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[patpro23]

I am filing a patent application for my business and I received a 103 rejection.  However, the 103 rejection includes a patent that my company filed.  Is this a proper rejection in light of 103(c)?

basic details are:  2002 reference patent filed and assignment executed
                         March 2, 2004 reference patent published
                         March 1, 2005 current application filed [note that we filed less than one year from the reference, so 102(b) should not be an issue here]

As I understand the law, the reference can be used against us only under 102(e) which means it can not apply due to the language of 103(c) which states that applications filed under 102e do not count against you.

Am I missing something or is the rejection impropper?

[mk1023]

If the inventor(s) listed on both the reference and the new application are not exactly the same, then the rejection is proper based on the 102(a) date of the reference.

[klaviernista]

If the inventor(s) listed on both the reference and the new application are not exactly the same, then the rejection is proper based on the 102(a) date of the reference.

Seconded.  103(c) only applies when a reference is only available under 102(e), (f), or (g).  The 102(a) date is still good, but you could swear behind it if you have the right facts.

[patpro23]

ok, I guess that makes sense.  I knew there was something I was missing.

Thanks guys!

[Isaac]

103(c) requires a little bit more than common ownership.  Common ownership or an obligation to assign the invention must be present at the time the invention was made.   The examiner cannot check the timing element simply by looking to see if the applications are commonly assigned and may require the Applicant provide a statement addressing the timing.   

Also, unlike the situation with overcoming a non-statutory double patenting rejection with a terminal disclaimer, 103(c) does not require that the applications/patents remain commonly assigned.

An examiner may make a 103(a) rejection that the applicant can get around using 103(c).  Sometimes that means that examiner cannot find any other art to apply.

[MolecularAgent66076]

basic details are:  2002 reference patent filed and assignment executed
                         March 2, 2004 reference patent published
                         March 1, 2005 current application filed [note that we filed less than one year from the reference, so 102(b) should not be an issue here]

But, I thought that the 1-year clock under 102(b) starts from the filing date of the prior application.  I know 35 USC 102(b) says "...patented or described in a printed publication...".  Is it because until the application publishes, it is secret and not publicly known and hence, practically, not filed, as far as 102(b) is concerned?

[klaviernista]

But, I thought that the 1-year clock under 102(b) starts from the filing date of the prior application.  I know 35 USC 102(b) says "...patented or described in a printed publication...".  Is it because until the application publishes, it is secret and not publicly known and hence, practically, not filed, as far as 102(b) is concerned?

No, it is because the statute says "patented" or "published" more than 1 year prior to the filing date of the application in question.  A prior application does not become "patented" until it issues as a U.S. patent.  As for a printed publication, the 102(b) stat bar is based on the date when such a reference is published.  So, either way, the 102(b) bar date is based off the publication date of a patent/application, not its filing date.

Note that issued patents typically mature from U.S. PG-Pubs these days.  Thus, one must be careful to note any prior publication dates on the face of a U.S. patent relied on by an examiner in an office action.  If the issued patent is only available under 102(e), for example, it may not make any sense to swear behind it if the PG-Pub of the underlying application is 102(b) prior art.

[MolecularAgent66076]

But, I thought that the 1-year clock under 102(b) starts from the filing date of the prior application.  I know 35 USC 102(b) says "...patented or described in a printed publication...".  Is it because until the application publishes, it is secret and not publicly known and hence, practically, not filed, as far as 102(b) is concerned?

No, it is because the statute says "patented" or "published" more than 1 year prior to the filing date of the application in question.  A prior application does not become "patented" until it issues as a U.S. patent.  As for a printed publication, the 102(b) stat bar is based on the date when such a reference is published.  So, either way, the 102(b) bar date is based off the publication date of a patent/application, not its filing date.

Thank you!
Now, if an examiner is going to cite a U.S. patent in an Office action, what date would s/he use for a 102(b) rejection - the publishing date of the application or the grant date of the patent, or both?  I understand other sections of 102 could very well be applicable in such a situation, but for 102(b), which date would the examiner use?  Thank you.

[klaviernista]

Thank you!
Now, if an examiner is going to cite a U.S. patent in an Office action, what date would s/he use for a 102(b) rejection - the publishing date of the application or the grant date of the patent, or both? 

Could be either or both, depending on the facts (and before some of the nitpickers chime in I realize their is a technicality, which I will explain). 

For example, say the application in question was filed on 12/01/2009.  The examiner identifies prior art A, a U.S. patent, which issued on 11/31/2008, and which matured from a PG-PUB that was published on 10/10/2007.  Since the issue date of the prior art A is more than one year prior to the filing date of the application, it is available as prior art under 35 U.S.C. 102(b).  Moreover, the Examiner could point to the publication date of the PG-PUB listed on the face of prior art A in support of an assertion that the patent is available as prior art under 102(b).  While the latter assertion is technically improper (because the disclosure of the issued patent may differ from the PG-PUB), it often becomes an issue of form over substance, because all the Examiner need do to rectify the situation is cite the PG-PUB itself, instead of the issued patent.

That being said, the lion's share of the time an examiner will rely on the issue date of a U.S. patent and the publication date of a PG-PUB in support of an assertion that the reference is available under 102(b) as prior art.

[Isaac]

Now, if an examiner is going to cite a U.S. patent in an Office action, what date would s/he use for a 102(b) rejection - the publishing date of the application or the grant date of the patent, or both?  I understand other sections of 102 could very well be applicable in such a situation, but for 102(b), which date would the examiner use?  Thank you.

I'm not sure what an examiner would do, but citing the patent is preferrable because there is a presumption that the invention disclosed in an issued patent is enabled.  But the difference is generally not worth worrying about particularly if the dates are identical.  If the examiner cites the wrong reference when only the PGPUB is available, a response based on simply pointing out the mistake won't help you advance prosecution for your client.

[MolecularAgent66076]

Thank you all.

[Mister C]

 Isaac (Lead Member),

Thank you for your opinion!!: "Also, unlike the situation with overcoming a non-statutory double patenting rejection with a terminal disclaimer, 103(c) does not require that the applications/patents remain commonly assigned."

Q1: What is the timing on the "common assignment"?  Must it remain between family members only at time of fling, or during lifespan of prosecution...?  I assume that if an earliest parent case is issued, then sold, after subsequent filings claiming priority thereto are filed, that the 103(c) exception still remains, yes?

Q2: Is your conclusion based on the lack of any limitation in the statute that the family of cases remain commonly assigned?  Are there any DC, CAFC rulings or other authority to back up this conclusion?

Inputs from other members (e.g, mk1023, Senior Member) will be much appreciated.

Thanks all, this is a great site and the reponders are considerate and much appreciated! (geniuses)

Mr. C.


     

[Isaac]

Q1: What is the timing on the "common assignment"?  Must it remain between family members only at time of fling, or during lifespan of prosecution...?  I assume that if an earliest parent case is issued, then sold, after subsequent filings claiming priority thereto are filed, that the 103(c) exception still remains, yes?

Assuming we are referring to 103(c), the ownership or obligation to assign ownership to the common owner need only exist at the time the invention was made.

Q2: Is your conclusion based on the lack of any limitation in the statute that the family of cases remain commonly assigned?  Are there any DC, CAFC rulings or other authority to back up this conclusion?

For 103(c), the answer is explicitly spelled out in the statute.  Read 35 USC 103(c).