How does pre-AIA 35 U.S.C. 102(f) interact with pre-AIA 35 U.S.C. 103?
Pre-AIA 35 U.S.C. 102(f) can interact with pre-AIA 35 U.S.C. 103 in certain situations. The MPEP explains that subject matter qualifying as prior art only under pre-AIA 35 U.S.C. 102(f) can be used as a basis for an ex parte rejection under pre-AIA 35 U.S.C. 103.
However, there’s an important exception to this rule. The MPEP states: pre-AIA 35 U.S.C. 103(c) states that subsection (f) of pre-AIA 35 U.S.C. 102 will not preclude patentability where subject matter developed by another person, that would otherwise qualify under pre-AIA 35 U.S.C. 102(f), and the claimed invention of an application under examination were owned by the same person, subject to an obligation of assignment to the same person, or involved in a joint research agreement, which meets the requirements of pre-AIA 35 U.S.C. 103(c)(2) and (c)(3), at the time the invention was made.
This means that in certain cases involving common ownership or joint research agreements, 102(f) subject matter may not be used in a 103 rejection. For more details on this exception, refer to MPEP § 2146.
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