Can pre-AIA 35 U.S.C. 102(e) references be used in obviousness rejections under 35 U.S.C. 103?
Yes, pre-AIA 35 U.S.C. 102(e) references can be used in obviousness rejections under 35 U.S.C. 103. The MPEP cites Supreme Court authorization for this practice:
“The Supreme Court has authorized 35 U.S.C. 103 rejections based on pre-AIA 35 U.S.C. 102(e)… Obviousness can be shown by combining other prior art with the U.S. patent reference in a 35 U.S.C. 103 rejection. Hazeltine Research v. Brenner, 382 U.S. 252, 147 USPQ 429 (1965).”
This means that examiners can use U.S. patents, certain U.S. application publications, and certain international application publications as of their earliest effective U.S. filing dates not only for anticipation rejections under 102(e) but also as part of obviousness rejections under 103. These references can be combined with other prior art to demonstrate that the claimed invention would have been obvious to a person of ordinary skill in the art.
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