) may satisfy this submission requirement.

Arguments submitted after final rejection, which were entered by the examiner but not found persuasive, may satisfy the submission requirement if such arguments are responsive within the meaning of 37 CFR 1.111 to the Office action. Consideration of whether any submission is responsive within the meaning of 37 CFR 1.111 to the last outstanding Office action is done without factoring in the "final" status of such outstanding Office action. Thus, a reply which might not be acceptable as a reply under 37 CFR 1.113 when the application is under a final rejection may be acceptable as a reply under 37 CFR 1.111.

III.IMPROPER CPA TREATED AS RCE

37 CFR 1.53(d)(1) has been amended to provide that CPA practice under 37 CFR 1.53(d) does notapply to utility and plant applications. Effective July 14, 2003, a CPA may only be filed if the prior nonprovisional application is a design application that is complete as defined by 37 CFR 1.51(b).

In the event that an applicant files a request for a CPA (on or after July 14, 2003) of a utility or plant application that was filed on or after June 8, 1995, the Office will automatically treat the improper CPA as an RCE of the prior application (identified in the request for CPA) under 37 CFR 1.114. If the CPA does not satisfy the requirements of 37 CFR 1.114 to be a proper RCE (e.g., lacks a submission under 37 CFR 1.114(b), or is not accompanied by the fee set forth in 37 CFR 1.17(e)), the improper CPA will be treated as an improper RCE, and the time period set in the last Office action (or notice of allowance) will continue to run. If the time period (considering any available extension under 37 CFR 1.136(a)) has expired, the applicant will need to file a petition under 37 CFR 1.137 (with the lacking submission under 37 CFR 1.114(b) or fee set forth in 37 CFR 1.17(e)) to revive the abandoned application.

Effective July 14, 2003, the Office will not convert an improper CPA into an application under 37 CFR 1.53(b) simply because it is requested by the applicant. The Office will convert an improper CPA into an application under 37 CFR 1.53(b) only if the applicant shows that there are extenuating circumstances that warrant the burdensome process of converting a CPA into an application under 37 CFR 1.53(b) (e.g., restoring the application to pending status and correcting the improper RCE is not possible because the application has issued as a patent).

IV.AFTER FINAL REJECTION

If an applicant timely files an RCE with the fee set forth in 37 CFR 1.17(e) and a submission that meets the reply requirements of 37 CFR 1.111, the Office will withdraw the finality of any Office action to which a reply is outstanding and the submission will be entered and considered. See 37 CFR 1.114(d). The submission meeting the reply requirements of 37 CFR 1.111 must be timely received to continue prosecution of an application. In other words, the mere request for, and payment of the fee for, continued examination will not operate to toll the running of any time period set in the previous Office action for reply to avoid abandonment of the application.

Any submission that is an amendment must comply with the manner of making amendments as set forth in 37 CFR 1.121. See MPEP § 714.03. The amendment must include markings showing the changes relative to the last entered amendment. Even though previously filed unentered amendments after final may satisfy the submission requirement under 37 CFR 1.114(c), applicants are encouraged to file an amendment at the time of filing the RCE that incorporates all of the desired changes, including changes presented in any previously filed unentered after final amendments, accompanied by instructions not to enter the unentered after final amendments. See subsection VI for treatment of not fully responsive submissions including noncompliant amendments.

V.NOT FULLY RESPONSIVE SUBMISSION

If reply to a final Office action is outstanding and the submission is not fully responsive to the final Office action, then it must be a bona fide attempt to provide a complete reply to the final Office action in order for the RCE to toll the period for reply.

If the submission is not a bona fide attempt to provide a complete reply, the RCE should be treated as an improper RCE. Thus, a “Notice of Improper Request for Continued Examination (RCE),” Form PTO-2051, should be prepared by the technical support personnel and mailed to the applicant indicating that the request was not accompanied by a submission complying with the requirements of 37 CFR 1.111 (see 37 CFR 1.114(c)). The RCE will not toll the period for reply and the application will be abandoned after the expiration of the statutory period for reply if no submission complying with 37 CFR 1.111 is filed. For example, if a reply to a final Office action is outstanding and the submission only includes an information disclosure statement (IDS), the submission will not be considered a bona fide attempt to provide a complete reply to the final Office action and the period for reply will not be tolled. Similarly, an amendment that would cancel all of the claims in an application and does not present any new or substitute claims is not a bona fideattempt to advance the application to final action. The Office will not enter such an amendment. See Exxon Corp. v. Phillips Petroleum Co., 265 F.3d 1249, 60 USPQ2d 1368 (Fed. Cir. 2001).

If the submission is a bona fide attempt to provide a complete reply, applicant should be informed that the submission is not fully responsive to the final Office action, along with the reasons why, and given a new shortened statutory period of one month or thirty days (whichever is longer) to complete the reply. See 37 CFR 1.135(c).

Situations where a submission is not a fully responsive submission, but is a bona fide attempt to provide a complete reply are:

(A)Non-compliant amendment - An RCE filed with a submission which is an amendment that is not in compliance with 37 CFR 1.121, but which is a bona fide attempt to provide a complete reply to the last Office action, should be treated as a proper RCE and a Notice of Noncompliant Amendment should be mailed to the applicant. Applicant is given a time period of one month or thirty days from the mailing date of the notice, whichever is longer, to provide an amendment complying with 37 CFR 1.121. See MPEP § 714.03 for information on the amendment practice under 37 CFR 1.121.

(B)Presentation of claims for different invention - Applicants cannot file an RCE to obtain continued examination on the basis of claims that are independent and distinct from the claims previously claimed and examined as a matter of right (i.e., applicant cannot switch inventions). See 37 CFR 1.145. If an RCE is filed with an amendment canceling all claims drawn to the elected invention and presenting only claims drawn to a nonelected invention, the RCE should be treated as a proper RCE but the amendment should not be entered. The amendment is not fully responsive and applicant should be given a time period of one month or thirty days (whichever is longer) to submit a complete reply. See MPEP § 821.03. Form paragraphs 8.04 or 8.26 should be used as appropriate.

VI.NEW MATTER

35 U.S.C. 132(a) provides that “[n]o amendment shall introduce new matter into the disclosure of the invention.” Any amendment entered pursuant to 37 CFR 1.114 that is determined to contain new matter should be treated in the same manner that a reply under 37 CFR 1.111 determined to contain new matter is currently treated. See MPEP § 706.03(o). In those instances in which an applicant seeks to add new matter to the disclosure of an application, the procedure in 37 CFR 1.114 is not available, and the applicant must file a continuation-in-part application under 37 CFR 1.53(b) containing such new matter.

VII.FIRST ACTION FINAL AFTER FILING AN RCE

The action immediately subsequent to the filing of an RCE with a submission and fee under 37 CFR 1.114 may be made final only if the conditions set forth in MPEP § 706.07(b) for making a first action final in a continuing application are met.

VIII.AFTER ALLOWANCE OR QUAYLE ACTION

The phrase "withdraw the finality of any Office action" in 37 CFR 1.114(d) includes the withdrawal of the finality of a final rejection, as well as the closing of prosecution by an Office action under Ex parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm’r Pat. 1935), or notice of allowance under 35

U.S.C. 151(or notice of allowability). Therefore, if an applicant files an RCE with the fee set forth in 37 CFR 1.17(e) and a submission in an application which has been allowed, prosecution will be reopened. If the issue fee has been paid, however, payment of the fee for an RCE and a submission without a petition under 37 CFR 1.313 to withdraw the application from issue will not avoid issuance of the application as a patent. If an RCE (with the fee and a submission) is filed in an allowed application prior to payment of the issue fee, a petition under 37 CFR 1.313 to withdraw the application from issue is not required.

If an RCE complying with the requirements of 37 CFR 1.114 is filed in an allowed application after the issue fee has been paid and a petition under 37 CFR 1.313 is also filed and granted, prosecution will be reopened. Applicant may not obtain a refund of the issue fee. If, however, the application is subsequently allowed, the Notice of Allowance will reflect an issue fee amount that is due that is the difference between the current issue fee amount and the issue fee that was previously paid.

If an applicant files an RCE under 37 CFR 1.114after the filing of a Notice of Appeal to the Board of Patent Appeals and Interferences (Board), but prior to a decision on the appeal, it will be treated as a request to withdraw the appeal and to reopen prosecution of the application before the examiner, regardless of whether the RCE is proper or improper. See 37 CFR 1.114(d). The Office will withdraw the appeal upon the filing of an RCE. Applicants should advise the Board when an RCE under 37 CFR 1.114 is filed in an application containing an appeal awaiting decision. Otherwise, the Board of Patent Appeals and Interferences may refuse to vacate a decision rendered after the filing (but before the recognition by the Office) of an RCE under 37 CFR 1.114.

A.Proper RCE

If the RCE is accompanied by a fee (37 CFR 1.17(e)) and a submission that includes a reply which is responsive within the meaning of 37 CFR 1.111 to the last outstanding Office action, the Office will withdraw the finality of the last Office action and the submission will be entered and considered. If the submission is not fully responsive to the last outstanding Office action but is considered to be a bona fideattempt to provide a complete reply, applicant will be notified that the submission is not fully responsive, along with the reasons why, and will be given a new time period to complete the reply (using form paragraph 7.42.08). See 37 CFR 1.135(c) and subsection V.

If the RCE is proper, form paragraph 7.42.06 should be used to notify applicant that the appeal has been withdrawn and prosecution has been reopened.

B.Improper RCE

The appeal will be withdrawn even if the RCE is improper. If an RCE is filed in an application after appeal to the Board but the request does not include the fee required by 37 CFR 1.17(e) or the submission required by 37 CFR 1.114, or both, the examiner should treat the request as an improper RCE and withdraw the appeal pursuant to 37 CFR 1.114(d). If the submission is not considered to be a bona fide attempt to provide a complete reply to the last outstanding Office action (e.g., an IDS only), the submission will be treated as an improper submission or no submission at all under 37 CFR 1.114(c) (thus the request is an improper RCE). See subsection VI.

Upon withdrawal of the appeal, the application will be treated in accordance with MPEP § 1215.01based on whether there are any allowed claims or not. The proceedings as to the rejected claims are considered terminated. Therefore, if no claim is allowed, the application is abandoned. Claims which are allowable except for their dependency from rejected claims will be treated as if they were rejected. See MPEP § 1215.01. If there is at least one allowed claim, the application should be passed to issue on the allowed claim(s). If there is at least one allowed claim but formal matters are outstanding, applicant should be given a shortened statutory period of one month or thirty days (whichever is longer) in which to correct the formal matters.

X.AFTER DECISION BY THE BOARD

A.Proper RCE After Board Decision

The filing of an RCE (accompanied by the fee and a submission) after a decision by the Board of Patent Appeals and Interferences, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit (Federal Circuit) or the commencement of a civil action in federal district court, will also result in the finality of the rejection or action being withdrawn and the submission being considered. Generally, the time period for filing a notice of appeal to the Federal Circuit or for commencing a civil action is within two months of the Board’s decision. See 37 CFR 1.304 and MPEP § 1216. Thus, an RCE filed within this two month time period and before the filing of a notice of appeal to the Federal Circuit or the commencement of a civil action would be timely filed. In addition to the res judicataeffect of a Board of Patent Appeals and Interferences decision in an application (see MPEP § 706.03(w)), a Board decision in an application is the “law of the case,” and is thus controlling in that application and any subsequent, related application. See MPEP § 1214.01 (where a new ground of rejection is entered by the Board of Patent Appeals and Interferences pursuant to 37 CFR 1.196(b), argument without either amendment of the claims so rejected or the submission of a showing of facts can only result in a final rejection of the claims, since the examiner is without authority to allow the claims unless amended or unless the rejection is overcome by a showing of facts not before the Board of Patent Appeals and Interferences). As such, a submission containing arguments without either amendment of the rejected claims or the submission of a showing of facts will not be effective to remove such rejection.

B.Improper RCE After Board Decision

If an RCE is filed after a decision by the Board of Patent Appeals and Interferences, but before the filing of a Notice of Appeal to the Federal Circuit or the commencement of a civil action in federal district court, and the RCE was not accompanied by the fee and/or the submission, the examiner should notify the applicant that the RCE is improper by using form paragraph 7.42.16 set forth below. If the time for seeking court review has passed without such review being sought, the examiner should include the form paragraph with the mailing of a Notice of Allowability or a Notice of Abandonment depending on the status of the claims. See MPEP § 1214.06. If the time for seeking court review remains, the examiner should include the form paragraph on a PTOL-90. No time period should be set. If a submission is filed with the RCE, but the fee is missing, the examiner should also include a statement as to whether or not the submission has been entered. In general, such a submission should not be entered. If, however, the submission is an amendment that obviously places the application in condition for allowance, it should be entered with the approval of the supervisory patent examiner. See MPEP § 1214.07. Form paragraph 7.42.16 should not be used if the application is not a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995. In that situation, a “Notice of Improper Request for Continued Examination (RCE),” Form PTO-2051, should be prepared and mailed by the technical support personnel to notify applicant that continued examination does not apply to the application. When the time for seeking court review has passed without such review being sought, the examiner must take up the application for consideration. See MPEP § 1214.06for guidance on the action to be taken.

XI.AFTER APPEAL TO THE FEDERAL CIRCUIT OR CIVIL ACTION

The procedure set forth in 37 CFR 1.114 is not available in an application after the filing of a Notice of Appeal to the Federal Circuit or the commencement of a civil action in federal district court, unless the appeal or civil action is terminated and the application is still pending. If an RCE is filed in an application that has undergone court review, the examiner should bring the application to the attention of the supervisory patent examiner or special program examiner in the TC to determine whether the RCE is proper. Unless an application contains allowed claims (or the court’s mandate clearly indicates that further action is to be taken by the Office), the termination of an unsuccessful appeal or civil action results in abandonment of the application. See MPEP § 1216.01.

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