Why should examiners consider pre-AIA 35 U.S.C. 102(a) even if a reference is prior art under pre-AIA 35 U.S.C. 102(e)?

Examiners should consider pre-AIA 35 U.S.C. 102(a) even if a reference is prior art under pre-AIA 35 U.S.C. 102(e) for two main reasons:

1. Earlier prior art date: The MPEP states, 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 pre-AIA 35 U.S.C. 102(a) for the disclosure.
2. Potential disqualification under pre-AIA 35 U.S.C. 103(c): references that are only prior art under pre-AIA 35 U.S.C. 102(e), (f), or (g) and applied in a rejection under pre-AIA 35 U.S.C. 103(a) are subject to being disqualified under pre-AIA 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.

Considering pre-AIA 35 U.S.C. 102(a) ensures that the examiner uses the earliest possible prior art date and accounts for potential disqualifications under pre-AIA 35 U.S.C. 103(c).

To learn more:

• pre-AIA 35 U.S.C. 102(a)
• pre-AIA 35 U.S.C. 102(e)
• prior art
• patent examination
• PCT Article 21(2)