What is the burden of establishing disqualification under pre-AIA 35 U.S.C. 103(c)?
The burden of establishing that subject matter is disqualified as prior art under pre-AIA 35 U.S.C. 103(c) lies with the applicant. The MPEP states:
“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.”
This means that after an examiner has made an obviousness rejection using certain prior art, it’s up to the applicant to prove that the prior art should be disqualified under pre-AIA 35 U.S.C. 103(c). The MPEP further clarifies:
“For example, the fact that the reference and the application have the same assignee is not, by itself, sufficient to disqualify the prior art under pre-AIA 35 U.S.C. 103(c). There must be a statement that the common ownership was ‘at the time the invention was made.'”
Applicants must provide clear evidence and statements to meet this burden and successfully disqualify the prior art.
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