How 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 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).

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Topics: MPEP 2100 - Patentability, MPEP 2136.04 - Different Inventive Entity; Meaning Of "By Another", Patent Law, Patent Procedure
Tags: By Another, Cip, continuation-in-part, Inventive Entity, Pre-Aia 35 U.S.C. 102(E)