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[Sticker Guy]

Smith’s first invention is a new method of fabricating a semiconductor capacitor in a dynamic random access memory (DRAM) cell. Smith filed a first patent application on December 13, 2001 disclosing and claiming the first invention. Smith’s later, second invention, is an improved semiconductor capacitor in a DRAM cell and a method of making it. Smith filed a second application on December 16, 2002, claiming the benefit of the filing date of the copending first application. The second application contains claims 1-20, and a specification that provides support for the claimed subject matter in compliance with 35 USC 112, first paragraph. In the second application, claims 1-10 are drawn to Smith’s first invention, and claims 11-20 are drawn to Smith’s second invention. The primary examiner found a non-patent printed publication authored by Jones published on February 4, 2002. The article discloses the both of Smith’s inventions. Which of the following courses of action by the examiner would be in accord with the patent laws, rules and procedures as related in the MPEP?

(A) The examiner can reject claims 1-20 in the second application using the article because the publication date of the article is earlier than the filing date of the second application.

(B) The examiner cannot reject any of the claims in the second application using the article because the second application claims the benefit of the filing date of the first application.

(C) The examiner can reject claims 1-20 in the second application using the article because the second application is not entitled to the benefit of the filing date of the first application since the second application was filed more than one year from the filing date of the first application.

(D) The examiner can reject claims 1-10, but cannot reject claims 11-20 in the second application because the first application did not disclose the improved capacitor set forth in claims 11-20.

(E) The examiner cannot reject claims 1-10, but can reject claims 11-20 in the second application because the first application did not disclose an improved capacitor set forth in claims 11-20.

The answer is E.

I thought the answer is C becuase the first application was filed on December 13, 2001 and the second applicaiton was filed on December 16, 2002, which is more than one year apart. Why is the answer not C?

[Oh, Crud]

...
The answer is E.

I thought the answer is C becuase the first application was filed on December 13, 2001 and the second applicaiton was filed on December 16, 2002, which is more than one year apart. Why is the answer not C?

I don't understand your explanation for why you thought it was "C", so I suspect we are reading the original question differently. 

In any event, to try to clear things up, the answer is "E" because claims 1-10 of 2nd app, having support in the 1st app, have an effective filing date (Dec. 2001) that beats the the Feb. 2002 publication date of the reference.  (It doesn't matter that > 1 year has elapsed - Smith can claim priority to that 1st app at any time during the pendency of the first app.) 

But claims 11-20 of the 2nd application do not actually find support in that 1st app, right?  So, because they are not actually supported in the 1st app, their very first filing date is December 2002 (look at it as if Smith's attempt to claim priority to the 1st app filing date was a failed attempt[EDIT - with regard to claims 11-20]).  And the 2nd app filing date is after the publication of the art reference, so it can properly be applied as against those claims.

Note in real life, it's the unusual examiner who carefully parses a purported parent/1st application to determine whether claims in the 2nd app actually find support in that parent app.

Hope this helps?

[Sticker Guy]

I assumed the first application was a provisional since I didn't know you can claim priority from a previously non-provisional application. I believe this is where I am confused. So if I am not mistaken, it is possible to have two regular non-provisional applications that are copending, yes? The second one is a continuation of the first? The rest of the problem becomes clear, thanks for clarifying.

[Oh, Crud]

I assumed the first application was a provisional since I didn't know you can claim priority from a previously non-provisional application. I believe this is where I am confused. So if I am not mistaken, it is possible to have two regular non-provisional applications that are copending, yes? The second one is a continuation of the first? The rest of the problem becomes clear, thanks for clarifying.

Yes, and not just two.  Many are possible.  In the U.S. anyway, you can serially file continuations from pending parents.  For example, taking app1, while it is pending you can file app2 claiming priority to it, then app3 can claim priority to app2 while app2 is pending.  Or app3 might claim priority to app 1 while both 1 and 2 are pending.  Many combinations are possible. 

Also note app3 can claim priority to both of apps 1-2 with language (such as you'll see when you start reviewing more patents) such as (off top of head and possibly not exactly legally correct), "This application (app6) claims priority to and is a continuation of U.S. Patent Application No. 11/123,123, pending (say this is app5), which is a continuation of U.S. Patent Application No. 10/987,987, pending (this is app4), which is a continuation of U.S. Patent Application No. 10/545,545, now abandoned (this was app3), which is a continuation of U.S. Patent Application No. 10/128,121, now U.S. Pat. No. 6,777,888 (this was app2), which is a continuation of... ...etc.

It is also permissible to file any number of child applications at the same time (i.e., not "serially" as mentioned above but all at once).  For example, I've seen cases where an original utility application was subject to a 6-way restriction requirement, and also the client thought of some other matter disclosed in the specification that should really have been claimed.  The client wanted granted patents on all types of subject matter as soon as reasonably possible, so on the same day we filed 5 different divisional applications and one continuation application that all claimed priority to the same single parent utility application. 

[Sticker Guy]

Thanks Crud, you have been very helpful. I will be taking the bar exam in a few months, so I really appreacite it.