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(Message started by: Brian on Aug 29th, 2006, 5:47pm)

Title: In re Chu
Post by Brian on Aug 29th, 2006, 5:47pm
This question concerns the Federal Circuit opinion of In re Chu decided 09/14/1995.

Although they reversed the decision of the BAPI, it seems incongruous that the Circuit found that Chu's own work can be used as a 102e/103 reference, since 102(e) specifies that of another.

Brian.

Title: Re: In re Chu
Post by JimIvey on Aug 29th, 2006, 7:00pm
I think the reasoning was that, since the inventors of the prior application were not identical, it was considered patented by "another."  The court went into the fact that identical inventorship is not required for CIP priority, but it seems identical inventorship is required to obviate 102(e).

Regards.

Title: Re: In re Chu
Post by Isaac on Aug 30th, 2006, 6:09am
Jim's correct about the identical inventorship being required to remove a 102(e) rejection of the same of being not "by others".   If Chu had believed that is own work was being cited against him, he could have provided an affidavit to that effect and the PTO would have withdrawn the objection.   The CAFC did not spend  any time on the identical inventorship point because neither side had any issue with it.

What I found more interesting in In re Chu is the portion relating to Chu's attempts to overcoming a design choice, obviousness rejection.   The PTO position was that the evidence for overcoming the rejection needed to be provided in the applicant's specification as filed.

The CAFC indicated that the evidence for overcoming such a rejection did not have to come from the applicant's specification, but could be provided in an affidavit.   In fact, the CAFC suggests that it is reasonable that the applicant would not provide the information prior to receiving the rejection.

Without getting into a discussion of whether or not it might be preferrable that such information be in the specification, Chu suggests at least that one should not give up on arguing a design choice rejection simply because the rationale for overcoming the rejection is not already in the specification.

Title: Re: In re Chu
Post by Brian on Aug 30th, 2006, 10:27am
Issac, Jim,

Thanks for the clarification, is the following then accurate:

The CAFC recognized that it takes only a common inventor to provide for the benefit of an earlier filing date, so BAPI was wrong in their rationale for relying on the parent as a prior art reference.  However, the CAFC did find that the parent is a valid prior art reference for the following reason:

The CAFC then stated that since the claims are not supported by the parent, Chu cannot obtain the benefit of the parent's filing date, and the parent is, for this reason, properly relied on as prior art.  

Here is my confusion:
So the CAFC seems to be saying that regardless of inventive entity, if the parent does not support the improvement then the parent can be used as prior art.  
Or is it simply assumed knowledge that if the parent and child had identical inventive entities, it could not be used as prior art under 102 (e).  If so, where there is no identical inventive entity between the parent and the child, the improvement patent is assumed to be by that of another, and that is why the parent could be found as a valid prior art reference.

With this assumption, Chu could have provided (if true) an affidavit to overcome the prior art rejection, stating that the claim at issue was invented by Doyle (he being the sole inventor of the parent).

Finally, my personal take home message is that parent applications of CIPs are available as prior art for all claims requiring new matter support from the child application, unless the inventor of the new claim is an inventor in the parent, or there is identical inventive entities on both the parent and child.

Thanks for the consideration,

Brian.

Title: Re: In re Chu
Post by Isaac on Aug 30th, 2006, 10:50am

on 08/30/06 at 10:27:43, Brian wrote:
Or is it simply assumed knowledge that if the parent and child had identical inventive entities, it could not be used as prior art under 102 (e). If so, where there is no identical inventive entity between the parent and the child, the improvement patent is assumed to be by that of another, and that is why the parent could be found as a valid prior art reference.


I think the fact that the inventive entities were different was simply not at issue here. The parties all agreed that the inventive entities involved were different and fought about priority issue.


Quote:
Finally, my personal take home message is that parent applications of CIPs are available as prior art for all claims requiring new matter support from the child application, unless the inventor of the new claim is an inventor in the parent, or there is identical inventive entities on both the parent and child.


Not quite...

103(c) is often relevant in such cases unless the reference is citable under 102(a) or 102(b). Further even if there inventive entities are the same, if plural inventors exist for the application and/or the reference, there can still be a question of exactly who invented what.

Title: Re: In re Chu
Post by Professor on Aug 30th, 2006, 3:44pm
Can another application I am on be used against me?

I am a professor at University X and I am an inventor on an application with other professors (inventors) at University Y.  

If i file a separate application that is somewhat related in subject matter to the University of X and Y application (not related enough to file as a "child" or "child-in-part"), can that University of X and Y application which is issuing as a patent any day be used against me in an obviousness rejection on the new application???

I was told by the attorney at University of Y that as long as one inventor was shared that I wouldn't have to worry about anything but I don't feel comfortable with that answer and I hoping that you can confirm what he has said.  Is it as simple as submitting a declaration or affidavit that it is "my work" as seems to be suggested in the previous posts?

Thank you.

Title: Re: In re Chu
Post by wallflower on Aug 30th, 2006, 4:09pm

on 08/30/06 at 15:44:08, Professor wrote:
I was told by the attorney at University of Y that as long as one inventor was shared that I wouldn't have to worry about anything but I don't feel comfortable with that answer and I hoping that you can confirm what he has said.  Is it as simple as submitting a declaration or affidavit that it is "my work" as seems to be suggested in the previous posts?

I don't see the relevance of sharing one inventor.  But maybe the inventors of the claimed invention are under a joint research agreement?

Title: Re: In re Chu
Post by Isaac on Aug 30th, 2006, 4:23pm

on 08/30/06 at 15:44:08, Professor wrote:
If i file a separate application that is somewhat related in subject matter to the University of X and Y application (not related enough to file as a "child" or "child-in-part"), can that University of X and Y application which is issuing as a patent any day be used against me in an obviousness rejection on the new application???


Yes under at least some circumstances.

As an example, if the application is published or issues as a patent prior to your filing, the reference is available under 102(a) and any of the described work that is not your own invention alone can be cited against you.  You may be able to overcome the rejection by removing the reference.

Once the publication becomes available under 102(b) it is available regardless of the fact that it is your invention. It is fairly common that an application has been published for over a year when it issues as a patent, so the application might already be a 102(b) reference.  Such a reference is not removable by an affidavit.


Quote:
I was told by the attorney at University of Y that as long as one inventor was shared that I wouldn't have to worry about anything but I don't feel comfortable with that answer and I hoping that you can confirm what he has said. Is it as simple as submitting a declaration or affidavit that it is "my work" as seems to be suggested in the previous posts?


The attorney's "advice" as you detail it above does not describe the general case. Perhaps there are other factors that qualify the advice and perhaps you haven't quite quoted the attorneys advice completely, but you cannot rely on your current understanding.


Title: Re: In re Chu
Post by biopico on Sep 16th, 2006, 8:34pm
I was told by the attorney at University of Y that as long as one inventor was shared that I wouldn't have to worry about anything but I don't feel comfortable with that answer and I hoping that you can confirm what he has said.  Is it as simple as submitting a declaration or affidavit that it is "my work" as seems to be suggested in the previous posts?  

Wasn't the prof Y implying:  
What about under 1999 AIPA and 2004 CREATE ACT?
35 U.S.C. 103/102(e)?



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