Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 2100 – Patentability (3)
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 35 U.S.C. 102(e) rejection over an issued U.S. patent which was a continuation-in-part (CIP). The parent application of the U.S. patent reference contained an example II which was not carried over to the CIP. The court held that the subject matter embodied in the canceled example II could not be relied on as of either parent or child filing date. Thus, the use of example II subject matter to reject the claims under pre-AIA 35 U.S.C. 102(e) was improper.).”
This means that only the content actually present in the CIP can be used as prior art under 102(e), not additional content from the parent application that wasn’t carried over.
To learn more:
Provisional applications can be used as prior art under pre-AIA 35 U.S.C. 102(e), but there are specific requirements. The MPEP states:
“Where a U.S. patent claims benefit to a provisional application, at least one claim of the patent must be supported by the disclosure of the relied upon provisional application in compliance with pre-AIA 35 U.S.C. 112, first paragraph, in order for the patent to be usable as prior art under pre-AIA 35 U.S.C. 102(e) as of the relied upon provisional application’s filing date.”
This means that for a provisional application’s filing date to be used as the effective date for prior art purposes:
- The later-filed patent must claim benefit to the provisional application
- At least one claim in the patent must be fully supported by the provisional application’s disclosure
- The support must meet the requirements of pre-AIA 35 U.S.C. 112, first paragraph
If these conditions are met, the provisional application’s filing date can be used as the effective date for prior art purposes under pre-AIA 35 U.S.C. 102(e).
To learn more:
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 a 35 U.S.C. 103 rejection. Hazeltine Research v. Brenner, 382 U.S. 252, 147 USPQ 429 (1965).”
This means that examiners can use U.S. patents, certain U.S. application publications, and certain international application publications as of their earliest effective U.S. filing dates not only for anticipation rejections under 102(e) but also as part of obviousness rejections under 103. These references can be combined with other prior art to demonstrate that the claimed invention would have been obvious to a person of ordinary skill in the art.
To learn more:
MPEP 2136.02 – Content Of The Prior Art Available Against The Claims (3)
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 35 U.S.C. 102(e) rejection over an issued U.S. patent which was a continuation-in-part (CIP). The parent application of the U.S. patent reference contained an example II which was not carried over to the CIP. The court held that the subject matter embodied in the canceled example II could not be relied on as of either parent or child filing date. Thus, the use of example II subject matter to reject the claims under pre-AIA 35 U.S.C. 102(e) was improper.).”
This means that only the content actually present in the CIP can be used as prior art under 102(e), not additional content from the parent application that wasn’t carried over.
To learn more:
Provisional applications can be used as prior art under pre-AIA 35 U.S.C. 102(e), but there are specific requirements. The MPEP states:
“Where a U.S. patent claims benefit to a provisional application, at least one claim of the patent must be supported by the disclosure of the relied upon provisional application in compliance with pre-AIA 35 U.S.C. 112, first paragraph, in order for the patent to be usable as prior art under pre-AIA 35 U.S.C. 102(e) as of the relied upon provisional application’s filing date.”
This means that for a provisional application’s filing date to be used as the effective date for prior art purposes:
- The later-filed patent must claim benefit to the provisional application
- At least one claim in the patent must be fully supported by the provisional application’s disclosure
- The support must meet the requirements of pre-AIA 35 U.S.C. 112, first paragraph
If these conditions are met, the provisional application’s filing date can be used as the effective date for prior art purposes under pre-AIA 35 U.S.C. 102(e).
To learn more:
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 a 35 U.S.C. 103 rejection. Hazeltine Research v. Brenner, 382 U.S. 252, 147 USPQ 429 (1965).”
This means that examiners can use U.S. patents, certain U.S. application publications, and certain international application publications as of their earliest effective U.S. filing dates not only for anticipation rejections under 102(e) but also as part of obviousness rejections under 103. These references can be combined with other prior art to demonstrate that the claimed invention would have been obvious to a person of ordinary skill in the art.
To learn more:
Patent Law (3)
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 35 U.S.C. 102(e) rejection over an issued U.S. patent which was a continuation-in-part (CIP). The parent application of the U.S. patent reference contained an example II which was not carried over to the CIP. The court held that the subject matter embodied in the canceled example II could not be relied on as of either parent or child filing date. Thus, the use of example II subject matter to reject the claims under pre-AIA 35 U.S.C. 102(e) was improper.).”
This means that only the content actually present in the CIP can be used as prior art under 102(e), not additional content from the parent application that wasn’t carried over.
To learn more:
Provisional applications can be used as prior art under pre-AIA 35 U.S.C. 102(e), but there are specific requirements. The MPEP states:
“Where a U.S. patent claims benefit to a provisional application, at least one claim of the patent must be supported by the disclosure of the relied upon provisional application in compliance with pre-AIA 35 U.S.C. 112, first paragraph, in order for the patent to be usable as prior art under pre-AIA 35 U.S.C. 102(e) as of the relied upon provisional application’s filing date.”
This means that for a provisional application’s filing date to be used as the effective date for prior art purposes:
- The later-filed patent must claim benefit to the provisional application
- At least one claim in the patent must be fully supported by the provisional application’s disclosure
- The support must meet the requirements of pre-AIA 35 U.S.C. 112, first paragraph
If these conditions are met, the provisional application’s filing date can be used as the effective date for prior art purposes under pre-AIA 35 U.S.C. 102(e).
To learn more:
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 a 35 U.S.C. 103 rejection. Hazeltine Research v. Brenner, 382 U.S. 252, 147 USPQ 429 (1965).”
This means that examiners can use U.S. patents, certain U.S. application publications, and certain international application publications as of their earliest effective U.S. filing dates not only for anticipation rejections under 102(e) but also as part of obviousness rejections under 103. These references can be combined with other prior art to demonstrate that the claimed invention would have been obvious to a person of ordinary skill in the art.
To learn more:
Patent Procedure (3)
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 35 U.S.C. 102(e) rejection over an issued U.S. patent which was a continuation-in-part (CIP). The parent application of the U.S. patent reference contained an example II which was not carried over to the CIP. The court held that the subject matter embodied in the canceled example II could not be relied on as of either parent or child filing date. Thus, the use of example II subject matter to reject the claims under pre-AIA 35 U.S.C. 102(e) was improper.).”
This means that only the content actually present in the CIP can be used as prior art under 102(e), not additional content from the parent application that wasn’t carried over.
To learn more:
Provisional applications can be used as prior art under pre-AIA 35 U.S.C. 102(e), but there are specific requirements. The MPEP states:
“Where a U.S. patent claims benefit to a provisional application, at least one claim of the patent must be supported by the disclosure of the relied upon provisional application in compliance with pre-AIA 35 U.S.C. 112, first paragraph, in order for the patent to be usable as prior art under pre-AIA 35 U.S.C. 102(e) as of the relied upon provisional application’s filing date.”
This means that for a provisional application’s filing date to be used as the effective date for prior art purposes:
- The later-filed patent must claim benefit to the provisional application
- At least one claim in the patent must be fully supported by the provisional application’s disclosure
- The support must meet the requirements of pre-AIA 35 U.S.C. 112, first paragraph
If these conditions are met, the provisional application’s filing date can be used as the effective date for prior art purposes under pre-AIA 35 U.S.C. 102(e).
To learn more:
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 a 35 U.S.C. 103 rejection. Hazeltine Research v. Brenner, 382 U.S. 252, 147 USPQ 429 (1965).”
This means that examiners can use U.S. patents, certain U.S. application publications, and certain international application publications as of their earliest effective U.S. filing dates not only for anticipation rejections under 102(e) but also as part of obviousness rejections under 103. These references can be combined with other prior art to demonstrate that the claimed invention would have been obvious to a person of ordinary skill in the art.
To learn more: