What is prima facie evidence of “by another” in pre-AIA 35 U.S.C. 102(e) rejections?
A different inventive entity is considered prima facie evidence that a reference is “by another” for pre-AIA 35 U.S.C. 102(e) rejections. The MPEP states in MPEP 2136.04: “Therefore, a U.S. patent, a U.S. patent application publication or international application publication, by a different inventive entity, whether or not the application shares some inventors in common…
Read MoreHow does a continuation-in-part application affect the “by another” determination under pre-AIA 35 U.S.C. 102(e)?
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…
Read MoreWhat does “by another” mean in the context of pre-AIA 35 U.S.C. 102(e)?
In the context of pre-AIA 35 U.S.C. 102(e), “by another” means a different inventive entity. The MPEP clarifies this in MPEP 2136.04: “‘Another’ means other than applicants, In re Land, 368 F.2d 866, 151 USPQ 621 (CCPA 1966), in other words, a different inventive entity. The inventive entity is different if not all inventors are…
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