How is “substantially the same subject matter” determined for pre-AIA 35 U.S.C. 135(b)?
Determining “substantially the same subject matter” for pre-AIA 35 U.S.C. 135(b) is crucial for interference proceedings. The MPEP provides guidance on this determination:
“The obviousness test is not the standard for determining whether the subject matter is the same or substantially the same. Rather the determination turns on the presence or absence of a different material limitation in the claim. These tests are distinctly different. The analysis focuses on the interfering claim to determine whether all material limitations of the interfering claim necessarily occur in a prior claim.”
This means that examiners and the Board look for material differences between the claims, rather than applying an obviousness standard. If all material limitations of the interfering claim are present in a prior claim, they may be considered “substantially the same subject matter.”
The MPEP cites In re Berger, 279 F.3d 975, 61 USPQ2d 1523 (Fed. Cir. 2002) as a key case for this interpretation.
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