How are rejections under both pre-AIA 35 U.S.C. 102 and 103 formulated?
In certain situations, an examiner may need to make a rejection under both pre-AIA 35 U.S.C. 102 and 103. Form paragraph 7.27.fti is provided for this purpose: Claim(s) [1] is/are rejected under pre-AIA 35 U.S.C. 102 ([2]) as anticipated by or, in the alternative, under pre-AIA 35 U.S.C. 103(a) as obvious over [3]. However, the…
Read MoreHow does the MPEP address pre-AIA 35 U.S.C. 102 with respect to foreign patent dates?
The MPEP provides guidance on cases that discuss the date of patenting for foreign patents in the context of pre-AIA 35 U.S.C. 102. Specifically, MPEP 2126.01 states: “For a list of cases that discuss the date of patenting countries for purposes of pre-AIA 35 U.S.C. 102 in particular, see Chisum, Patents ยง 3.06[4] n.2.” (MPEP…
Read MoreCan applications filed after March 16, 2013 ever be subject to pre-AIA 35 U.S.C. 102?
Yes, certain applications filed on or after March 16, 2013, can be subject to pre-AIA 35 U.S.C. 102. The MPEP states: Certain applications filed on or after March 16, 2013 that claim the benefit of a filing date earlier than March 16, 2013 under 35 U.S.C. 120, 121, or 365 are also governed by pre-AIA…
Read MoreWhat is the significance of the publication date for a U.S. patent document in prior art rejections?
The publication date of a U.S. patent document is crucial for determining its eligibility as prior art in patent rejections. According to MPEP 2126: “The date that the patent is made available to the public is the date it is available as a 35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(a) and (b) reference.” This…
Read MoreCan the filing date of a foreign priority document be used as the effective filing date under pre-AIA 35 U.S.C. 102?
No, the filing date of a foreign priority document cannot be used as the effective filing date under pre-AIA 35 U.S.C. 102. However, it can be used to overcome certain references. The MPEP states: “The effective filing date for claims subject to pre-AIA 35 U.S.C. 102 is not the filing date of the foreign priority…
Read MoreWhat is the role of an examiner in reviewing a suggestion of interference?
An examiner’s role in reviewing a suggestion of interference is primarily focused on specific circumstances, particularly when dealing with rejections under pre-AIA 35 U.S.C. 102(a) or 102(e). The MPEP states: “If an application claim is subject to a rejection under pre-AIA 35 U.S.C. 102(a) or 102(e) and the applicant files a suggestion under 37 CFR…
Read MoreHow does the effective filing date affect the application of pre-AIA 35 U.S.C. 102?
The effective filing date of a claimed invention is crucial in determining whether to apply pre-AIA 35 U.S.C. 102. MPEP 2139.02 states: “If the application is subject to pre-AIA 35 U.S.C. 102, examiners should continue to apply 35 U.S.C. 102(a), (b), or (e) in the alternative, indicating that either pre-AIA 35 U.S.C. 102(a), (b), or…
Read MoreWhat are the key differences between pre-AIA 35 U.S.C. 102(a), (b), and (e)?
Pre-AIA 35 U.S.C. 102 subsections (a), (b), and (e) each define different types of prior art. According to MPEP 2139.02: 35 U.S.C. 102(a) covers knowledge or use by others in the U.S., or patents or printed publications anywhere, before the invention by the applicant. 35 U.S.C. 102(b) relates to public use or sale in the…
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