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   Author  Topic: Swearing Behind  (Read 2017 times)
Sam_Charukh
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Swearing Behind
« on: Jan 4th, 2008, 9:57am »
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One of claims of my pending invention was rejected under 103(a) in view of combination of  5 references. I would like to swear behind one of references. However the facts are a little complicated.
My invention was filed on 6/29/2005. However on 6/30/2003 I filed Disclosure Document with Office for same invention.
As I understand, Disclosure Document is a valid proof of conception.  
1. First question: is the Disclosure Document as proof of conception in combination with subsequent filing for patent within two year period a sufficient proof of diligence rrequired to swear behind?
 
The reference is a US utility patent application Filed on 1/20/2004, and published on 1/27/2005 claiming priority from US Provisional application of 1/17/2003
 
2. Second question: What date would be effective date of above reference: the filing date of nonprovisional patent application of 1/20/ 2004 or the filing date of related provisional application of 1/17/2003
 
Examiner uses statement about motivation from above reference as reason for combining other references.
 
3. Question three: If effective date of above referances can go back to provisional application filing date of 1/17/2003 is not  it the duty of Examiner to provide me with description of provisional patent to verify if motivation used by examiners for combination of other referances is stated in provisional application?
Thank you for helping understand this complicated meter.
Sam
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Isaac
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Re: Swearing Behind
« Reply #1 on: Jan 4th, 2008, 10:38am »
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on Jan 4th, 2008, 9:57am, Sam_Charukh wrote:
1. First question: is the Disclosure Document as proof of conception in combination with subsequent filing for patent within two year period a sufficient proof of diligence rrequired to swear behind?

 
No.  You have to show diligence over the entire period between the reference date and your reduction to practice.    
 
 
Quote:
3. Question three: If effective date of above referances can go back to provisional application filing date of 1/17/2003 is not  it the duty of Examiner to provide me with description of provisional patent to verify if motivation used by examiners for combination of other referances is stated in provisional application?
Thank you for helping understand this complicated meter.
Sam  

 
You should be able to retrieve the provisional application from public PAIR.  Probably no point in pursuing this line of argument until you verify that the information in question is not in the provisional.
 
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Isaac
Sam_Charukh
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Re: Swearing Behind
« Reply #2 on: Jan 4th, 2008, 5:22pm »
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Thank you for directing to public PAIR. Very Us full site.
Still going beck to my firs question, in view of following citation of MPEP: 715:
(b) The showing of facts shall be such, in character and weight, as to establish reduction to practice prior to the effective date of the reference, or conception of the invention prior to the effective date of the reference coupled with due diligence from prior to said date to a subsequent reduction to practice or to the filing of the application.  
Question: Does not above statement means that earlier conception and subsequent reduction to practice or earlier conception and subsequent filing of the patent application are enough to swear behind the reference.
 
Appreciate your expert opinion.
Sam  Cool
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