How does pre-AIA 35 U.S.C. 102(g) interact with pre-AIA 35 U.S.C. 103?
Pre-AIA 35 U.S.C. 102(g) can interact with pre-AIA 35 U.S.C. 103 in patent examinations. The MPEP states:
In addition, subject matter qualifying as prior art only under pre-AIA 35 U.S.C. 102(g) may also be the basis for an ex parte rejection under pre-AIA 35 U.S.C. 103.
This means that an invention that qualifies as prior art under pre-AIA 35 U.S.C. 102(g) can be used not only to reject a claim for lack of novelty but also as a basis for an obviousness rejection under pre-AIA 35 U.S.C. 103.
However, there’s an important exception to this rule, as noted in the MPEP:
Pre-AIA 35 U.S.C. 103(c), however, states that subsection (g) 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(g), 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 exception is important for patent applicants and examiners to consider, especially in cases involving related inventions or collaborative research efforts. For more information on this exception, refer to MPEP § 2146.
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