How does a continuation-in-part application affect the “by another” determination under pre-AIA 35 U.S.C. 102(e)?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

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).