1. This form paragraph must be used in all Office Actions when a prior art rejection is made in an application with an actual filing date on or after March 16, 2013 that claims priority to, or the benefit of, an application filed before March 16, 2013.

2. For applications with an actual filing date on or after March 16, 2013 that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraphs 15.10.aia and 15.10.15.

2. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraphs 15.10.aia and 15.10.15.

3. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102 / 103 as amended by the AIA.

For applications with an actual filing date on or after March 16, 2013 that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraphs 15.10.aia and 15.10.15.

For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraphs 15.10.fti and 15.10.15.

3. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraphs 15.10.aia and 15.10.15.

4. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102 / 103 as amended by the AIA.

3. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraphs 15.10.aia and 15.10.15.

(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—

• (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
• (2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

(b) EXCEPTIONS.—

• (1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—
  • (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
  • (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
• (2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.—A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—
  • (A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
  • (B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
  • (C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.

(b) EXCEPTIONS.—
(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—
…
(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.—A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—

• (A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
• (B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
• (C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.

A person shall be entitled to a patent unless —
…
In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

The ordinary observer test requires consideration of the design as a whole. See Seaway, 589 F.3d at 1243, 93 USPQ2d at 1008; Egyptian Goddess, 543 F.3d at 677, 88 USPQ2d 1667. In applying the ordinary observer test, “determine whether ‘the deception that arises is a result of the similarities in the overall design not of similarities in ornamental features in isolation.’” See Richardson v. Stanley Works Inc., 597 F.3d 1288, 1295, 93 USPQ2d 1937, 1941 (Fed. Cir. 2010), citing Amini Innovation Corp. v. Anthony California Inc., 439 F.3d 1365, 1371, 78 USPQ2d 1147, 1151 (Fed. Cir. 2006) (holding that the overall infringement test is not to be converted to an element-by-element comparison when factoring out the functional aspects of various design elements). See Apple Inc. v. Samsung Elecs. Co., 786 F.3d 983, 998, 114 USPQ2d 1953, 1962 (Fed. Cir. 2015); Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1333, 115 USPQ2d 1880, 1896 (Fed. Cir. 2015); and Sport Dimension, Inc. v. Coleman Co. Inc., 820 F.3d, 1316, 1320-21, 118 USPQ2d 1607, 1609-10 (Fed. Cir. 2016). “The mandated overall comparison is a comparison taking into account significant differences between the two designs, not minor or trivial differences that necessarily exist between any two designs that are not exact copies of one another.” Seaway, 589 F.3d at 1243, 93 USPQ2d at 1008. “Just as minor differences between a patented design and an accused article's design cannot, and shall not, prevent a finding of infringement, so too minor differences cannot prevent a finding of anticipation.” Id. (internal quotation marks omitted).

The ordinary observer test requires consideration of the design as a whole. See Seaway, 589 F.3d at 1243, 93 USPQ2d at 1008; Egyptian Goddess, 543 F.3d at 677, 88 USPQ2d 1667. In applying the ordinary observer test, “determine whether ‘the deception that arises is a result of the similarities in the overall design not of similarities in ornamental features in isolation.’” See Richardson v. Stanley Works Inc., 597 F.3d 1288, 1295, 93 USPQ2d 1937, 1941 (Fed. Cir. 2010), citing Amini Innovation Corp. v. Anthony California Inc., 439 F.3d 1365, 1371, 78 USPQ2d 1147, 1151 (Fed. Cir. 2006) (holding that the overall infringement test is not to be converted to an element-by-element comparison when factoring out the functional aspects of various design elements). See Apple Inc. v. Samsung Elecs. Co., 786 F.3d 983, 998, 114 USPQ2d 1953, 1962 (Fed. Cir. 2015); Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1333, 115 USPQ2d 1880, 1896 (Fed. Cir. 2015); and Sport Dimension, Inc. v. Coleman Co. Inc., 820 F.3d, 1316, 1320-21, 118 USPQ2d 1607, 1609-10 (Fed. Cir. 2016). “The mandated overall comparison is a comparison taking into account significant differences between the two designs, not minor or trivial differences that necessarily exist between any two designs that are not exact copies of one another.” Seaway, 589 F.3d at 1243, 93 USPQ2d at 1008. “Just as minor differences between a patented design and an accused article's design cannot, and shall not, prevent a finding of infringement, so too minor differences cannot prevent a finding of anticipation.” Id. (internal quotation marks omitted).

The ordinary observer test requires consideration of the design as a whole. See Seaway, 589 F.3d at 1243, 93 USPQ2d at 1008; Egyptian Goddess, 543 F.3d at 677, 88 USPQ2d 1667. In applying the ordinary observer test, “determine whether ‘the deception that arises is a result of the similarities in the overall design not of similarities in ornamental features in isolation.’” See Richardson v. Stanley Works Inc., 597 F.3d 1288, 1295, 93 USPQ2d 1937, 1941 (Fed. Cir. 2010), citing Amini Innovation Corp. v. Anthony California Inc., 439 F.3d 1365, 1371, 78 USPQ2d 1147, 1151 (Fed. Cir. 2006) (holding that the overall infringement test is not to be converted to an element-by-element comparison when factoring out the functional aspects of various design elements). See Apple Inc. v. Samsung Elecs. Co., 786 F.3d 983, 998, 114 USPQ2d 1953, 1962 (Fed. Cir. 2015); Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1333, 115 USPQ2d 1880, 1896 (Fed. Cir. 2015); and Sport Dimension, Inc. v. Coleman Co. Inc., 820 F.3d, 1316, 1320-21, 118 USPQ2d 1607, 1609-10 (Fed. Cir. 2016). “The mandated overall comparison is a comparison taking into account significant differences between the two designs, not minor or trivial differences that necessarily exist between any two designs that are not exact copies of one another.” Seaway, 589 F.3d at 1243, 93 USPQ2d at 1008. “Just as minor differences between a patented design and an accused article's design cannot, and shall not, prevent a finding of infringement, so too minor differences cannot prevent a finding of anticipation.” Id. (internal quotation marks omitted).

The ordinary observer test requires consideration of the design as a whole. See Seaway, 589 F.3d at 1243, 93 USPQ2d at 1008; Egyptian Goddess, 543 F.3d at 677, 88 USPQ2d 1667. In applying the ordinary observer test, “determine whether ‘the deception that arises is a result of the similarities in the overall design not of similarities in ornamental features in isolation.’” See Richardson v. Stanley Works Inc., 597 F.3d 1288, 1295, 93 USPQ2d 1937, 1941 (Fed. Cir. 2010), citing Amini Innovation Corp. v. Anthony California Inc., 439 F.3d 1365, 1371, 78 USPQ2d 1147, 1151 (Fed. Cir. 2006) (holding that the overall infringement test is not to be converted to an element-by-element comparison when factoring out the functional aspects of various design elements). See Apple Inc. v. Samsung Elecs. Co., 786 F.3d 983, 998, 114 USPQ2d 1953, 1962 (Fed. Cir. 2015); Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1333, 115 USPQ2d 1880, 1896 (Fed. Cir. 2015); and Sport Dimension, Inc. v. Coleman Co. Inc., 820 F.3d, 1316, 1320-21, 118 USPQ2d 1607, 1609-10 (Fed. Cir. 2016). “The mandated overall comparison is a comparison taking into account significant differences between the two designs, not minor or trivial differences that necessarily exist between any two designs that are not exact copies of one another.” Seaway, 589 F.3d at 1243, 93 USPQ2d at 1008. “Just as minor differences between a patented design and an accused article's design cannot, and shall not, prevent a finding of infringement, so too minor differences cannot prevent a finding of anticipation.” Id. (internal quotation marks omitted).

The ordinary observer test requires consideration of the design as a whole. See Seaway, 589 F.3d at 1243, 93 USPQ2d at 1008; Egyptian Goddess, 543 F.3d at 677, 88 USPQ2d 1667. In applying the ordinary observer test, “determine whether ‘the deception that arises is a result of the similarities in the overall design not of similarities in ornamental features in isolation.’” See Richardson v. Stanley Works Inc., 597 F.3d 1288, 1295, 93 USPQ2d 1937, 1941 (Fed. Cir. 2010), citing Amini Innovation Corp. v. Anthony California Inc., 439 F.3d 1365, 1371, 78 USPQ2d 1147, 1151 (Fed. Cir. 2006) (holding that the overall infringement test is not to be converted to an element-by-element comparison when factoring out the functional aspects of various design elements). See Apple Inc. v. Samsung Elecs. Co., 786 F.3d 983, 998, 114 USPQ2d 1953, 1962 (Fed. Cir. 2015); Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1333, 115 USPQ2d 1880, 1896 (Fed. Cir. 2015); and Sport Dimension, Inc. v. Coleman Co. Inc., 820 F.3d, 1316, 1320-21, 118 USPQ2d 1607, 1609-10 (Fed. Cir. 2016). “The mandated overall comparison is a comparison taking into account significant differences between the two designs, not minor or trivial differences that necessarily exist between any two designs that are not exact copies of one another.” Seaway, 589 F.3d at 1243, 93 USPQ2d at 1008. “Just as minor differences between a patented design and an accused article's design cannot, and shall not, prevent a finding of infringement, so too minor differences cannot prevent a finding of anticipation.” Id. (internal quotation marks omitted).

The ordinary observer test requires consideration of the design as a whole. See Seaway, 589 F.3d at 1243, 93 USPQ2d at 1008; Egyptian Goddess, 543 F.3d at 677, 88 USPQ2d 1667. In applying the ordinary observer test, “determine whether ‘the deception that arises is a result of the similarities in the overall design not of similarities in ornamental features in isolation.’” See Richardson v. Stanley Works Inc., 597 F.3d 1288, 1295, 93 USPQ2d 1937, 1941 (Fed. Cir. 2010), citing Amini Innovation Corp. v. Anthony California Inc., 439 F.3d 1365, 1371, 78 USPQ2d 1147, 1151 (Fed. Cir. 2006) (holding that the overall infringement test is not to be converted to an element-by-element comparison when factoring out the functional aspects of various design elements). See Apple Inc. v. Samsung Elecs. Co., 786 F.3d 983, 998, 114 USPQ2d 1953, 1962 (Fed. Cir. 2015); Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1333, 115 USPQ2d 1880, 1896 (Fed. Cir. 2015); and Sport Dimension, Inc. v. Coleman Co. Inc., 820 F.3d, 1316, 1320-21, 118 USPQ2d 1607, 1609-10 (Fed. Cir. 2016). “The mandated overall comparison is a comparison taking into account significant differences between the two designs, not minor or trivial differences that necessarily exist between any two designs that are not exact copies of one another.” Seaway, 589 F.3d at 1243, 93 USPQ2d at 1008. “Just as minor differences between a patented design and an accused article's design cannot, and shall not, prevent a finding of infringement, so too minor differences cannot prevent a finding of anticipation.” Id. (internal quotation marks omitted).

The ordinary observer test requires consideration of the design as a whole. See Seaway, 589 F.3d at 1243, 93 USPQ2d at 1008; Egyptian Goddess, 543 F.3d at 677, 88 USPQ2d 1667. In applying the ordinary observer test, “determine whether ‘the deception that arises is a result of the similarities in the overall design not of similarities in ornamental features in isolation.’” See Richardson v. Stanley Works Inc., 597 F.3d 1288, 1295, 93 USPQ2d 1937, 1941 (Fed. Cir. 2010), citing Amini Innovation Corp. v. Anthony California Inc., 439 F.3d 1365, 1371, 78 USPQ2d 1147, 1151 (Fed. Cir. 2006) (holding that the overall infringement test is not to be converted to an element-by-element comparison when factoring out the functional aspects of various design elements). See Apple Inc. v. Samsung Elecs. Co., 786 F.3d 983, 998, 114 USPQ2d 1953, 1962 (Fed. Cir. 2015); Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1333, 115 USPQ2d 1880, 1896 (Fed. Cir. 2015); and Sport Dimension, Inc. v. Coleman Co. Inc., 820 F.3d, 1316, 1320-21, 118 USPQ2d 1607, 1609-10 (Fed. Cir. 2016). “The mandated overall comparison is a comparison taking into account significant differences between the two designs, not minor or trivial differences that necessarily exist between any two designs that are not exact copies of one another.” Seaway, 589 F.3d at 1243, 93 USPQ2d at 1008. “Just as minor differences between a patented design and an accused article's design cannot, and shall not, prevent a finding of infringement, so too minor differences cannot prevent a finding of anticipation.” Id. (internal quotation marks omitted).

The ordinary observer test requires consideration of the design as a whole. See Seaway, 589 F.3d at 1243, 93 USPQ2d at 1008; Egyptian Goddess, 543 F.3d at 677, 88 USPQ2d 1667. In applying the ordinary observer test, “determine whether ‘the deception that arises is a result of the similarities in the overall design not of similarities in ornamental features in isolation.’” See Richardson v. Stanley Works Inc., 597 F.3d 1288, 1295, 93 USPQ2d 1937, 1941 (Fed. Cir. 2010), citing Amini Innovation Corp. v. Anthony California Inc., 439 F.3d 1365, 1371, 78 USPQ2d 1147, 1151 (Fed. Cir. 2006) (holding that the overall infringement test is not to be converted to an element-by-element comparison when factoring out the functional aspects of various design elements). See Apple Inc. v. Samsung Elecs. Co., 786 F.3d 983, 998, 114 USPQ2d 1953, 1962 (Fed. Cir. 2015); Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1333, 115 USPQ2d 1880, 1896 (Fed. Cir. 2015); and Sport Dimension, Inc. v. Coleman Co. Inc., 820 F.3d, 1316, 1320-21, 118 USPQ2d 1607, 1609-10 (Fed. Cir. 2016). “The mandated overall comparison is a comparison taking into account significant differences between the two designs, not minor or trivial differences that necessarily exist between any two designs that are not exact copies of one another.” Seaway, 589 F.3d at 1243, 93 USPQ2d at 1008. “Just as minor differences between a patented design and an accused article's design cannot, and shall not, prevent a finding of infringement, so too minor differences cannot prevent a finding of anticipation.” Id. (internal quotation marks omitted).

A claimed design may be rejected under 35 U.S.C. 102 when the invention is anticipated (or is “not novel”) over a disclosure that is available as prior art. In design patent applications, the factual inquiry in determining anticipation over a prior art reference is the same as in utility patent applications. That is, the reference “‘must be identical in all material respects.’” Hupp v. Siroflex of America Inc., 122 F.3d 1456, 43 USPQ2d 1887 (Fed. Cir. 1997). For anticipation to be found, the claimed design and the prior art design must be substantially the same. Door-Master Corp. v. Yorktowne, Inc., 256 F.3d 1308, 1313, 59 USPQ2d 1472, 1475 (Fed. Cir. 2001) (citing Gorham Mfg. Co. v. White, 81 U.S. 511, 528 (1871)).

A claimed design may be rejected under 35 U.S.C. 102 when the invention is anticipated (or is “not novel”) over a disclosure that is available as prior art. In design patent applications, the factual inquiry in determining anticipation over a prior art reference is the same as in utility patent applications. That is, the reference “‘must be identical in all material respects.’” Hupp v. Siroflex of America Inc., 122 F.3d 1456, 43 USPQ2d 1887 (Fed. Cir. 1997). For anticipation to be found, the claimed design and the prior art design must be substantially the same. Door-Master Corp. v. Yorktowne, Inc., 256 F.3d 1308, 1313, 59 USPQ2d 1472, 1475 (Fed. Cir. 2001) (citing Gorham Mfg. Co. v. White, 81 U.S. 511, 528 (1871)).

A claimed design may be rejected under 35 U.S.C. 102 when the invention is anticipated (or is “not novel”) over a disclosure that is available as prior art. In design patent applications, the factual inquiry in determining anticipation over a prior art reference is the same as in utility patent applications. That is, the reference “‘must be identical in all material respects.’” Hupp v. Siroflex of America Inc., 122 F.3d 1456, 43 USPQ2d 1887 (Fed. Cir. 1997). For anticipation to be found, the claimed design and the prior art design must be substantially the same. Door-Master Corp. v. Yorktowne, Inc., 256 F.3d 1308, 1313, 59 USPQ2d 1472, 1475 (Fed. Cir. 2001) (citing Gorham Mfg. Co. v. White, 81 U.S. 511, 528 (1871)).

A claimed design may be rejected under 35 U.S.C. 102 when the invention is anticipated (or is “not novel”) over a disclosure that is available as prior art. In design patent applications, the factual inquiry in determining anticipation over a prior art reference is the same as in utility patent applications. That is, the reference “‘must be identical in all material respects.’” Hupp v. Siroflex of America Inc., 122 F.3d 1456, 43 USPQ2d 1887 (Fed. Cir. 1997). For anticipation to be found, the claimed design and the prior art design must be substantially the same. Door-Master Corp. v. Yorktowne, Inc., 256 F.3d 1308, 1313, 59 USPQ2d 1472, 1475 (Fed. Cir. 2001) (citing Gorham Mfg. Co. v. White, 81 U.S. 511, 528 (1871)).

Registration of a design abroad is considered to be equivalent to patenting for priority purposes under 35 U.S.C. 119(a) – (d) and for prior art purposes pre-AIA 35 U.S.C. 102(d), whether or not the foreign grant is published. (See Ex parte Lancaster, 151 USPQ 713 (Bd. App. 1965); Ex parte Marinissen, 155 USPQ 528 (Bd. App. 1966); Appeal No. 239-48, Decided April 30, 1965, 151 USPQ 711, (Bd. App. 1965); Ex parte Appeal decided September 3, 1968, 866 O.G. 16 (Bd. App. 1966). The basis of this practice is that if the foreign applicant has received the protection offered in the foreign country, no matter what the protection is called (“patent,” “Design Registration,” etc.), if the United States application is timely filed, a claim for priority will vest. If, on the other hand, the U.S. application is not timely filed, a statutory bar arises under pre-AIA 35 U.S.C. 102(d) as modified by 35 U.S.C. 172. In order for the filing to be timely for priority purposes and to avoid possible statutory bars, the U.S. design patent application must be made within 6 months of the foreign filing. See also MPEP § 1504.10.

Registration of a design abroad is considered to be equivalent to patenting for priority purposes under 35 U.S.C. 119(a) – (d) and for prior art purposes pre-AIA 35 U.S.C. 102(d), whether or not the foreign grant is published. (See Ex parte Lancaster, 151 USPQ 713 (Bd. App. 1965); Ex parte Marinissen, 155 USPQ 528 (Bd. App. 1966); Appeal No. 239-48, Decided April 30, 1965, 151 USPQ 711, (Bd. App. 1965); Ex parte Appeal decided September 3, 1968, 866 O.G. 16 (Bd. App. 1966). The basis of this practice is that if the foreign applicant has received the protection offered in the foreign country, no matter what the protection is called (“patent,” “Design Registration,” etc.), if the United States application is timely filed, a claim for priority will vest. If, on the other hand, the U.S. application is not timely filed, a statutory bar arises under pre-AIA 35 U.S.C. 102(d) as modified by 35 U.S.C. 172. In order for the filing to be timely for priority purposes and to avoid possible statutory bars, the U.S. design patent application must be made within 6 months of the foreign filing. See also MPEP § 1504.10.

When a claim is rejected under 35 U.S.C. 102 as being unpatentable over prior art, those features of the design which are functional and/or hidden during end use may not be relied upon to support patentability. See In re Cornwall, 230 F.2d 457, 109 USPQ 57 (CCPA 1956); Jones v. Progress Ind., Inc., 163 F. Supp. 824, 119 USPQ 92 (D. R.I. 1958). Further, in a rejection of a claim under 35 U.S.C. 102, mere differences in functional considerations do not negate a finding of anticipation when determining design patentability. See Black & Decker, Inc. v. Pittway Corp., 636 F.2d 1193, 231 USPQ 252 (N.D. Ill. 1986). See also In re Zonenstein, 172 F.2d 599, 80 USPQ 522, 523 (CCPA 1949) (“Patentability of a design cannot be predicated on size or utility.”).

When a claim is rejected under 35 U.S.C. 102 as being unpatentable over prior art, those features of the design which are functional and/or hidden during end use may not be relied upon to support patentability. See In re Cornwall, 230 F.2d 457, 109 USPQ 57 (CCPA 1956); Jones v. Progress Ind., Inc., 163 F. Supp. 824, 119 USPQ 92 (D. R.I. 1958). Further, in a rejection of a claim under 35 U.S.C. 102, mere differences in functional considerations do not negate a finding of anticipation when determining design patentability. See Black & Decker, Inc. v. Pittway Corp., 636 F.2d 1193, 231 USPQ 252 (N.D. Ill. 1986). See also In re Zonenstein, 172 F.2d 599, 80 USPQ 522, 523 (CCPA 1949) (“Patentability of a design cannot be predicated on size or utility.”).

When a claim is rejected under 35 U.S.C. 102 as being unpatentable over prior art, those features of the design which are functional and/or hidden during end use may not be relied upon to support patentability. See In re Cornwall, 230 F.2d 457, 109 USPQ 57 (CCPA 1956); Jones v. Progress Ind., Inc., 163 F. Supp. 824, 119 USPQ 92 (D. R.I. 1958). Further, in a rejection of a claim under 35 U.S.C. 102, mere differences in functional considerations do not negate a finding of anticipation when determining design patentability. See Black & Decker, Inc. v. Pittway Corp., 636 F.2d 1193, 231 USPQ 252 (N.D. Ill. 1986). See also In re Zonenstein, 172 F.2d 599, 80 USPQ 522, 523 (CCPA 1949) (“Patentability of a design cannot be predicated on size or utility.”).

When a claim is rejected under 35 U.S.C. 102 as being unpatentable over prior art, those features of the design which are functional and/or hidden during end use may not be relied upon to support patentability. See In re Cornwall, 230 F.2d 457, 109 USPQ 57 (CCPA 1956); Jones v. Progress Ind., Inc., 163 F. Supp. 824, 119 USPQ 92 (D. R.I. 1958). Further, in a rejection of a claim under 35 U.S.C. 102, mere differences in functional considerations do not negate a finding of anticipation when determining design patentability. See Black & Decker, Inc. v. Pittway Corp., 636 F.2d 1193, 231 USPQ 252 (N.D. Ill. 1986). See also In re Zonenstein, 172 F.2d 599, 80 USPQ 522, 523 (CCPA 1949) (“Patentability of a design cannot be predicated on size or utility.”).

1. This form paragraph should be used when the claimed design in the application being examined is disclosed in the drawings of an earlier-filed design or utility patent. When the design claimed in the application being examined is disclosed in the drawings of an earlier-filed design patent, it would most often be in the form of subcombination subject matter, (part or portion of an article), that is patentably distinct from the claim for the design embodied by the combination or whole article. It may also be unclaimed subject matter depicted in broken lines in the earlier-filed application.

1. This form paragraph should be used when the claimed design in the application being examined is disclosed in the drawings of an earlier-filed design or utility patent. When the design claimed in the application being examined is disclosed in the drawings of an earlier-filed design patent, it would most often be in the form of subcombination subject matter, (part or portion of an article), that is patentably distinct from the claim for the design embodied by the combination or whole article. It may also be unclaimed subject matter depicted in broken lines in the earlier-filed application.

1. This form paragraph should be used when the claimed design in the application being examined is disclosed in the drawings of an earlier-filed design or utility patent but is not claimed therein. When the design claimed in the application being examined is disclosed in the drawings of an earlier-filed design patent, it would most often be in the form of subcombination subject matter, (part or portion of an article), that is patentably distinct from the claim for the design embodied by the combination or whole article. It may also be unclaimed subject matter depicted in broken lines in the earlier-filed application.

1. This form paragraph should be used when the claimed design in the application being examined is disclosed in the drawings of an earlier-filed design or utility patent but is not claimed therein. When the design claimed in the application being examined is disclosed in the drawings of an earlier-filed design patent, it would most often be in the form of subcombination subject matter, (part or portion of an article), that is patentably distinct from the claim for the design embodied by the combination or whole article. It may also be unclaimed subject matter depicted in broken lines in the earlier-filed application.

A person shall be entitled to a patent unless —

• (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
• (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or
• (c) he has abandoned the invention, or
• (d) the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than twelve months before the filing of the application in the United States, or
• (e) the invention was described in — (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; or
• (f) he did not himself invent the subject matter sought to be patented, or
• (g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

It is not necessary for the examiner to cite or apply prior art to show that functional and/or hidden features are old in the art as long as the examiner has properly relied on evidence to support the prima facie lack of ornamentality of these individual features. If applicant wishes to rely on functional or hidden features as a basis for patentability, the same standard for establishing ornamentality under 35 U.S.C. 171 must be applied before these features can be given any patentable weight. See MPEP § 1504.01(c).

The ordinary observer test requires consideration of the design as a whole. See Seaway, 589 F.3d at 1243, 93 USPQ2d at 1008; Egyptian Goddess, 543 F.3d at 677, 88 USPQ2d 1667. In applying the ordinary observer test, “determine whether ‘the deception that arises is a result of the similarities in the overall design not of similarities in ornamental features in isolation.’” See Richardson v. Stanley Works Inc., 597 F.3d 1288, 1295, 93 USPQ2d 1937, 1941 (Fed. Cir. 2010), citing Amini Innovation Corp. v. Anthony California Inc., 439 F.3d 1365, 1371, 78 USPQ2d 1147, 1151 (Fed. Cir. 2006) (holding that the overall infringement test is not to be converted to an element-by-element comparison when factoring out the functional aspects of various design elements). See Apple Inc. v. Samsung Elecs. Co., 786 F.3d 983, 998, 114 USPQ2d 1953, 1962 (Fed. Cir. 2015); Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1333, 115 USPQ2d 1880, 1896 (Fed. Cir. 2015); and Sport Dimension, Inc. v. Coleman Co. Inc., 820 F.3d, 1316, 1320-21, 118 USPQ2d 1607, 1609-10 (Fed. Cir. 2016). “The mandated overall comparison is a comparison taking into account significant differences between the two designs, not minor or trivial differences that necessarily exist between any two designs that are not exact copies of one another.” Seaway, 589 F.3d at 1243, 93 USPQ2d at 1008. “Just as minor differences between a patented design and an accused article's design cannot, and shall not, prevent a finding of infringement, so too minor differences cannot prevent a finding of anticipation.” Id. (internal quotation marks omitted).

1. This form paragraph is used to provisionally reject over a copending application (utility or design) that discloses the claimed invention and would constitute prior art under 35 U.S.C. 102(a)(2) if patented or published under 35 U.S.C. 122. The copending application must have either a common assignee or at least one common inventor.

1. This form paragraph is used to provisionally reject over a copending application (utility or design) that discloses the claimed invention and would constitute prior art under 35 U.S.C. 102(a)(2) if patented or published under 35 U.S.C. 122. The copending application must have either a common assignee or at least one common inventor.

It is not necessary for the examiner to cite or apply prior art to show that functional and/or hidden features are old in the art as long as the examiner has properly relied on evidence to support the prima facie lack of ornamentality of these individual features. If applicant wishes to rely on functional or hidden features as a basis for patentability, the same standard for establishing ornamentality under 35 U.S.C. 171 must be applied before these features can be given any patentable weight. See MPEP § 1504.01(c).

Registration of a design abroad is considered to be equivalent to patenting for priority purposes under 35 U.S.C. 119(a) – (d) and for prior art purposes pre-AIA 35 U.S.C. 102(d), whether or not the foreign grant is published. (See Ex parte Lancaster, 151 USPQ 713 (Bd. App. 1965); Ex parte Marinissen, 155 USPQ 528 (Bd. App. 1966); Appeal No. 239-48, Decided April 30, 1965, 151 USPQ 711, (Bd. App. 1965); Ex parte Appeal decided September 3, 1968, 866 O.G. 16 (Bd. App. 1966). The basis of this practice is that if the foreign applicant has received the protection offered in the foreign country, no matter what the protection is called (“patent,” “Design Registration,” etc.), if the United States application is timely filed, a claim for priority will vest. If, on the other hand, the U.S. application is not timely filed, a statutory bar arises under pre-AIA 35 U.S.C. 102(d) as modified by 35 U.S.C. 172. In order for the filing to be timely for priority purposes and to avoid possible statutory bars, the U.S. design patent application must be made within 6 months of the foreign filing. See also MPEP § 1504.10.

2. This form paragraph must be preceded by form paragraph 15.24.05.fti to notify the applicant that the question of patentability under pre-AIA 35 U.S.C. 102(f) / (g) also exists.

Rejections under pre-AIA 35 U.S.C. 102(d) as modified by 35 U.S.C. 172 should only be made when the examiner knows that the application for foreign registration/patent has actually issued before the U.S. filing date based on an application filed more than six (6) months prior to filing the application in the United States. If the grant of a registration/patent based on the foreign application is not evident from the record of the U.S. application or from information found within the preceding charts, then the statement below should be included in the first action on the merits of the application:

Rejections under pre-AIA 35 U.S.C. 102(d) as modified by 35 U.S.C. 172 should only be made when the examiner knows that the application for foreign registration/patent has actually issued before the U.S. filing date based on an application filed more than six (6) months prior to filing the application in the United States. If the grant of a registration/patent based on the foreign application is not evident from the record of the U.S. application or from information found within the preceding charts, then the statement below should be included in the first action on the merits of the application:

The following form paragraphs may be used to reject a claim under pre-AIA 35 U.S.C. 102(e) over an application or patent having an earlier prior art date with a common inventor and/or assignee, or that discloses but does not claim the design.

(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—
…
(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

A person shall be entitled to a patent unless —
…
(g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it.

(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—

• (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
• (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

(b) EXCEPTIONS.—
(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.—A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—
…
(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.

A claimed design may be rejected under 35 U.S.C. 102 when the invention is anticipated (or is “not novel”) over a disclosure that is available as prior art. In design patent applications, the factual inquiry in determining anticipation over a prior art reference is the same as in utility patent applications. That is, the reference “‘must be identical in all material respects.’” Hupp v. Siroflex of America Inc., 122 F.3d 1456, 43 USPQ2d 1887 (Fed. Cir. 1997). For anticipation to be found, the claimed design and the prior art design must be substantially the same. Door-Master Corp. v. Yorktowne, Inc., 256 F.3d 1308, 1313, 59 USPQ2d 1472, 1475 (Fed. Cir. 2001) (citing Gorham Mfg. Co. v. White, 81 U.S. 511, 528 (1871)).

Registration of a design abroad is considered to be equivalent to patenting for priority purposes under 35 U.S.C. 119(a) – (d) and for prior art purposes pre-AIA 35 U.S.C. 102(d), whether or not the foreign grant is published. (See Ex parte Lancaster, 151 USPQ 713 (Bd. App. 1965); Ex parte Marinissen, 155 USPQ 528 (Bd. App. 1966); Appeal No. 239-48, Decided April 30, 1965, 151 USPQ 711, (Bd. App. 1965); Ex parte Appeal decided September 3, 1968, 866 O.G. 16 (Bd. App. 1966). The basis of this practice is that if the foreign applicant has received the protection offered in the foreign country, no matter what the protection is called (“patent,” “Design Registration,” etc.), if the United States application is timely filed, a claim for priority will vest. If, on the other hand, the U.S. application is not timely filed, a statutory bar arises under pre-AIA 35 U.S.C. 102(d) as modified by 35 U.S.C. 172. In order for the filing to be timely for priority purposes and to avoid possible statutory bars, the U.S. design patent application must be made within 6 months of the foreign filing. See also MPEP § 1504.10.

“A design claim is limited to the article of manufacture identified in the claim; it does not broadly cover a design in the abstract.” In re SurgiSil, L.L.P., 14 F.4th 1380, 1382, 2021 USPQ2d 1008 (Fed. Cir. 2021). See also MPEP § 1502. In SurgiSil, the Federal Circuit reversed an anticipation rejection of a lip implant over an art tool because it determined that the Board's anticipation finding “rests on an erroneous interpretation of the claim's scope.” Id. The court reasoned that where “[t]he claim language recites ‘a lip implant,’” and “the application’s figure depicts a lip implant, … the claim is limited to lip implants and does not cover other articles of manufacture.” Id.

“A design claim is limited to the article of manufacture identified in the claim; it does not broadly cover a design in the abstract.” In re SurgiSil, L.L.P., 14 F.4th 1380, 1382, 2021 USPQ2d 1008 (Fed. Cir. 2021). See also MPEP § 1502. In SurgiSil, the Federal Circuit reversed an anticipation rejection of a lip implant over an art tool because it determined that the Board's anticipation finding “rests on an erroneous interpretation of the claim's scope.” Id. The court reasoned that where “[t]he claim language recites ‘a lip implant,’” and “the application’s figure depicts a lip implant, … the claim is limited to lip implants and does not cover other articles of manufacture.” Id.

In evaluating a statutory bar based on pre-AIA 35 U.S.C. 102(b), the experimental use exception to a statutory bar for public use or sale (see MPEP § 2133.03(e)) does not usually apply for design patents. See In re Mann, 861 F.2d 1581, 8 USPQ2d 2030 (Fed. Cir. 1988). However, Tone Brothers, Inc. v. Sysco Corp., 28 F.3d 1192, 1200, 31 USPQ2d 1321, 1326 (Fed. Cir. 1994) held that “experimentation directed to functional features of a product also containing an ornamental design may negate what otherwise would be considered a public use within the meaning of section 102(b).” See MPEP § 2133.03(e)(6).

In evaluating a statutory bar based on pre-AIA 35 U.S.C. 102(b), the experimental use exception to a statutory bar for public use or sale (see MPEP § 2133.03(e)) does not usually apply for design patents. See In re Mann, 861 F.2d 1581, 8 USPQ2d 2030 (Fed. Cir. 1988). However, Tone Brothers, Inc. v. Sysco Corp., 28 F.3d 1192, 1200, 31 USPQ2d 1321, 1326 (Fed. Cir. 1994) held that “experimentation directed to functional features of a product also containing an ornamental design may negate what otherwise would be considered a public use within the meaning of section 102(b).” See MPEP § 2133.03(e)(6).

The following table sets forth the dates on which design rights can be enforced in a foreign country (INID Code (24)) and thus, are also useable in a pre-AIA 35 U.S.C. 102(d) rejection as modified by 35 U.S.C. 172. It should be noted that in many countries the date of registration or grant is the filing date.

Form paragraphs for use in rejections under 35 U.S.C. 102 and pre-AIA 35 U.S.C. 102 are set forth below.

1. This form paragraph is used to provisionally reject over a copending application (utility or design) that discloses (but does not claim) the claimed invention and would constitute prior art under pre-AIA 35 U.S.C. 102(e) if patented or published under 35 U.S.C. 122. The copending application must have either a common assignee or at least one common inventor.

1. This form paragraph is used to provisionally reject over a copending application (utility or design) that discloses (but does not claim) the claimed invention and would constitute prior art under pre-AIA 35 U.S.C. 102(e) if patented or published under 35 U.S.C. 122. The copending application must have either a common assignee or at least one common inventor.

2. Use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventor’s Protection Act (AIPA) (form paragraph 7.12.fti) to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. Use pre-AIPA 35 U.S.C. 102(e) (form paragraph 7.12.01.fti) only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000, or a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s pre-AIA or pre-AIPA 35 U.S.C. 102(e) date.

2. Use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventor’s Protection Act (AIPA) (form paragraph 7.12.fti) to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. Use pre-AIPA 35 U.S.C. 102(e) (form paragraph 7.12.01.fti) only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000, or a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s pre-AIA or pre-AIPA 35 U.S.C. 102(e) date.

(c) COMMON OWNERSHIP UNDER JOINT RESEARCH AGREEMENTS.—Subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(C) if—

• (1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;
• (2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
• (3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

(c) COMMON OWNERSHIP UNDER JOINT RESEARCH AGREEMENTS.—Subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(C) if—
…
(3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

(d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS PRIOR ART.—For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application—

• (1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or
• (2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), or 365(b) or to claim the benefit of an earlier filing date under section 120, 121, or 365(c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.

(d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS PRIOR ART.—For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application—
…
(2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), or 365(b) or to claim the benefit of an earlier filing date under section 120, 121, or 365(c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.

A claimed design may be rejected under 35 U.S.C. 102 when the invention is anticipated (or is “not novel”) over a disclosure that is available as prior art. In design patent applications, the factual inquiry in determining anticipation over a prior art reference is the same as in utility patent applications. That is, the reference “‘must be identical in all material respects.’” Hupp v. Siroflex of America Inc., 122 F.3d 1456, 43 USPQ2d 1887 (Fed. Cir. 1997). For anticipation to be found, the claimed design and the prior art design must be substantially the same. Door-Master Corp. v. Yorktowne, Inc., 256 F.3d 1308, 1313, 59 USPQ2d 1472, 1475 (Fed. Cir. 2001) (citing Gorham Mfg. Co. v. White, 81 U.S. 511, 528 (1871)).

“A design claim is limited to the article of manufacture identified in the claim; it does not broadly cover a design in the abstract.” In re SurgiSil, L.L.P., 14 F.4th 1380, 1382, 2021 USPQ2d 1008 (Fed. Cir. 2021). See also MPEP § 1502. In SurgiSil, the Federal Circuit reversed an anticipation rejection of a lip implant over an art tool because it determined that the Board's anticipation finding “rests on an erroneous interpretation of the claim's scope.” Id. The court reasoned that where “[t]he claim language recites ‘a lip implant,’” and “the application’s figure depicts a lip implant, … the claim is limited to lip implants and does not cover other articles of manufacture.” Id.

Registration of a design abroad is considered to be equivalent to patenting for priority purposes under 35 U.S.C. 119(a) – (d) and for prior art purposes pre-AIA 35 U.S.C. 102(d), whether or not the foreign grant is published. (See Ex parte Lancaster, 151 USPQ 713 (Bd. App. 1965); Ex parte Marinissen, 155 USPQ 528 (Bd. App. 1966); Appeal No. 239-48, Decided April 30, 1965, 151 USPQ 711, (Bd. App. 1965); Ex parte Appeal decided September 3, 1968, 866 O.G. 16 (Bd. App. 1966). The basis of this practice is that if the foreign applicant has received the protection offered in the foreign country, no matter what the protection is called (“patent,” “Design Registration,” etc.), if the United States application is timely filed, a claim for priority will vest. If, on the other hand, the U.S. application is not timely filed, a statutory bar arises under pre-AIA 35 U.S.C. 102(d) as modified by 35 U.S.C. 172. In order for the filing to be timely for priority purposes and to avoid possible statutory bars, the U.S. design patent application must be made within 6 months of the foreign filing. See also MPEP § 1504.10.

2. This form paragraph should only be used ONCE in an Office action.

1. This form paragraph is to be used ONLY when a rejection under 35 U.S.C. 171 on another basis has been made and the statutory text thereof is already present.

2. Use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventor’s Protection Act (AIPA) (form paragraph 7.12.fti) to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. Use pre-AIPA 35 U.S.C. 102(e) (form paragraph 7.12.01.fti) only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000, or a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s pre-AIA or pre-AIPA 35 U.S.C. 102(e) date.