How does pre-AIA 35 U.S.C. 102(g) relate to ex parte rejections?
Pre-AIA 35 U.S.C. 102(g) can form the basis for an ex parte rejection under certain conditions. The MPEP states:
Pre-AIA 35 U.S.C. 102(g) may form the basis for an ex parte rejection if: (1) the subject matter at issue has been actually reduced to practice by another before the inventor’s invention; and (2) there has been no abandonment, suppression or concealment.
It’s important to note that mere conception is not sufficient for an ex parte rejection under pre-AIA 35 U.S.C. 102(g). The MPEP clarifies: To qualify as prior art under pre-AIA 35 U.S.C. 102(g), however, there must be evidence that the subject matter was actually reduced to practice, in that conception alone is not sufficient.
(MPEP 2138)
Patent examiners should be aware that the filing of a patent application, while considered a constructive reduction to practice, does not provide sufficient evidence for an ex parte rejection under pre-AIA 35 U.S.C. 102(g). In such cases, the disclosure would fall under pre-AIA 35 U.S.C. 102(e) instead.
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