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(Message started by: Zachary Verzon on Aug 24^th, 2007, 10:08am)

Title: 103 Rejection and "by another"
Post by Zachary Verzon on Aug 24^th, 2007, 10:08am

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.

Title: Re: 103 Rejection and "by another"
Post by PA on Aug 24^th, 2007, 10:50am

All of the inventors need to be the same. See. e.g., MPEP 2136.04.

Title: Re: 103 Rejection and "by another"
Post by Isaac on Aug 24^th, 2007, 1:04pm

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.

Title: Re: 103 Rejection and "by another"
Post by Zachary Verzon on Aug 27^th, 2007, 2:41pm

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.

Title: Re: 103 Rejection and "by another"
Post by Isaac on Aug 28^th, 2007, 1:27pm

on 08/27/07 at 14:41:57, 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.

Title: Re: 103 Rejection and "by another"
Post by michael73 on Sep 12^th, 2007, 12:15pm

I also received a 102 (b) and 103 (a) rejection for my invention (as discussed in length some time ago - thanks for the help again, btw!).

The rejections are based on my earlier application (>1 year before). Inventors are exactly the same. Does this change anything in terms of obviousness etc?

From the above thread, it seems that a 132 declaration (where would I find this?) would help?

Thanks... Michael

Title: Re: 103 Rejection and "by another"
Post by PA on Sep 12^th, 2007, 12:36pm

If you're referring to swearing back, that's not available for 102(b) art.

Title: Re: 103 Rejection and "by another"
Post by michael73 on Sep 12^th, 2007, 4:12pm

is it possible for 103(a)?

I am confident about our amendments and remarks regarding the 102(b) rejection, but the 103(a) is a bit more tricky.

The 103(a) rejection is based on our previous application + another prior art reference, from which the examiner takes an element to combine with our previous application. does patent law make it easier to "improve your OWN previous inventions", thus easier to pass 103(a)?

thanks Michael

Title: Re: 103 Rejection and "by another"
Post by PA on Sep 12^th, 2007, 4:36pm

Quote:

is it possible for 103(a)?

If the art does not qualify under 102(b), then I think you can.

Quote:

does patent law make it easier to "improve your OWN previous inventions", thus easier to pass 103(a)?

No. Imagine if a competitor could simply protect their invention across multiple 20 year terms by filing applications containing obvious improvements. They would essentially be allowed a never ending monopoly.

Title: Re: 103 Rejection and "by another"
Post by michael73 on Sep 12^th, 2007, 5:37pm

okay, I think I am starting to understand. I guess it doesnt help me :(

102(b) seems to apply. our first invention was published 14 months before the filing of our current application. also, the examiner rejected some of our current claims based on 102(b).

thanks for the clarification!!
cheers Michael

Title: Re: 103 Rejection and "by another"
Post by Isaac on Sep 12^th, 2007, 5:38pm

on 09/12/07 at 16:12:48, michael73 wrote:

The 103(a) rejection is based on our previous application + another prior art reference, from which the examiner takes an element to combine with our previous application. does patent law make it easier to "improve your OWN previous inventions", thus easier to pass 103(a)?

thanks Michael

There is the provision of 103(c) that allows you to exclude some 102efg references from obviousness determinations, and thus giving you time to submit obvious improvements to your own inventions. But 103(c) does not apply if the reference in question qualifies under 102(b).

Sounds to me as if removing the reference is not available for you.

Title: Re: 103 Rejection and "by another"
Post by michael73 on Sep 12^th, 2007, 5:48pm

Oh wait :)

the publication date of my previous application was 14 months before the filing. now, I know for sure that we had invented the subject matter of the later application more than two months before its filing, so LESS than 12 months after the publication of the first application.

so, I should be able to swear behind, right? I am not a professional, so, to be sure: swearing back would mean, that I can get around 102(b)?

Title: Re: 103 Rejection and "by another"
Post by michael73 on Sep 12^th, 2007, 5:52pm

sorry... guess I am wrong

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or

I guess, filing date, not date of invention counts :(

Title: Re: 103 Rejection and "by another"
Post by JimIvey on Sep 12^th, 2007, 7:34pm

Correct. 102(b) often leads to swearing, but none of it effective as "swearing behind."

Regards.