Can these methods also be used to overcome a 35 U.S.C. 103 rejection?
Yes, the methods used to overcome a 35 U.S.C. 102(a)(1) or 102(a)(2) rejection can also be used to overcome a 35 U.S.C. 103 rejection that is based on 35 U.S.C. 102(a)(1) or 102(a)(2) prior art. MPEP 2152.06 explicitly states: “Note that all of the ways of overcoming a 35 U.S.C. 102(a)(1) or 102(a)(2) rejection mentioned…
Read MoreWhat types of U.S. patent documents are considered prior art under AIA 35 U.S.C. 102(a)(2)?
Under AIA 35 U.S.C. 102(a)(2), three types of U.S. patent documents are considered prior art as of their effective filing date if they name another inventor: U.S. patents U.S. patent application publications World Intellectual Property Organization (WIPO) publications of international applications that designate the United States As stated in the MPEP: “AIA 35 U.S.C. 102(a)(2)…
Read MoreCan a U.S. patent document with common inventors still qualify as prior art?
Yes, a U.S. patent document can still qualify as prior art under AIA 35 U.S.C. 102(a)(2) even if it has common inventors with the application under examination or patent under reexamination. MPEP 2154.01(c) states: “Even if there are one or more joint inventors in common in a U.S. patent document and the later-filed application under…
Read MoreWhat is a provisional rejection under 35 U.S.C. 102(a)(2)?
A provisional rejection under 35 U.S.C. 102(a)(2) is a type of patent rejection that can be made when there are copending U.S. patent applications with overlapping subject matter. According to MPEP 2154.01(d): “If an earlier filed, copending, and unpublished U.S. patent application discloses subject matter which would anticipate the claims in a later filed pending…
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 MoreHow can a provisional rejection under 35 U.S.C. 102(a)(2) be overcome?
A provisional rejection under 35 U.S.C. 102(a)(2) can be overcome in several ways. According to MPEP 2154.01(d): “A provisional rejection based on 35 U.S.C. 102(a)(2) prior art can be overcome in the same manner that a 35 U.S.C. 102(a)(2) rejection can be overcome. See MPEP § 2152.06. The provisional rejection can also be overcome by…
Read MoreWhat does “names another inventor” mean in AIA 35 U.S.C. 102(a)(2)?
The phrase “names another inventor” in AIA 35 U.S.C. 102(a)(2) refers to the requirement that for a U.S. patent document to qualify as prior art, there must be a difference in inventive entity between the prior art document and the application under examination or patent under reexamination. As stated in MPEP 2154.01(c): “This means that…
Read MoreHow does joint inventorship affect the “names another inventor” requirement?
In cases of joint inventorship, the “names another inventor” requirement under AIA 35 U.S.C. 102(a)(2) is satisfied even if only one joint inventor is different between the prior art document and the application under examination. MPEP 2154.01(c) clarifies: “Thus, in the case of joint inventors, only one joint inventor needs to be different for the…
Read MoreAre there any exceptions to the “names another inventor” requirement in AIA 35 U.S.C. 102(a)(2)?
While the “names another inventor” requirement is a key aspect of AIA 35 U.S.C. 102(a)(2), there are exceptions that may prevent a U.S. patent document from being used as prior art even if it names another inventor. MPEP 2154.01(c) mentions: “Even if there are one or more joint inventors in common in a U.S. patent…
Read MoreHow should examiners handle claims in a petitioner’s application during a derivation proceeding?
According to MPEP 2311, examiners should handle claims in a petitioner’s application during a derivation proceeding as follows: “The claims in petitioner’s application that are patentably indistinct from respondent’s application or patent should be subject to a rejection under 35 U.S.C. 102(a)(2) which should be maintained until jurisdiction is transferred to the Board to conduct…
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