What is the significance of “intervening references” in CIP application rejections?

Question

Accepted Answer

Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-29 10 Rules 5 Related FAQs 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. “Intervening references” are particularly important in the examination of Continuation-In-Part (CIP) applications. The MPEP 2133.01 states: “[T]he examiner must consider if any reference that would qualify as prior art under pre-AIA 35 U.S.C. 102(e) as of the filing date of the CIP application would also qualify as prior art under pre-AIA 35 U.S.C. 102(b) as of the publication date of the international application.” This means: Intervening references are prior art that fall between the parent application’s filing date and the CIP’s filing date. These references can be used to reject claims in the CIP that are not fully supported by the parent application. Examiners must carefully consider the publication dates of potential prior art in relation to both the parent and CIP filing dates. Understanding intervening references is crucial for both examiners and applicants in determining the patentability of CIP claims. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Claims Must Be Fully Supported by Parent Application MPEP 2133.01 Requirement for Novelty Under Pre-AIA 35 U.S.C. 102(b) MPEP 2133 Required Claims Must Be Supported by Parent Application MPEP 2133.01 Prior Art Disclosing Invention Before Filing Date Bars Patent Issuance for CIP MPEP 2133.01 Effective Filing Date Determined Claim-by-Claim MPEP 2133.01 Child CIP Effective Date When No Parent Support MPEP 2133.01 Prior Art Disclosing Invention Bars Patent Issuance MPEP 2133.01 Filing Date Not Affected by Electronic Filing MPEP 2133 Obvious Variant Prior Art Bars Patentability MPEP 2133 FITF Provisions Not Applicable to CIP Rejections MPEP 2133.01 Other Related FAQs 5 FAQs Collapse How does the AIA (America Inv...