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Author Topic: Recent Patent Bar Question Collective  (Read 25947 times)

patentmoose

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Re: Recent Patent Bar Question Collective
« Reply #30 on: 08-09-07 at 09:26 am »

i was thinking the first one was 102(e) as well.. so that's probalby (hopefully :) ) right.. what about the 2nd one.. that is the one that is kinda stumping me...
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patentmoose

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Re: Recent Patent Bar Question Collective
« Reply #31 on: 08-09-07 at 09:29 am »

Oh  nevermind! I"m stupid!! I see feljdllb put the correct answer for the 2nd one!! SORRY.
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Philip Soo

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Re: Recent Patent Bar Question Collective
« Reply #32 on: 08-21-07 at 05:53 pm »

With respect to the first question on "what type of reference a U.S. patent, not commonly owned, claiming the same subject matter would be cited as", I don't think any of the answers seem correct.  

It would not be double patenting since it is not commonly owned, and 102(e) should not be cited for references which both disclose and *claim* the same invention.  If the invention is *claimed* by the reference, then it is an interference situation.

See first few words of U.S.C. 102(e):  
(e) the invention was described in - (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.

Any other thoughts?

Phil.
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still_studying

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Re: Recent Patent Bar Question Collective
« Reply #33 on: 08-22-07 at 01:50 am »

Quote
With respect to the first question on "what type of reference a U.S. patent, not commonly owned, claiming the same subject matter would be cited as", I don't think any of the answers seem correct.  

It would not be double patenting since it is not commonly owned, and 102(e) should not be cited for references which both disclose and *claim* the same invention.  If the invention is *claimed* by the reference, then it is an interference situation.
Phil.

If it's an issued patent, and it claims the same subject matter, then the specification must describe that same subject matter sufficiently so as to enable the claims.  Interference would only be appropriate if the application's filing date was close to but after the issued patent's.  If the filing dates were more than six months apart, the examiner is supposed to issue a rejection and let the applicant explain why he has priority.  See MPEP 2302 (E8R4), particularly general practices 3 and 4.

Was the inventorship the same?  Same inventors, but different assignees, might qualify for a DP rejection -- the person who posted the question only mentioned ownership, not inventorship.
« Last Edit: 08-22-07 at 01:56 am by still_studying »
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Isaac

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Re: Recent Patent Bar Question Collective
« Reply #34 on: 08-22-07 at 10:00 am »

Common ownership is not a consideration in issuing a double patenting rejection.   Not having common ownership does limit the options for responding to a double patenting rejection.
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Isaac

still_studying

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Re: Recent Patent Bar Question Collective
« Reply #35 on: 08-23-07 at 02:22 am »

Quote
Common ownership is not a consideration in issuing a double patenting rejection.   Not having common ownership does limit the options for responding to a double patenting rejection.

I'm guessing that the person who posted the question didn't recall all of its details precisely.  No worries, though.  The MPEP answers all. ;D
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BotchedExperiment

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Re: Recent Patent Bar Question Collective
« Reply #36 on: 03-06-08 at 11:34 am »

bump
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Repeating experiments since 1998.
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