The CIP was filed over one year after publication of the commonly owned parent.  Every claim in the CIP contains new matter.  My understanding is that all the claims in the CIP are given their actual filing date rather than the parent's filing date.  Therefore the parent may be used as a 102b/103 reference.  The Examiner's rejection states the same.

Here's the situation - my boss is adamant that every claim element in the CIP which was disclosed in the parent cannot be used in a 103 rejection against the CIP.  In other words, nothing disclosed in a parent may be used in a 103 rejection against the child.

I disagree.  I have very limited experience to draw on, but every source I have consulted states that priority is broken down on a claim-by-claim basis, rather than an element-by-element basis.  Obviously the MPEP is one of those sources.

Does anyone know which position is correct?  I would like a little more confidence before I go back and take my 5 months of experience and challenge the 60+ years of experience collectively held by my boss and our other attorney.

Thanks tons.

QuoteI disagree.  I have very limited experience to draw on, but every source I have consulted states that priority is broken down on a claim-by-claim basis, rather than an element-by-element basis.  Obviously the MPEP is one of those sources.

PatentDave's position is correct and PatentDave's boss is incorrect.   Use this knowledge wisely.

Somewhere in these fora we discussed an on point case directly addressing this point, but I cannot remember the case name.  Sorry about that.
 

Thanks much.  The MPEP cites some cases that I need to look into.  Also, I will search deeper into the forum to see if I can find the case you've referred to.

Thanks tons,

Dave

Only the claims of the continuation-in-part application that are disclosed in the manner provided by the first paragraph of 35 U.S.C. 112 in the prior-filed application are entitled to the benefit of the filing date of the prior-filed application.  MPEP 201.11

If the independent claim in the CIP is not supported by the parent, then none of your claims will benefit from the priority date of the parent.  If your independent claim is supported, however, then it will benefit from the priority date, but ever dependent claim thereafter will have to be supported by the parent spec for it to benefit from the parent's date.  

So you're right, and your boss is wrong.  

Quote
Here's the situation - my boss is adamant that every claim element in the CIP which was disclosed in the parent cannot be used in a 103 rejection against the CIP.  In other words, nothing disclosed in a parent may be used in a 103 rejection against the child.

Thanks tons.

It is probable that your boss was trying to mean that each and every element in the previous claims serve as a disclosure, a sort of part of specification and thus they can't be used in a 103 rejection against the CIP.

QuoteThanks much.  The MPEP cites some cases that I need to look into.  Also, I will search deeper into the forum to see if I can find the case you've referred to.

Thanks tons,

Dave

I believe the case is "In re Chu" and was a 1995 CAFC case.  

I don't know,
If this is the case (36 USPQ2d 1089: In re Chu (1995)),

it appears the parent may be relied upon as prior art.  This case was reevaluated for obviousness, and found non-obvious even in light of parent. (Doyle-parent, Chu-child).

"Thus, Chu is entitled to the benefit of the Doyle patent filing date only if the Doyle patent discloses the subject matter now  claimed by Chu. This, however, is admitted by Chu not to be the case. In fact, Chu states that "the invention as now claimed[ ] was not described in the [Doyle] patent." Specifically, Chu concedes that "nothing in Doyle suggests that SCR catalyst be placed inside the bag filter." Therefore, independent claim 1, which includes this limitation, and dependent claims 2, 4, and 14, are not supported by the Doyle patent disclosure. Accordingly, Chu cannot obtain the benefit of the Doyle patent filing date for these claims and the Doyle patent was properly relied on as prior art."

Thanks for the case.  That was exactly what I was looking for.  

103(c) might not be the exact line of reasoning your boss was using (he was probably just assuming that the parent could not antitipate the CIP as to subject matter disclosed in the parent and claimed in the CIP).  However, it's something else to consider in the analysis.  If it were only a 102(e-g) reference it couldn't anticipate, but here it is a 102(b) reference.

Subject matter developed by another person, which qualifies as prior art ***only under one or more of subsections (e), (f), and (g)*** of 35 U.S.C. § 102 shall not preclude patentability under §103 where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.  35 U.S.C. § 103(c)(1); see also MPEP §§ 2146, 706.02(l)(2)-(3).  Applications and references will be considered by the examiner to be owned by the same person at the time the invention was made if the applicant(s) or an attorney or agent of record makes a statement to the effect that the application and the reference were, at the time the invention was made, owned by, or subject to an obligation of assignment to, the same person.  MPEP § 706.02(l)(2)(II).

I read In re Chu and it was very helpful.  However, there is something else that I failed to initially mention.  The OA provided two bases for rejection.  The first was the use of the parent in a 102b/103 rejection(previously discussed). The other was an obviousness type double patenting rejection.  

This is the second OA, and a terminal disclaimer has already been filed, but the examiner stands by his 103 rejection.  Does a terminal disclaimer eliminate the parent for use in a 103 rejection?

37 CFR 1.130(a) states that when any claim is rejected under 103 on a U.S. patent "which is not prior art under 35 U.S.C. 102(b)", and the claims are not identical nor patentably distinct, a common owner may file a terminal disclaimer to disqualify the patent as prior art.  

When this refers to 102b prior art, is it specifying prior art that contains all of the limitations of the claimed invention, and could then be used as a 102b anticipatory rejection, or is it specifying patents or publications which could qualify as 102b prior art (one year since patenting/publishing), but do not necessarily contain every element, and as such is being used in a 103 rejection?

Phrased another way, when the MPEP here refers to "prior art under 102b" is it specifying references that can be used for 102b rejections, or references that could qualify for a 102b rejection due to the one year time period?

I'd be extremely grateful if anyone could clarify this situation for me.  

A.     35 U.S.C. 102(b)

First, the examiner should consider whether the reference qualifies as prior art under 35 U.S.C. 102(b) because this section results in a statutory bar to obtaining a patent. If the publication or issue date of the reference is more than 1 year prior to the effective filing date of the application ( MPEP § 706.02), the reference qualifies as prior art under 35 U.S.C. 102(b).

Quote37 CFR 1.130(a) states that when any claim is rejected under 103 on a U.S. patent "which is not prior art under 35 U.S.C. 102(b)", and the claims are not identical nor patentably distinct, a common owner may file a terminal disclaimer to disqualify the patent as prior art.

Wouldn't it be pretty silly if a reference had to anticipate a claim to be used in a 103 rejection against that same claim.  

Your situation appears to be completely analogous to In re Chu.

Isaac,

Thank you again.