How does pre-AIA 35 U.S.C. 102(e) apply to international applications?
Pre-AIA 35 U.S.C. 102(e) applies to certain international applications as prior art. According to the MPEP, The prior art date of a reference under pre-AIA 35 U.S.C. 102(e) may be the international filing date if the international filing date was on or after November 29, 2000, the international application designated the United States, and the…
Read MoreCan 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…
Read MoreCan subject matter from a parent application be used as prior art against a continuation-in-part (CIP) under pre-AIA 35 U.S.C. 102(e)?
Subject matter that is disclosed in a parent application but not included in a child continuation-in-part (CIP) cannot be used as prior art under pre-AIA 35 U.S.C. 102(e) against the CIP. The MPEP cites a specific case law example: “In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967) (The examiner made a pre-AIA…
Read MoreHow does the filing date of a U.S. parent application affect the pre-AIA 35 U.S.C. 102(e) date in a continuing application?
The filing date of a U.S. parent application can be used as the pre-AIA 35 U.S.C. 102(e) date in a continuing application, but only if certain conditions are met. The MPEP states: “For prior art purposes, a U.S. patent or patent application publication that claims the benefit of an earlier filing date under 35 U.S.C.…
Read MoreHow can a provisional rejection under pre-AIA 35 U.S.C. 102(e) be overcome?
A provisional rejection under pre-AIA 35 U.S.C. 102(e) can be overcome in several ways. The MPEP states: A provisional rejection under pre-AIA 35 U.S.C. 102(e) can be overcome in the same manner that a pre-AIA 35 U.S.C. 102(e) rejection can be overcome. See MPEP § 2136.05. Additionally, The provisional rejection can also be overcome by…
Read MoreHow can an applicant overcome a rejection under pre-AIA 35 U.S.C. 102(e)?
An applicant can overcome a rejection under pre-AIA 35 U.S.C. 102(e) through several methods: Persuasively arguing that the claims are patentably distinguishable from the prior art Amending the claims to patentably distinguish over the prior art Filing an affidavit or declaration under 37 CFR 1.132 showing that the reference invention is not by “another” Filing…
Read MoreHow can a provisional rejection under 35 U.S.C. 103(a) based on provisional prior art under pre-AIA 35 U.S.C. 102(e) be overcome?
There are several ways to overcome a provisional rejection under 35 U.S.C. 103(a) based on provisional prior art under pre-AIA 35 U.S.C. 102(e). The MPEP outlines the following methods: Arguing patentability over the earlier filed application Combining the subject matter of the copending applications into a single application Filing an affidavit or declaration under 37…
Read MoreHow can I overcome a pre-AIA 35 U.S.C. 102(e) rejection?
There are two main ways to overcome a pre-AIA 35 U.S.C. 102(e) rejection: Antedating the filing date of the reference: This can be done by submitting an affidavit or declaration under 37 CFR 1.131. As stated in the MPEP, “An affidavit or declaration under 37 CFR 1.131(a) can overcome a prior art rejection under pre‑AIA…
Read MoreHow does the Milburn rule relate to pre-AIA 35 U.S.C. 102(e)?
The Milburn rule, codified in pre-AIA 35 U.S.C. 102(e), allows the use of a U.S. patent as a reference against a later filed application as of the U.S. patent filing date. The MPEP explains this in MPEP 2136.04: “As stated by the House and Senate reports on the bills enacting section pre-AIA 35 U.S.C. 102(e)…
Read MoreHow are international applications treated under pre-AIA 35 U.S.C. 102(e)?
The treatment of international applications under pre-AIA 35 U.S.C. 102(e) depends on their filing date and other factors: For international applications filed on or after November 29, 2000: If the application meets three conditions: (1) international filing date on or after November 29, 2000, (2) designated the United States, and (3) published under PCT Article…
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