What is the significance of redacted application publications in pre-AIA 35 U.S.C. 102(e) rejections?

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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. Redacted application publications can play a role in pre-AIA 35 U.S.C. 102(e) rejections. The MPEP clarifies: In addition, a provisional rejection under pre-AIA 35 U.S.C. 102(e) may be made if the earlier filed, pending application has been published as redacted (37 CFR 1.217) and the subject matter relied upon in the rejection is not supported in the redacted publication of the patent application. This means that examiners can use subject matter from an earlier filed application that was not included in its redacted publication as the basis for a provisional rejection, provided other conditions are met. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Provisional Rejection Over Pre-AIA 35 U.S.C. 102(e) Requires Common Inventor or Assignee MPEP 2136.01 Required Provisional Rejection Based on Redacted Publication MPEP 2136.01 Permitted Provisional Rejection Based on Redacted Publication MPEP 2136.01 Permitted Subject Matter Qualifying as Prior Art Under Other Subsections Not Disqualified by Pre-AIA 103(c) MPEP 2136.01 Form Paragraph for Provisional Rejection Under Pre-AIA 102(e) MPEP 2136.01 Recommended U.S. and International Application Publications as Prior Art MPEP 2136.01 Provisional Rejection Can Be Overcome Like Pre-AIA 102(e) Rejection MPEP 2136.01 Permitted Provisional Rejection When Earlier Application Becomes Prior Art MPEP 2136.01 Provisional Rejection Not Proper If Same Owner MPEP 2136.01 Provisional Rejection of Later-Filed Application Based on Unpublished Earlier-Filed Application MPEP 2136.01 Required Other Related FAQs 5 FAQs Collapse How does the CREATE Act affect provisional rejections under pre-AIA 35 U.S.C. 103(a)? How can a provisional rejecti...