Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 2100 – Patentability (2)
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:
A continuation-in-part (CIP) application with an additional inventor can still be considered “by another” under pre-AIA 35 U.S.C. 102(e). The MPEP provides an example in MPEP 2136.04:
“Ex parte DesOrmeaux, 25 USPQ2d 2040 (Bd. Pat. App. & Inter. 1992) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection based on an issued U.S. patent to three inventors. The rejected application was a continuation-in-part of the issued parent with an extra inventor. The Board found that the patent was ‘by another’ and thus could be used in a pre-AIA 35 U.S.C. 102(e) / 103 rejection of the application.).”
This means that even if a CIP application shares inventors with its parent patent, the addition of a new inventor makes the inventive entities different, allowing the parent patent to be used as prior art against the CIP under pre-AIA 35 U.S.C. 102(e).
To learn more:
MPEP 2136.02 – Content Of The Prior Art Available Against The Claims (1)
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:
MPEP 2136.04 – Different Inventive Entity; Meaning Of "By Another" (1)
A continuation-in-part (CIP) application with an additional inventor can still be considered “by another” under pre-AIA 35 U.S.C. 102(e). The MPEP provides an example in MPEP 2136.04:
“Ex parte DesOrmeaux, 25 USPQ2d 2040 (Bd. Pat. App. & Inter. 1992) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection based on an issued U.S. patent to three inventors. The rejected application was a continuation-in-part of the issued parent with an extra inventor. The Board found that the patent was ‘by another’ and thus could be used in a pre-AIA 35 U.S.C. 102(e) / 103 rejection of the application.).”
This means that even if a CIP application shares inventors with its parent patent, the addition of a new inventor makes the inventive entities different, allowing the parent patent to be used as prior art against the CIP under pre-AIA 35 U.S.C. 102(e).
To learn more:
Patent Law (2)
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:
A continuation-in-part (CIP) application with an additional inventor can still be considered “by another” under pre-AIA 35 U.S.C. 102(e). The MPEP provides an example in MPEP 2136.04:
“Ex parte DesOrmeaux, 25 USPQ2d 2040 (Bd. Pat. App. & Inter. 1992) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection based on an issued U.S. patent to three inventors. The rejected application was a continuation-in-part of the issued parent with an extra inventor. The Board found that the patent was ‘by another’ and thus could be used in a pre-AIA 35 U.S.C. 102(e) / 103 rejection of the application.).”
This means that even if a CIP application shares inventors with its parent patent, the addition of a new inventor makes the inventive entities different, allowing the parent patent to be used as prior art against the CIP under pre-AIA 35 U.S.C. 102(e).
To learn more:
Patent Procedure (2)
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:
A continuation-in-part (CIP) application with an additional inventor can still be considered “by another” under pre-AIA 35 U.S.C. 102(e). The MPEP provides an example in MPEP 2136.04:
“Ex parte DesOrmeaux, 25 USPQ2d 2040 (Bd. Pat. App. & Inter. 1992) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection based on an issued U.S. patent to three inventors. The rejected application was a continuation-in-part of the issued parent with an extra inventor. The Board found that the patent was ‘by another’ and thus could be used in a pre-AIA 35 U.S.C. 102(e) / 103 rejection of the application.).”
This means that even if a CIP application shares inventors with its parent patent, the addition of a new inventor makes the inventive entities different, allowing the parent patent to be used as prior art against the CIP under pre-AIA 35 U.S.C. 102(e).
To learn more: