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   Inventor's own prior art
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   Author  Topic: Inventor's own prior art  (Read 2446 times)
Brian
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Inventor's own prior art
« on: Sep 25th, 2006, 11:30am »
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The deeper I get the more complicated it seems and the more confused I am becoming by double patenting, continuations/CIPs and 103 obviousness with respect to the same inventor's prior art/related art.
 
My understanding of obviousness type double patenting is that it is based on a claim from an inventors prior application in combination with another prior art work.  In this instance the inventor can make a terminal disclaimer to avoid this rejection.
 
However, if the rejection is made by combining statements from the inventor's specfication that are not claimed, in combination with another prior art activity from another, there is no double patenting (as there is no claim) but a proper 103 rejection can be made so long as the inventor's prior application falls under 102 (b) in that it was published more than one year prior to the current application.  Futhermore, there is no resolution by disclaimer for this situation.
 
Yet I am guessing that this situation can be avoided by filing a continuation off of the parent instead of an original application ?  So even though a 102 (b) bar may appear to be in place it can be circumvented by the filing of a continuation.
 
What about a CIP ? If the new claim depends on new material from the child application, does the parent's disclosure work against the new claim for a 103 rejection ?
 
Thanks.  
 
 
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Jake Blackmoore
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Re: Inventor's own prior art
« Reply #1 on: Nov 26th, 2006, 9:47pm »
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I have no idea the answer. I am just hoping someone else out there does.
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Isaac
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Re: Inventor's own prior art
« Reply #2 on: Nov 27th, 2006, 8:12am »
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on Sep 25th, 2006, 11:30am, Brian wrote:
Yet I am guessing that this situation can be avoided by filing a continuation off of the parent instead of an original application ?  So even though a 102 (b) bar may appear to be in place it can be circumvented by the filing of a continuation.

 
Probably not.  If the material in a claim is not supported by the parent application, then the claim is not also not due the priority of the parent even if such priority is claimed (for example in a CIP).   In such a case the parent could be used in a 103(a) rejection.  Further, because the reference is available under 102(b), 103(c) could not be used to disqualify the reference.
 
 
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Isaac
irasiegel
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Re: Inventor's own prior art
« Reply #3 on: Jun 27th, 2007, 3:27pm »
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on Nov 27th, 2006, 8:12am, Isaac wrote:

 
Probably not.  If the material in a claim is not supported by the parent application, then the claim is not also not due the priority of the parent even if such priority is claimed (for example in a CIP).   In such a case the parent could be used in a 103(a) rejection.  Further, because the reference is available under 102(b), 103(c) could not be used to disqualify the reference.

 
Isaac, is there an MPEP section relating to a parent being citable against a CIP claim, which claim is not supported by the parent?
Thanks.
Ira
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