Example: Improper Prior Art Exclusion under 35 U.S.C. § 103(c)
01 Nov 1998 - Reference A filed as a § 111(a) patent application
01 Feb 2000 - Reference A issues as a U.S. Patent
01 Mar 2000 - Application X filed as a § 111(a) patent application
Check to see if the reference that is being excluded only qualifies as prior art under 35 U.S.C. § 102(e), (f) or (g) (cont.)
In this example, Reference A is prior art under 35 U.S.C. § 102(a) (issued on 02/01/2000) and § 102(e) (filed on 11/01/1998). Therefore, applicant’s attempt to exclude Reference A by just the exclusion under 35 U.S.C. § 103(c) will not be sufficient to overcome the prior art rejection. Applicant will need to take further action such as swearing behind the issue date of Reference A by using a rule 131 declaration or affidavit to disqualify the reference as prior art under § 102(a).