What is the significance of “reasonably conveyed” in prior art analysis?
What is the significance of “reasonably conveyed” in prior art analysis? The concept of “reasonably conveyed” is crucial in prior art analysis for patent examinations. According to MPEP 2136.02: “Subject matter that is prior art under 35 U.S.C. 102(a)(2) based on an earlier effective filing date than the application under examination is available as prior…
Read MoreWhat is the scope of prior art available under pre-AIA 35 U.S.C. 102(e)?
Under pre-AIA 35 U.S.C. 102(e), the entire disclosure of certain U.S. patents, patent application publications, or international application publications can be used as prior art against patent claims. As stated in the MPEP: “Under pre-AIA 35 U.S.C. 102(e), the entire disclosure of a U.S. patent, a U.S. patent application publication, or an international application publication…
Read MoreHow can provisional applications be used as prior art under pre-AIA 35 U.S.C. 102(e)?
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…
Read MoreHow does a prior art reference’s content affect its use in rejections under 35 U.S.C. 102(a)(2)?
How does a prior art reference’s content affect its use in rejections under 35 U.S.C. 102(a)(2)? The content of a prior art reference can significantly impact its use in rejections under 35 U.S.C. 102(a)(2). According to MPEP 2136.02: “Subject matter that is prior art under 35 U.S.C. 102(a)(2) based on an earlier effective filing date…
Read MoreCan a prior art reference be used for both anticipation and obviousness rejections?
Can a prior art reference be used for both anticipation and obviousness rejections? Yes, a single prior art reference can be used for both anticipation (35 U.S.C. 102) and obviousness (35 U.S.C. 103) rejections. The MPEP 2136.02 states: “A rejection under 35 U.S.C. 102 and 103 can be made when the prior art product seems…
Read MoreCan pre-AIA 35 U.S.C. 102(e) references be used in obviousness rejections under 35 U.S.C. 103?
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…
Read MoreCan subject matter from a parent application be used as prior art against a continuation-in-part (CIP) under pre-AIA 35 U.S.C. 102(e)?
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…
Read MoreHow does the effective filing date affect prior art under pre-AIA 35 U.S.C. 102(e)?
The effective filing date is crucial in determining what can be used as prior art under pre-AIA 35 U.S.C. 102(e). The MPEP explains: “It is the earliest effective U.S. filing date (which will include certain international filing dates) of the U.S. patent or application publication being relied on as the critical reference date and subject…
Read MoreCan canceled portions of a patent application be used as prior art under pre-AIA 35 U.S.C. 102(e)?
No, canceled portions of a patent application cannot be used as prior art under pre-AIA 35 U.S.C. 102(e). The MPEP clearly states: “Portions of the patent application which were canceled are not part of the patent or application publication and thus cannot be relied on in a pre-AIA 35 U.S.C. 102(e) rejection over the issued…
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