Editing MPEP 715
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Latest revision | Your text | ||
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the application, this fact should be noted in the Office | the application, this fact should be noted in the Office | ||
action. The reference can then be overcome only by | action. The reference can then be overcome only by | ||
way of interference. See | way of interference. See MPEP Chapter 2300. If the | ||
reference is a U.S. patent which claims the same | reference is a U.S. patent which claims the same | ||
invention as the application and its issue date is more | invention as the application and its issue date is more | ||
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invention in the application, a rejection of the claims | invention in the application, a rejection of the claims | ||
of the application under 35 U.S.C. 135(b)(1) should | of the application under 35 U.S.C. 135(b)(1) should | ||
be made. | be made. See In re McGrew, 120 | ||
F.3d 1236, 1238, 43 | |||
The expression | USPQ2d 1632, 1635 (Fed. Cir. 1997) (The court holding | ||
patent was | that application of 35 | ||
U.S.C. 135(b) is not limited | |||
to inter partes interference proceedings, but may be | |||
used as a basis for ex parte rejections.). The expression | |||
“prior to one year from the date on which the | |||
patent was granted” in 35 U.S.C. 135(b) includes the | |||
one-year anniversary date of the issuance of a patent. | one-year anniversary date of the issuance of a patent. | ||
See Switzer v. Sockman, 333 F.2d 935, 142 USPQ 226 | |||
(CCPA 1964). | |||
If the reference is a U.S. application publication | If the reference is a U.S. application publication | ||
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or declaration under 37 CFR 1.130 may be used | or declaration under 37 CFR 1.130 may be used | ||
to overcome a rejection under 35 U.S.C. 103. See | to overcome a rejection under 35 U.S.C. 103. See | ||
MPEP § 718. | |||
A 37 CFR 1.131 affidavit is ineffective to overcome | A 37 CFR 1.131 affidavit is ineffective to overcome | ||
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correspondence between claims of the application and | correspondence between claims of the application and | ||
of the patent, but also where there is no patentable distinction | of the patent, but also where there is no patentable distinction | ||
between the respective claims. | between the respective claims. In re Clark, | ||
457 F.2d 1004, 173 USPQ 359 (CCPA 1972); In re | |||
Hidy, 303 F.2d 954, 133 USPQ 650 (CCPA 1962); In | |||
re Teague, 254 F.2d 145, 117 USPQ 284 (CCPA | |||
1958); In re Ward, 236 F.2d 428, 111 USPQ 101 | |||
(CCPA 1956); In re Wagenhorst, 62 F.2d 831, | |||
16 | |||
USPQ 126 (CCPA 1933). | |||
If the application (or patent under reexamination) | If the application (or patent under reexamination) | ||
and the domestic reference contain claims which are | and the domestic reference contain claims which are | ||
identical, or which are not patentably distinct, then the | identical, or which are not patentably distinct, then the | ||
application and patent are claiming the | application and patent are claiming the “same patentable | ||
invention. | invention.” | ||
As provided in 37 CFR 41.203(a), an interference | As provided in 37 CFR 41.203(a), an interference | ||
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same invention. | same invention. | ||
Since 37 CFR 1.131 defines | Since 37 CFR 1.131 defines “same patentable | ||
invention” in the same way as the interference rules | |||
(37 CFR 41.203(a)), the USPTO cannot prevent an | (37 CFR 41.203(a)), the USPTO cannot prevent an | ||
applicant from overcoming a reference by a 37 CFR | applicant from overcoming a reference by a 37 CFR | ||
1.131 affidavit or declaration on the grounds that the | 1.131 affidavit or declaration on the grounds that the | ||
reference claims | reference claims applicant’s invention and, at the | ||
same time, deny applicant an interference on the | same time, deny applicant an interference on the | ||
grounds that the claims of the application and those of | grounds that the claims of the application and those of | ||
the reference are not for substantially the same invention. | the reference are not for substantially the same invention. | ||
See In re Eickmeyer, 602 F.2d 974, 202 USPQ | |||
Where, in denying an | 655 (CCPA 1979). Where, in denying an applicant’s | ||
motion in interference to substitute a broader count, it | motion in interference to substitute a broader count, it | ||
is held that the limitation to be deleted was material | is held that the limitation to be deleted was material | ||
for the opponent patentee, this constitutes a holding | for the opponent patentee, this constitutes a holding | ||
that the proposed count is for an invention which is | that the proposed count is for an invention which is | ||
not the | not the “same patentable invention” claimed by the | ||
reference. Therefore, the applicant may file an affidavit | reference. Therefore, the applicant may file an affidavit | ||
or declaration under 37 CFR 1.131 to overcome a | or declaration under 37 CFR 1.131 to overcome a | ||
prior art rejection based on the reference. | prior art rejection based on the reference. Adler v. Kluver, | ||
159 USPQ 511 (Bd. Pat. Int. 1968). | |||
===715.07 Facts and Documentary Evidence=== | ===715.07 Facts and Documentary Evidence=== |