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[dbmax]

Here's a question related to a previous thread that was wiped out during a spam attack.

NPA1 is published 1/1/10

PPA2 is filed 1/1/11 by same inventor.

NPA2 is filed 1/1/12 by same inventor claiming priority to PPA2

Does the filing date of PPA2 immunize NPA2 from 103a rejection citing NPA1? (presuming PPA2 is adequately enabling, etc)

Thanks,

DB

[mk1023]

102(b) requires the publication be "more than one year prior". PPA2 give NPA2 the 1/1/11 date. 1/1/10 is not more than on year before 1/1/11, therefore NPA1 is not a valid 102(b) reference. 102(a) and 102(e) don't apply as NPA1 is not by a different inventor. NPA1, not being prior art, cannot be used in any type of rejection

[NJ Patent1]

MK1023:  Perhaps there is on-point case law of which I am (embarrassingly) not aware or have forgotten.  I agree 102(e) and 102(b) are out.  But I see nothing on the face of 102(a) that precludes an inventor’s (or inventive entity’s) own prior published and not formally related application as being prior art against the later application for 103.  IMO the “by another" language in 102(e) evinces an intent that an inventor’s own prior published application should be available as PA.  “Swearing behind”, if possible, appears to me to be the answer.
 
Of course, this reasoning produces IMO a facially curious result.  If the inventor of NPA1 and PPA2 were NOT the same, but simply under an obligation to assign to the same entity, 103(c) would disqualify NPA1 for 103 rejections.  Because PPA2/NPA2 are not “by another”, the "savings clause" of 103(c) is not available.  Curious to me.  But 103(c) was, if I recall, enacted i.a. to address the “Odds On Products” decision, not implicated here.
 
Question:  Does “by another” in the first clause of 102(a) really slide all the way down to the second clause, i.e., … or patented or described in a printed publication [authored by another])?   

[mk1023]

102(a) is poorly written but that's the way things work in practice. See MPEP 2132
III.    "BY OTHERS"

"Others" Means Any Combination of Authors or Inventors Different Than the Inventive Entity

The term "others" in 35 U.S.C. 102(a) refers to any entity which is different from the inventive entity. The entity need only differ by one person to be "by others." This holds true for all types of references eligible as prior art under 35 U.S.C. 102(a) including publications as well as public knowledge and use. Any other interpretation of 35 U.S.C. 102(a) "would negate the one year [grace] period afforded under § 102(b)." In re Katz, 687 F.2d 450, 215 USPQ 14 (CCPA 1982).

[NJ Patent1]

mk1023:  Many thanks!  I had never encountered a Katz situation.  The various 102 / 103 sections can be reconciled - at least for me.   

[dbmax]

Thanks for the refresher.

db

[Dazed-n-confused]

Of course, this reasoning produces IMO a facially curious result.  If the inventor of NPA1 and PPA2 were NOT the same, but simply under an obligation to assign to the same entity, 103(c) would disqualify NPA1 for 103 rejections.  Because PPA2/NPA2 are not “by another”, the "savings clause" of 103(c) is not available.  Curious to me.  But 103(c) was, if I recall, enacted i.a. to address the “Odds On Products” decision, not implicated here.

I stumbled on this statement.  Is it correct?  It seems NPA1 published 1/1/10 as stated is 102(a) art to the effective filing date of PPA2/NPA2 (1/1/11).  103(c) can permit removal of commonly owned references where the reference is used in 103 via 102(e), correct?  But not 102(a)...

Thanks, anyone who manages to wade through the spam and correct my thinking on this, or confirm it.

[NJ Patent1]

Dazed:  Per MK's comment re: Katz, the prior published appliaction is not prior art under 102a in the OP scenario, so the "savings" provisions of 103(c) would be redundant. 

[Dazed-n-confused]

Dazed:  Per MK's comment re: Katz, the prior published appliaction is not prior art under 102a in the OP scenario, so the "savings" provisions of 103(c) would be redundant. 

Hello NJP1.  Right, according to the OP.

But I was reacting to your post, where you posited "If the inventor of NPA1 and PPA2 were NOT the same".  That's what I stumbled on.

[NJ Patent1]

Dazed:  As I understand it, if the “inventive entity” for NPA1 and PPA2 are different, then NPA1 would be 102(e) art against PPA2 (we don't know the filing date of NPA1).  However, if the two different inventive entities happened to be under an obligation to assign to the same person, then 103(c)(1) would “save” PPA2 from NPA1.  The savings applies only to 102(e), (f), and (g) art.   Sec 102(e) requires that the inventive entities be different.  So if the inventorship of NPA1 and PPA2 were the same, 102(e), and therefore the “savings” of 103(c)(1) would not apply.  That was the “curious” result I had in mind (A and B work for and obliged to assign to Acme Co, A's published app is not 102e against B's app but it is 102a against A's own??) :  Well, after reading Katz, the result is no longer curious to me bcs it is not reached.  Sec. 102(e) mentions only “by another” bcs the construction of 102(a) in Katz addresses the situation where inventorship is the same.