102‎ > ‎

2136

2136    35 U.S.C. 102(e) [R-3]>

I.    < STATUTORY INVENTION REGISTRATIONS (SIRs) ARE ELIGIBLE AS PRIOR ART UNDER 35 U.S.C. 102(e)>

II.    < DEFENSIVE PUBLICATIONS ARE NOT PRIOR ART AS OF THEIR FILING DATE


2136.01   Status of U.S. Application as a Reference [R-3]>

 I.    < WHEN THERE IS NO COMMON ASSIGNEE OR INVENTOR, A U.S. APPLICATION MUST ISSUE AS A PATENT OR BE PUBLISHED AS A SIR OR AS AN APPLICATION PUBLICATION BEFORE IT IS AVAILABLE AS PRIOR ART UNDER 35 U.S.C. 102(e)>

II.    < WHEN THERE IS A COMMON ASSIGNEE OR INVENTOR, A PROVISIONAL 35 U.S.C. 102(e) REJECTION OVER AN EARLIER FILED UNPUBLISHED APPLICATION CAN BE MADE


2136.02   Content of the Prior Art Available Against the Claims [R-3]>

I.    < A 35 U.S.C. 102(e) REJECTION MAY RELY ON ANY PART OF THE PATENT OR APPLICATION PUBLICATION DISCLOSURE >

II.    < REFERENCE MUST ITSELF CONTAIN THE SUBJECT MATTER RELIED ON IN THE REJECTION>


III.    < THE SUPREME COURT HAS AUTHORIZED 35 U.S.C. 103 REJECTIONS BASED ON 35 U.S.C. 102(e)


2136.03   Critical Reference Date [R-6]

I.   FOREIGN PRIORITY DATE
  Reference’s Foreign Priority Date Under 35 U.S.C. 119(a)-(d) and (f) Cannot Be Used as the 35 U.S.C. 102(e) Reference Date

II.   INTERNATIONAL (PCT) APPLICATIONS; INTERNATIONAL APPLICATION PUBLICATIONS


III.   PRIORITY FROM PROVISIONAL APPLICATION UNDER 35 U.S.C. 119(e)

IV.   PARENT’S FILING DATE WHEN REFERENCE IS A CONTINUATION-IN-PART OF THE PARENT
  Filing Date of U.S. Parent Application Can Only Be Used as the 35 U.S.C. 102(e) Date If It Supports the ** > Subject Matter Relied Upon in the < Child

V.   DATE OF CONCEPTION OR REDUCTION TO PRACTICE
35 U.S.C. 102(e) Reference Date Is the Filing Date Not Date of Inventor’s Conception or Reduction to Practice

2136.04   Different Inventive Entity; Meaning of “By Another” [R-1]


IF THERE IS ANY DIFFERENCE IN THE INVENTIVE ENTITY, THE REFERENCE IS “BY ANOTHER” A DIFFERENT INVENTIVE ENTITY IS PRIMA FACIE EVIDENCE THAT THE REFERENCE IS “BY ANOTHER”

2136.05   Overcoming a Rejection Under 35 U.S.C. 102(e) [R-1]


A 35 U.S.C. 102(e) REJECTION CAN BE OVERCOME BY ANTEDATING THE FILING DATE OR SHOWING THAT DISCLOSURE RELIED ON IS APPLICANT'S OWN WORK
A 35 U.S.C. 102(e) REJECTION CAN BE OVERCOME BY SHOWING THE REFERENCE IS DESCRIBING APPLICANT’S OWN WORK

Reliance on this statement in arriving at the conclusion that the claims would have been obvious is improper, as it amounts to using Appellant’s own disclosure in the present application against him. See In re Katz, 687 F.2d 450 (CCPA 1982).

APPLICANT NEED NOT SHOW DILIGENCE OR REDUCTION TO PRACTICE WHEN THE SUBJECT MATTER DISCLOSED IN THE REFERENCE IS APPLICANT’S OWN WORK

CLAIMING OF INDIVIDUAL ELEMENTS OR SUBCOMBINATIONS IN A COMBINATION CLAIM OF THE REFERENCE DOES NOT ITSELF ESTABLISH THAT THE PATENTEE INVENTED THOSE ELEMENTS
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