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Author Topic: Swearing behind 102(b) references combined under 103(a)  (Read 4147 times)

JimIvey

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Suppose an application has been filed (pre-AIA) and a prototype was made a few years before filing.

Suppose the claims are rejected in view of 102(b) prior art -- 2 references, both of which came after the invention was made.

Quote
35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.

(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

How can it be obvious, at the time the invention was made, to combine references that didn't exist yet?  It seems that I could swear behind the 102(b) references to remove them from 103(a) analysis.

Any thoughts?

Thanks.
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James D. Ivey
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NJ Patent1

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Re: Swearing behind 102(b) references combined under 103(a)
« Reply #1 on: 10-11-11 at 02:05 pm »

Jim:  It is problematic and I’ve flip-flopped on my position on this.  This topic was the subject of a prior thread (August I think).  I (re)convinced myself that swearing behind a 102(b) is problematic at best.  Resolution is far from crystal clear. Has to do with the “although not identically disclosed as set forth in section 102”, and that 102 distinguished btw date of invention (a) and date of application (b).  Once the reference is out there for a year and a day, it is PA against the world.  But I’m open to being unconvinced.  One question, was the invention abandoned?  How to explain the two-year delay in filing. 
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Dazed-n-confused

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Re: Swearing behind 102(b) references combined under 103(a)
« Reply #2 on: 10-11-11 at 02:25 pm »

Suppose an application has been filed (pre-AIA) and a prototype was made a few years before filing.

Suppose the claims are rejected in view of 102(b) prior art -- 2 references, both of which came after the invention was made.

Quote
35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.

(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

How can it be obvious, at the time the invention was made, to combine references that didn't exist yet?  It seems that I could swear behind the 102(b) references to remove them from 103(a) analysis.

Certainly seems so.  But "whether or not a thing is prior art" seems to trump the simple statement in 103.  As NJP1 points out, whether or not a thing is useful as prior art in 103, is found in 102(b), and relates only to filing date.

The typical construction is certainly no worse, in my mind, than using 102(e) art in a 103 rejection as (pretty much only) the US permits.  Seems this falls under the same question you asked, "How can it be obvious, at the time the invention was made, to combine references that didn't exist yet?", if you consider that "did not exist" in the obviousness sense means "was not published/available to OSIA".
The funny thing is, I used to groan about some of these apparent contradictions in (old) 102-103.  It only seems the number of them has been increased with AIA.  Humbug.
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khazzah

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Re: Swearing behind 102(b) references combined under 103(a)
« Reply #3 on: 10-11-11 at 04:40 pm »

I (re)convinced myself that swearing behind a 102(b) is problematic at best.  Resolution is far from crystal clear. Has to do with the “although not identically disclosed as set forth in section 102”, and that 102 distinguished btw date of invention (a) and date of application (b).  Once the reference is out there for a year and a day, it is PA against the world.  But I’m open to being unconvinced.  One question, was the invention abandoned?  How to explain the two-year delay in filing. 

The PTO's position is that you can't swear behind a 102(b). See MPEP 715.I. I'm guessing that's what you mean by "problematic".
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Karen Hazzah
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khazzah

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Re: Swearing behind 102(b) references combined under 103(a)
« Reply #4 on: 10-11-11 at 04:44 pm »

Suppose an application has been filed (pre-AIA) and a prototype was made a few years before filing.

Suppose the claims are rejected in view of 102(b) prior art -- 2 references, both of which came after the invention was made.

Quote
35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.

(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

How can it be obvious, at the time the invention was made, to combine references that didn't exist yet?  It seems that I could swear behind the 102(b) references to remove them from 103(a) analysis.

Any thoughts?

No original thoughts. I came across this old PatentlyO post which a) agrees such a reading contradicts the plain language of the statute but also b) points out that the courts have accepted the contradiction

http://www.patentlyo.com/patent/2008/10/rethinking-the.html
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Karen Hazzah
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JimIvey

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Re: Swearing behind 102(b) references combined under 103(a)
« Reply #5 on: 10-11-11 at 05:58 pm »

Wow, so the most recent authority on the issue is from 1965?  I was wearing diapers at that time, and I'm really, really old.

I suppose that supports the Office's interpretation of "obvious" as meaning "conceivable."  I suppose it's obvious today to combine VCR/DVR recording with a time machine to pre-program time hops in a predetermined fashion.

Honestly, I still can't quite grok how it could be obvious to combine things that don't yet exist.

Thanks for the thoughts.

Regards.
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James D. Ivey
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