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   103 Rejection and "by another"
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   Author  Topic: 103 Rejection and "by another"  (Read 5245 times)
Zachary Verzon
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103 Rejection and "by another"
« on: Aug 24th, 2007, 10:08am »
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I have a 103 rejection.  I would like to submit a 132 declaration to show that the reference was derived from inventors of this application and is not an invention "by another".
 
Facts:
current application with rejection has inventors A, B and C
reference i want remove ONLY has inventors A and B
 
Do I have to have all inventors in common to use a declaration for this effect?  Thank you.  (the reference is assigned to a different party so I cant use the 130 declaration).
 
Thank you for your help on this confusing matter.
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PA
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Re: 103 Rejection and "by another"
« Reply #1 on: Aug 24th, 2007, 10:50am »
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All of the inventors need to be the same.  See. e.g., MPEP 2136.04.
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Isaac
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Posts: 3472
Re: 103 Rejection and "by another"
« Reply #2 on: Aug 24th, 2007, 1:04pm »
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All of the inventor's need to be the same for the particular subject matter of the claim in question.   If the inventorship of a particular claim is A and B, with C's contribution being to other claim(s) then maybe a declaration would work.  Obviously if you needed to use this declaration for all of the claims, the inventorship on the current application must be wrong.
 
You wouldn't want to make a mistake with this kind of declaration.  It would be an obvious place to try to shoot down the patent during litigation.
 
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Isaac
Zachary Verzon
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Re: 103 Rejection and "by another"
« Reply #3 on: Aug 27th, 2007, 2:41pm »
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OKay, thanks, PA and Isaac.  I read MPEP 2136.04, but I also came across MPEP 715.01(a) where the reference is a joint patent.
 
The example is the patent in question is by "S and another" and S files a later application.  It says that an affidavit can be used to remove that reference.  
 
Also MPEP 716.10 (attribution) says pretty much the same thing that an affidavit can be used to attribute the relevant portion originated from the applicant.  (see examples there)
 
What do you think?  Am i reading this correctly?  THank you.
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Isaac
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Posts: 3472
Re: 103 Rejection and "by another"
« Reply #4 on: Aug 28th, 2007, 1:27pm »
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on Aug 27th, 2007, 2:41pm, Zachary Verzon wrote:
The example is the patent in question is by "S and another" and S files a later application.  It says that an affidavit can be used to remove that reference.
   
 
That's a little different from your current situation, but in any event, the MPEP says a decl/aff swearing to certain facts can remove the reference.   For situations where those certain facts are not reality, the swearing method cannot be used.
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Isaac
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