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   Re: CIP applications
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   Author  Topic: Re: CIP applications  (Read 3532 times)
copatents
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Re: CIP applications
« on: Jul 10th, 2006, 6:54pm »
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Let me rephrase can the parent published application be used in either a 102 or 103 rejections vs. the claims of the CIP?
 
The claims of the CIP incorporate both new subject matter and the "old" subject matter.  
 
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Anon
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Re: CIP applications
« Reply #1 on: Jul 11th, 2006, 1:40am »
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I'm not really sure whether I understand your question, but...
 
Priority is determined on a claim-by-claim basis.    
 
So it may be that claim 1 has priority to the parent while claim 2 does not.  In such a case, the parent could NOT be prior cited as prior art against the claim 1.  But depending on dates and other considerations, the parent could potentially be cited as prior art against claim 2.
 
Does that help?
 
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Bill Richards
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Re: CIP applications
« Reply #2 on: Jul 11th, 2006, 4:27am »
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I do not believe the parent, if the CIP is filed while the parent is pending, is ever p/a, even if published, which is not in the hypo.  Other intervening published art may be, but not the parent.
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William B. Richards, P.E.
The Richards Law Firm
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Isaac
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Re: CIP applications
« Reply #3 on: Jul 11th, 2006, 5:38am »
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on Jul 11th, 2006, 4:27am, Bill Richards wrote:
I do not believe the parent, if the CIP is filed while the parent is pending, is ever p/a, even if published, which is not in the hypo.  Other intervening published art may be, but not the parent.

 
I believe that if the parent has been published for 1 year before the CIP is filed, for claims not eligible for the priority of the parent, the published parent application is available under 102(b) and under 103(a).
 
What provision do you believe excludes the published application from being prior art?
 
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Isaac
Bill Richards
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Re: CIP applications
« Reply #4 on: Jul 11th, 2006, 6:26am »
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I agree for claims entirely not eligible for priority of the parent and after one year.  I just don't recall ever having seen a  rejection of CIP claims based upon applicant's published parent.  What's the result if a portion of the CIP claim is supported?  For example, parent supports and claims A+B.  CIP supports C and claims A+B+C?
« Last Edit: Jul 11th, 2006, 9:38am by Bill Richards » IP Logged

William B. Richards, P.E.
The Richards Law Firm
Patents, Trademarks, and Copyrights
614/939-1488
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