What is the significance of pre-AIA 35 U.S.C. 103(c) in patent examination?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-30 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. Pre-AIA 35 U.S.C. 103(c) is significant in patent examination as it provides a way to disqualify certain prior art references in obviousness rejections. The MPEP states: “ Examiners are reminded that a reference used in an anticipatory rejection under pre-AIA 35 U.S.C. 102(e), (f), or (g) is not disqualified as prior art if the reference is disqualified under pre-AIA 35 U.S.C. 103(c). “ This means that while a reference may be disqualified for use in an obviousness rejection under 103(c), it can still be used for other types of rejections. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Reference Used in Obviousness Rejection Not Disqualified MPEP 2146.03 Prior Art Not Disqualified Under 103(c) MPEP 2146 Anticipatory Rejection Reference Not Disqualified Under Pre-AIA 103(c) MPEP 2146.03 Pre-AIA 35 U.S.C. 103(c) Applies Only to Specific Prior Art MPEP 2146 Pre-AIA 35 U.S.C. 103(c) Cannot Overcome Double Patenting MPEP 2146 Prohibited Pre-AIA Prior Art Under 103(c) Must Be Commonly Owned MPEP 2146 Burden of Establishing Prior Art Disqualification MPEP 2146 Proper Submission Required to Disqualify Reference Under Pre-AIA 35 U.S.C. 103(c) MPEP 2146.03 Common Ownership Exclusion for Prior Art MPEP 2146 Prior Art Exclusion for Commonly Owned Inventions MPEP 2146 Other Related FAQs 5 FAQs Collapse How does common ownership affect patent examination under pre-AIA 35 U.S.C. 103(c)? What is the impact of the CREATE Act on double patenting rejections? How does a joint research agreement affect patent examination under pre-AIA 35 U.S.C. 103(c)? How can a provisional rejection under 35 U.S.C. 103(a) based on provisional prior art under pre-AIA 35 U.S.C. 102(e) be overcome? W...