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2139 Rejections Under Pre-AIA 35 U.S.C. 102 [R-10.2019]

Any application filed before March 16, 2013, is governed by pre-AIA 35 U.S.C. 102 and 103 (i.e., the application is a pre-AIA first to invent application). Note that neither the filing of a request for continued examination, nor entry into the national stage under 35 U.S.C. 371, constitutes the filing of a new application. Accordingly, such an application remains subject to pre-AIA 35 U.S.C. 102 and 103 even if a request for continued examination under 37 CFR 1.114 is filed on or after March 16, 2013, in an application that was filed before March 16, 2013. Similarly, a PCT application filed under 35 U.S.C. 363 before March 16, 2013, is subject to pre-AIA 35 U.S.C. 102 and 103, regardless of whether the application enters the national stage under 35 U.S.C. 371 before or after March 16, 2013.

Certain applications filed on or after March 16, 2013 that claim the benefit of a filing date earlier than March 16, 2013 under 35 U.S.C. 120, 121, or 365 are also governed by pre-AIA 35 U.S.C. 102; see MPEP § 2159et seq. for guidance in determining whether such an application is subject to examination under the first to invent prior art regime.

2139.01 Effective Filing Date of a Claimed Invention Under Pre-AIA 35 U.S.C. 102 [R-10.2019]

In examining applications subject to pre-AIA 35 U.S.C. 102, the effective filing date of the claimed invention is the actual filing date of the U.S. application, unless situation (A), (B), or (C) as set forth below applies. Note that the actual U.S. filing date of an application that entered the national stage under 35 U.S.C. 371 is the international filing date. See 35 U.S.C. 363 and MPEP § 1893.03(b).

  • (A) If the application is a continuation or divisional of one or more earlier U.S. applications or international applications and if the requirements of 35 U.S.C. 120 or 365(c) have been satisfied, the effective filing date of the claimed invention is the same as the earliest filing date in the line of continuation or divisional applications.
  • (B) If the application is a continuation-in-part of an earlier U.S. application or international application, any claims in the new application not supported by the specification and claims of the parent application have an effective filing date equal to the actual filing date of the new application. Any claims which are fully supported under 35 U.S.C. 112 by the earlier parent application have the effective filing date of that earlier parent application.
  • (C) If the application properly claims benefit under 35 U.S.C. 119(e) to a provisional application, the effective filing date of the claimed invention is the filing date of the provisional application for any claims which are fully supported under the first paragraph of 35 U.S.C. 112 by the provisional application.

The effective filing date for claims subject to pre-AIA 35 U.S.C. 102 is not the filing date of the foreign priority document, although the filing date of the foreign priority document may be used to overcome certain references. See MPEP § 2136.05et seq.

See MPEP § 1893.03(c), subsection III for benefit claims under 35 U.S.C. 119(e), 120, or 365(c) in an application that entered the national stage under 35 U.S.C. 371. See MPEP §§ 211.01(c) and 1895 for additional information on determining the effective filing dates of claimed inventions in a continuation, divisional, or continuation-in-part of a PCT application designating the U.S. See also MPEP §§ 1895.01 and 1896 which discuss differences between applications filed under 35 U.S.C. 111(a) and international applications that enter national stage under 35 U.S.C. 371.

2139.02 Determining Whether To Apply Pre-AIA 35 U.S.C. 102(a), (b), or (e) [R-10.2019]

[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159. See MPEP § 2152.05 for the examination of applications subject to the first inventor to file provisions of the AIA.]

I. PRE-AIA 35 U.S.C. 102(b)

First, the examiner should consider whether the reference qualifies as prior art under pre-AIA 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 claimed invention (MPEP § 2139.01), the reference qualifies as prior art under pre-AIA 35 U.S.C. 102(b).

Where the last day of the year dated from the date of publication falls on a Saturday, Sunday or federal holiday, the publication is not a statutory bar under pre-AIA 102(b) if the application was filed on the next succeeding business day. Ex parte Olah, 131 USPQ 41 (Bd. App. 1960) (The Board in Olah held that 35 U.S.C. 21(b) is applicable to the filing of an original application for patent and that applicant’s own activity will not bar a patent if the 1-year grace period expires on a Saturday, Sunday, or federal holiday and the application’s U.S. filing date is the next succeeding business day.). Despite changes to 37 CFR 1.6(a)(2) and 1.10 which permit the USPTO to accord a filing date to an application as of the date of deposit as Priority Mail Express® with the U.S. Postal Service in accordance with 37 CFR 1.10 (e.g., a Saturday filing date), the rule changes do not affect applicant’s concurrent right to defer the filing of an application until the next business day when the last day for "taking any action" falls on a Saturday, Sunday, or federal holiday (e.g., the last day of the 1-year grace period falls on a Saturday).

If there is evidence of public use or sale activity more than one year prior to the effective filing date of the claimed invention, a rejection should be made under pre-AIA 35 U.S.C. 102(b), which results in a statutory bar to obtaining a patent, rather than under pre-AIA 35 U.S.C. 102(a). Note that mere knowledge of the invention by the public does not warrant rejection under pre-AIA 35 U.S.C. 102(b), although public knowledge may provide grounds for rejection under pre-AIA 35 U.S.C. 102(a). See MPEP §§ 2132 and 2133.03(a).

II. PRE-AIA 35 U.S.C. 102(e)

If the publication or issue date of the reference is too recent for pre-AIA 35 U.S.C. 102(b) to apply, then the examiner should consider pre-AIA 35 U.S.C. 102(e).

Pre-AIA 35 U.S.C. 102(e) allows the use of certain international application publications and U.S. patent application publications, and certain U.S. patents as prior art under pre-AIA 35 U.S.C. 102(e) as of their respective U.S. filing dates, including certain international filing dates. The prior art date of a reference under pre-AIA 35 U.S.C. 102(e) may be the international filing date if the international filing date was on or after November 29, 2000, the international application designated the United States, and the international application was published by the World Intellectual Property Organization (WIPO) under the Patent Cooperation Treaty (PCT) Article 21(2) in the English language. See MPEP § 2136 for examination guidelines on the application of pre-AIA 35 U.S.C. 102(e). References based on international applications that were filed prior to November 29, 2000 are subject to the "pre-AIPA" version of 35 U.S.C. 102(e) in force on November 28, 2000. See subsection III, below and MPEP § 2136.03 for additional information.

In order to apply a reference under pre-AIA 35 U.S.C. 102(e), the inventive entity of the application must be different from that of the reference. Note that, where there are joint inventors, only one joint inventor needs to be different for the inventive entities to be different and a rejection under pre-AIA 35 U.S.C. 102(e) is applicable even if there are some joint inventors in common between the application and the reference.

35 U.S.C. 102 (pre-AIA)  Conditions for patentability; novelty and loss of right to patent.

*****

  • (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; or

*****

Pre-AIA 35 U.S.C. 102(e) has two separate clauses, namely, pre-AIA 35 U.S.C. 102(e)(1) for publications of patent applications and pre-AIA 35 U.S.C. 102(e)(2) for U.S. patents. Pre-AIA 35 U.S.C. 102(e)(1), in combination with pre-AIA 35 U.S.C. 374, created a new category of prior art by providing prior art effect for certain publications of patent applications, including certain international applications, as of their effectively filed dates in the United States (which include certain international filing dates). Under pre-AIA 35 U.S.C. 102(e), an international filing date which is on or after November 29, 2000 is the United States filing date if the international application designated the United States and was published by the World Intellectual Property Organization (WIPO) under the Patent Cooperation Treaty (PCT) Article 21(2) in the English language. Therefore, the prior art date of a reference under pre-AIA 35 U.S.C. 102(e) may be the international filing date (if all three conditions noted above are met) or an earlier U.S. filing date for which priority or benefit is properly claimed.

Publication under PCT Article 21(2) may result from a request for early publication by an applicant of an international application or after the expiration of 18-months after the earliest claimed priority date in an international application. International applications, which: (1) were filed prior to November 29, 2000, or (2) did not designate the U.S., or (3) were not published in English under PCT Article 21(2) by WIPO, may not be used to reach back (bridge) to an earlier filing date through a priority or benefit claim for prior art purposes under pre-AIA 35 U.S.C. 102(e). An international filing date which is on or after November 29, 2000 is a United States filing date for purposes of determining the earliest effective prior art date of a patent if the international application designated the United States and was published in the English language under PCT Article 21(2) by WIPO. No international filing dates prior to November 29, 2000 may be relied upon as a prior art date under pre-AIA 35 U.S.C. 102(e).

III. "PRE-AIPA" 35 U.S.C. 102(e) AS IN FORCE ON NOVEMBER 28, 2000

"Pre-AIPA" 35 U.S.C. 102  Conditions for patentability; novelty and loss of right to patent (as in force on November 28, 2000).

A person shall be entitled to a patent unless -

*****

  • (e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371(c) of this title before the invention thereof by the applicant for patent.

*****

Patents issued directly, or indirectly, from international applications filed before November 29, 2000 may only be used as prior art based on the provisions of pre-AIPA 35 U.S.C. 102(e) as in force on November 28, 2000. Thus, the pre-AIPA 35 U.S.C. 102(e) date of such a prior art patent is the earliest of the date of compliance with 35 U.S.C. 371(c)(1), (2) and (4), or the filing date of the later-filed U.S. continuing application that claimed the benefit of the international application. Publications of international applications filed before November 29, 2000 (which would include WIPO publications and U.S. publications of the national stage (35 U.S.C. 371)) do not have a pre-AIPA 35 U.S.C. 102(e) date at all (however, such publications are available as prior art under pre-AIA 35 U.S.C. 102(a) or (b) as of their publication date).

IV. PRE-AIA 35 U.S.C. 102(a)

Even if the reference is prior art under pre-AIA 35 U.S.C. 102(e), the examiner should still consider pre-AIA 35 U.S.C. 102(a) for two reasons. First, if the reference is a U.S. patent or patent application publication of, or claims benefit of, an international application, the publication of the international application under PCT Article 21(2) may be the earliest prior art date under pre-AIA 35 U.S.C. 102(a) for the disclosure. Second, references that are only prior art under pre-AIA 35 U.S.C. 102(e), (f), or (g) and applied in a rejection under pre-AIA 35 U.S.C. 103(a) are subject to being disqualified under pre-AIA 35 U.S.C. 103(c) if the reference and the application were commonly owned, or subject to an obligation of common assignment, at the time the invention was made. For pre-AIA 35 U.S.C. 102(a) to apply, the reference must have a publication date earlier in time than the effective filing date of the application under examination, and must not be the inventor or at least one joint inventor's own work.

If the claimed invention is the subject of activity by an entity other than the inventor(s), such as sale by another, manufacture by another or disclosure of the invention by at least one joint inventor to another entity then both pre-AIA 35 U.S.C. 102(a) and (b) may be applicable. If the evidence only points to knowledge within the year prior to the effective filing date then pre-AIA 35 U.S.C. 102(a) applies. However, no rejection under pre-AIA 35 U.S.C. 102(a) should be made if there is evidence that applicant made the invention and only disclosed it to others within the year prior to the effective filing date.

2139.03 Form Paragraphs for Use in Rejections Under Pre-AIA 35 U.S.C. 102 [R-10.2019]

The following form paragraphs should be used in making the appropriate rejections. Note that the particular part of the reference relied upon to support the rejection should be identified.

¶ 7.06 Notice re prior art available under both pre-AIA and AIA

In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.

Examiner Note:

  • 1.  This form paragraph must be used in all Office Actions when a prior art rejection is made in an application with an actual filing date on or after March 16, 2013, that claims priority to, or the benefit of, an application filed before March 16, 2013.
  • 2.  This form paragraph should only be used ONCE in an Office action.  

¶ 7.07.fti Statement of Statutory Basis, pre-AIA 35 U.S.C. 102

The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:

A person shall be entitled to a patent unless—

Examiner Note:

  • 1. The statute is no longer being re-cited in all Office actions. It is only required in first actions on the merits and final rejections. Where the statute is not being cited in an action on the merits, use form paragraph 7.103.
  • 2. Form paragraphs 7.07.fti to 7.14.fti are to be used ONLY ONCE in a given Office action.
  • 3. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.

¶ 7.08.fti Pre-AIA 102(a), Activity by Another Before Invention by Applicant

(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.

Examiner Note:

This form paragraph must be preceded by form paragraph 7.07.fti.

¶ 7.09.fti Pre-AIA 102(b), Activity More Than One Year Prior to Filing

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.

Examiner Note:

This form paragraph must be preceded by form paragraph 7.07.fti, and may be preceded by form paragraph 7.08.fti.

¶ 7.10.fti Pre-AIA 102(c), Invention Abandoned

(c) he has abandoned the invention.

Examiner Note:

This form paragraph must be preceded by form paragraph 7.07.fti, and may be preceded by one or more of form paragraphs 7.08.fti and 7.09.fti.

¶ 7.11.fti Pre-AIA 102(d), Foreign Patenting

(d) the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than twelve months before the filing of the application in the United States.

Examiner Note:

This form paragraph must be preceded by form paragraph 7.07.fti, and may be preceded by one or more of form paragraphs 7.08.fti to 7.10.fti.

¶ 7.12.fti Pre-AIA 35 U.S.C 102(e), Patent Application Publication or Patent to Another with Earlier Filing Date, in view of the American Inventors Protection Act of 1999 (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002

(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 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.

Examiner Note:

  • 1. This form paragraph should only be used if the reference is one of the following:
    • a U.S. patent or a publication of a U.S. application for patent filed under 35 U.S.C. 111(a);
    • a U.S. patent issued directly or indirectly from, or a U.S. or WIPO publication of, an international application (i.e., a PCT application) if the international application has an international filing date on or after November 29, 2000;
    • a U.S. patent issued from, or a WIPO publication of, an international design application that designates the United States.
  • 2. In determining the pre-AIA 35 U.S.C. 102(e) date, consider benefit claims to earlier-filed U.S. provisional applications under 35 U.S.C. 119(e), and to earlier-filed U.S. nonprovisional applications and international applications under 35 U.S.C. 120, 121, 365(c), or 386(c) if the subject matter used to make the rejection is appropriately supported in the relied upon earlier-filed application’s disclosure (and any intermediate application(s)). Do NOT consider foreign priority claims under 35 U.S.C. 119(a) - (d), 365(a) or (b), or 386(a) or (b).

    In addition, a reference (i.e., a U.S. patent, published U.S. patent application, or WIPO publication) is entitled to the benefit of the filing date of a provisional application only if at least one of the claims in the reference is supported by the written description of the provisional application in compliance with pre-AIA 35 U.S.C. 112, first paragraph or 35 U.S.C. 112(a). See Dynamic Drinkware, LLC, v. National Graphics, Inc., 800 F.3d 1375, 116 USPQ2d 1045 (Fed. Cir. 2015) and Amgen v. Sanofi, 872 F.3d 1367, 1380 (Fed. Cir. 2017).

  • 3. In order to rely on an international filing date for prior art purposes under pre-AIA 35 U.S.C. 102(e), the international application (PCT) must have been filed on or after November 29, 2000, it must have designated the U.S., and the international publication under PCT Article 21(2) by WIPO must have been in English. If any one of the conditions is not met, the international filing date is not a U.S. filing date for prior art purposes under pre-AIA 35 U.S.C. 102(e).
  • 4. If an international application (PCT) was published by WIPO in a language other than English, or did not designate the U.S., the international application’s publication by WIPO, the U.S. publication of the national stage application (35 U.S.C. 371) of the international application and a U.S. patent issued from the national stage of the international application may not be applied as a reference under pre-AIA 35 U.S.C. 102(e). The reference may be applied under pre-AIA 35 U.S.C. 102(a) or (b) as of its publication date. See form paragraphs 7.08.fti and 7.09.fti.
  • 5. If an international application (PCT) was published by WIPO in a language other than English, the U.S. publication of, or a U.S. patent issued from, a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to such an international application, has a pre-AIA 35 U.S.C. 102(e) date as of the earliest U.S. filing date after the international filing date.
  • 6. If the reference is a U.S. patent issued directly, or indirectly, from an international application (PCT) that has an international filing date prior to November 29, 2000, use form paragraph 7.12.01.fti. In that situation, pre-AIPA 35 U.S.C. 102(e) is applicable in the determination of the prior art date of the patent issued from such an international application.
  • 7. If the reference is a publication of an international application (PCT), including the U.S. publication of a national stage (35 U.S.C. 371), that has an international filing date prior to November 29, 2000, do not use this form paragraph. Such a reference may not be applied as a prior art reference under pre-AIA 35 U.S.C. 102(e). The reference may be applied under pre-AIA 35 U.S.C. 102(a) or (b) as of its publication date. See form paragraphs 7.08.fti and 7.09.fti.
  • 8. This form paragraph must be preceded by form paragraph 7.07.fti, and may be preceded by one or more of form paragraphs 7.08.fti to 7.11.fti.

¶ 7.12.01.fti Pre-AIPA 35 U.S.C. 102(e), Patent to Another with Earlier Filing Date, Reference is a U.S. Patent Issued Directly or Indirectly From a National Stage of, or a Continuing Application Claiming Benefit to, an International Application Having an International Filing Date Prior to November 29, 2000

(e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371(c) of this title before the invention thereof by the applicant for patent.

The changes made to 35 U.S.C. 102(e) by the American Inventors Protection Act of 1999 (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002 do not apply when the reference is a U.S. patent resulting directly or indirectly from an international application filed before November 29, 2000. Therefore, the prior art date of the reference is determined under 35 U.S.C. 102(e) prior to the amendment by the AIPA (pre-AIPA 35 U.S.C. 102(e)).

Examiner Note:

  • 1. This form paragraph should only be used if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000, or a continuing application claiming benefit to an international application having an international filing date prior to November 29, 2000.
  • 2. If the reference is a U.S. patent issued directly from a national stage of such an international application, the reference’s pre-AIPA 35 U.S.C. 102(e) date is the date that the requirements of 35 U.S.C. 371(c)(1), (2) and (4) were fulfilled. The language of WIPO publication (PCT) is not relevant in this situation. Caution: the international publication of the international application (PCT) by WIPO may have an earlier prior art date under pre-AIA 35 U.S.C. 102(a) or pre-AIA 102(b).
  • 3. If the reference is a U.S. patent issued directly from a continuing application claiming benefit under 35 U.S.C. 120, 121 or 365(c) to such an international application (which had not entered the national stage prior to the continuing application’s filing date, otherwise see note 4), the prior art reference’s pre-AIPA 35 U.S.C. 102(e) date is the actual U.S. filing date of the continuing application. Caution: the international publication of the international application (PCT) by WIPO may have an earlier prior art date under pre-AIA 35 U.S.C. 102(a) or pre-AIA 102(b).
  • 4. In determining the pre-AIPA 35 U.S.C. 102(e) date, consider benefit claims to earlier-filed U.S. provisional applications under 35 U.S.C. 119(e), and to earlier-filed U.S. nonprovisional applications and international applications under 35 U.S.C. 120, 121, 365(c), or 386(c) only if the subject matter used to make the rejection is appropriately supported in the relied upon earlier-filed application’s disclosure (and any intermediate application(s)). A benefit claim to a U.S. patent of an earlier-filed international application may only result in an effective U.S. filing date as of the date the requirements of 35 U.S.C. 371(c)(1), (2) and (4) were fulfilled. Do NOT consider any benefit claims to U.S. applications which are filed before an international application. Do NOT consider foreign priority claims under 35 U.S.C. 119(a)-(d), 365(a) or (b), or 386(a) or (b).

    In addition, a reference (i.e., a U.S. patent, published U.S. patent application, or WIPO publication) is entitled to the benefit of the filing date of a provisional application only if at least one of the claims in the reference is supported by the written description of the provisional application in compliance with pre-AIA 35 U.S.C. 112, first paragraph or 35 U.S.C. 112(a). See Dynamic Drinkware, LLC, v. National Graphics, Inc., 800 F.3d 1375, 116 USPQ2d 1045 (Fed. Cir. 2015) and Amgen v. Sanofi, 872 F.3d 1367, 1380 (Fed. Cir. 2017).

  • 5. This form paragraph must be preceded by form paragraph 7.07.fti, and may be preceded by one or more of form paragraphs 7.08.fti to 7.11.fti.

¶ 7.13.fti Pre-AIA 102(f), Applicant Not the Inventor

(f) he did not himself invent the subject matter sought to be patented.

Examiner Note:

  • This form paragraph must be preceded by form paragraph 7.07.fti, and may be preceded by one or more of form paragraphs 7.08.fti to 7.12.fti.

¶ 7.14.fti Pre-AIA 102(g), Priority of Invention

(g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

Examiner Note:

  • This form paragraph must be preceded by form paragraph 7.07.fti, and may be preceded by one or more of form paragraphs 7.08.fti to 7.13.fti.

¶ 7.15.fti Rejection, Pre-AIA 35 U.S.C. 102(a), (b) Patent or Publication, and (g)

Claim(s) [1] is/are rejected under pre-AIA 35 U.S.C. 102[2] as being [3] by [4].

Examiner Note:

  • 1. In bracket 2, insert the appropriate paragraph letter or letters of pre-AIA 35 U.S.C. 102 in parentheses. If paragraph (e) of pre-AIA 35 U.S.C. 102 is applicable, use form paragraph 7.15.01.fti, 7.15.02.fti or 7.15.03.fti.
  • 2. In bracket 3, insert either --clearly anticipated-- or --anticipated-- with an explanation at the end of the paragraph.
  • 3. In bracket 4, insert the prior art relied upon.
  • 4. This rejection must be preceded either by form paragraph 7.07.fti and form paragraphs 7.08.fti, 7.09.fti, and 7.14.fti as appropriate, or by form paragraph 7.103.
  • 5. If pre-AIA 35 U.S.C. 102(e) is also being applied, this form paragraph must be followed by either form paragraph 7.15.01.fti, 7.15.02.fti or 7.15.03.fti.
  • 6. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.

¶ 7.15.01.fti Provisional Rejection, Pre-AIA 35 U.S.C. 102(e) - Common Assignee, Common Applicant, or At Least One Common Joint Inventor

Claim(s) [1] is/are provisionally rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by copending Application No. [2] which has a common [3] with the instant application.

Based upon the earlier effective U.S. filing date of the copending application, it would constitute prior art under pre-AIA 35 U.S.C. 102(e), if published under 35 U.S.C. 122(b) or patented. This provisional rejection under pre-AIA 35 U.S.C. 102(e) is based upon a presumption of future publication or patenting of the copending application. [4].

This provisional rejection under pre-AIA 35 U.S.C. 102(e) might be overcome either by a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the copending application was derived from the inventor of this application and is thus not the invention "by another," or by an appropriate showing under 37 CFR 1.131(a).

This rejection may not be overcome by the filing of a terminal disclaimer. See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991).

Examiner Note:

  • 1. This form paragraph is used to provisionally reject over a copending application with an earlier filing date that discloses the claimed invention which has not been published under 35 U.S.C. 122. The copending application must have either a common assignee, a common applicant (35 U.S.C. 118), or at least one common joint inventor.
  • 2. Use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002 (form paragraph 7.12.fti) to determine the copending application’s prior art date, unless the copending application is based directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. If the copending application is either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000, or a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000, use pre-AIPA 35 U.S.C. 102(e) (form paragraph 7.12.01.fti). See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s 35 U.S.C. 102(e) date.
  • 3. If the claims would have been obvious over the invention disclosed in the other copending application, use form paragraph 7.21.01.fti.
  • 4. In bracket 3, insert --assignee--, --applicant--, or --joint inventor--.
  • 5. In bracket 4, an appropriate explanation may be provided in support of the examiner’s position on anticipation, if necessary.
  • 6. Under 35 U.S.C. 101, two patents are not permitted to issue on identical subject matter. Any claims in the instant application directed to the same invention claimed in the reference should be provisionally rejected using form paragraphs 8.30 and 8.32. Additionally, the applicant should be required to amend or cancel claims such that the applied reference and the instant application no longer contain claims directed to the same invention using form paragraph 8.27.fti.
  • 7. Any claims in the instant application that are directed to subject matter that is not patentably distinct from an invention claimed in the reference should be rejected (or provisionally rejected if the reference has not yet issued as a patent) on the grounds of nonstatutory double patenting using form paragraph 8.33 and at least one of form paragraphs 8.34 - 8.39.
  • 8. If evidence is additionally of record to show that either invention is prior art to the other under pre-AIA 35 U.S.C. 102(f) or (g), a rejection using form paragraphs 7.13.fti and/or 7.14.fti should also be made.
  • 9. For applications with an actual filing date on or after March 16, 2013 that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.

¶ 7.15.02.fti Rejection, Pre-AIA 35 U.S.C. 102(e), Common Assignee, Applicant, or Joint Inventor

Claim(s) [1] is/are rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by [2].

The applied reference has a common [3] with the instant application. Based upon the earlier effective U.S. filing date of the reference, it constitutes prior art under pre-AIA 35 U.S.C. 102(e). This rejection under pre-AIA 35 U.S.C. 102(e) might be overcome either by a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the reference was derived from the inventor or joint inventors (i.e., the inventive entity) of this application and is thus not the invention "by another," or if the same invention is not being claimed, by an appropriate showing under 37 CFR 1.131(a).

Examiner Note:

  • 1. This form paragraph is used to reject over a patent or patent application publication with an earlier effective filing date. The patent or patent application publication must have either a common assignee, a common applicant (35 U.S.C. 118), or a common joint inventor.
  • 2. Pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act of 1999 (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002 (form paragraph 7.12.fti) must be applied if the reference is by another and is one of the following:
    • a U.S. patent or a publication of a U.S. application for patent filed under 35 U.S.C. 111(a);
    • a U.S. patent issued directly or indirectly from, or a U.S. or WIPO publication of, an international application (PCT) if the international application has an international filing date on or after November 29, 2000;
    • a U.S. patent issued from, or a WIPO publication of, an international design application that designates the United States.

    See the Examiner Notes for form paragraph 7.12.fti to assist in the determination of the pre-AIA 35 U.S.C. 102(e) date of the reference.

  • 3. Pre-AIPA 35 U.S.C. 102(e) (form paragraph 7.12.01.fti) must be applied if the reference is a U.S. patent issued directly, or indirectly, from an international application filed prior to November 29, 2000. See the Examiner Notes for form paragraph 7.12.01.fti to assist in the determination of the pre-AIPA 35 U.S.C. 102(e) date of the reference.
  • 4. In determining the pre-AIA 35 U.S.C. 102(e) date, consider benefit claims to earlier-filed U.S. provisional applications under 35 U.S.C. 119(e), and to earlier-filed U.S. nonprovisional applications and international applications under 35 U.S.C. 120, 121, 365(c), or 386(c) if the subject matter used to make the rejection is appropriately supported in the relied upon earlier-filed application’s disclosure (and any intermediate application(s)). A benefit claim to a U.S. patent of an earlier-filed international application, which has an international filing date prior to November 29, 2000, may only result in an effective U.S. filing date as of the date the requirements of 35 U.S.C. 371(c)(1), (2) and (4) were fulfilled. Do NOT consider any benefit claims to U.S. applications which are filed before an international application that has an international filing date prior to November 29, 2000. Do NOT consider foreign priority claims under 35 U.S.C. 119(a) - (d), 365(a) or (b), or 386(a) or (b).

    In addition, a reference (i.e., a U.S. patent, published U.S. patent application, or WIPO publication) is entitled to the benefit of the filing date of a provisional application only if at least one of the claims in the reference is supported by the written description of the provisional application in compliance with pre-AIA 35 U.S.C. 112, first paragraph or 35 U.S.C. 112(a). See Dynamic Drinkware, LLC, v. National Graphics, Inc., 800 F.3d 1375, 116 USPQ2d 1045 (Fed. Cir. 2015) and Amgen v. Sanofi, 872 F.3d 1367, 1380 (Fed. Cir. 2017).

  • 5. If the reference is a publication of an international application (PCT), including voluntary U.S. publication under 35 U.S.C. 122 of the national stage or a WIPO PCT publication, that has an international filing date prior to November 29, 2000, did not designate the United States or was not published in English by WIPO, do not use this form paragraph. Such a reference is not a prior art reference under pre-AIA 35 U.S.C. 102(e). The reference may be applied under pre-AIA 35 U.S.C. 102(a) or (b) as of its publication date. See form paragraphs 7.08.fti and 7.09.fti.
  • 6. In bracket 3, insert --assignee--, --applicant--, or --joint inventor--.
  • 7. This form paragraph must be preceded by either of form paragraphs 7.12.fti or 7.12.01.fti.
  • 8. Patent application publications may only be used if this form paragraph was preceded by form paragraph 7.12.fti.
  • 9. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
  • 10. Under 35 U.S.C. 101, two patents are not permitted to issue on identical subject matter. Any claims in the instant application directed to the same invention claimed in the reference should be rejected (or provisionally rejected if the reference has not yet issued as a patent) using form paragraphs 8.30 - 8.32. Additionally, the applicant should be required to resolve any issue of priority under pre-AIA 35 U.S.C. 102(g) and possibly pre-AIA 35 U.S.C. 102(f) using form paragraph 8.27.fti. See MPEP § 804, subsection II.A.
  • 11. Any claims in the instant application that are directed to subject matter that is not patentably distinct from an invention claimed in the reference should be rejected (or provisionally rejected if the reference has not yet issued as a patent) on the grounds of nonstatutory double patenting using form paragraph 8.33 and at least one of form paragraphs 8.34 - 8.39.

¶ 7.15.03.fti Rejection, pre-AIA 35 U.S.C. 102(e), No Common Assignee or Inventor(s)

Claim(s) [1] is/are rejected under pre-AIA 35 U.S.C. 102(e) as being [2] by [3].

Examiner Note:

  • 1. This form paragraph is used to reject over a patent or patent application publication with an earlier filing date. The patent or patent application publication is not required to have a common assignee or a common inventor.
  • 2. Pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act of 1999 (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002 (form paragraph 7.12.fti) must be applied if the reference is one of the following:
    • a U.S. patent or a publication of a U.S. application for patent filed under 35 U.S.C. 111(a);
    • a U.S. patent issued directly or indirectly from, or a U.S. or WIPO publication of, an international application (PCT) if the international application has an international filing date on or after November 29, 2000;
    • a U.S. patent issued from, or a WIPO publication of, an international design application that designates the United States.

    See the Examiner Notes for form paragraph 7.12.fti to assist in the determination of the pre-AIA 35 U.S.C. 102(e) date of the reference.

  • 3. Pre-AIPA 35 U.S.C. 102(e) (form paragraph 7.12.01.fti) must be applied if the reference is a U.S. patent issued directly, or indirectly, from an international application filed prior to November 29, 2000. See the Examiner Notes for form paragraph 7.12.01.fti to assist in the determination of the pre-AIPA 35 U.S.C. 102(e) date of the reference.
  • 4. In determining the pre-AIA 35 U.S.C. 102(e) date, consider benefit claims to earlier-filed U.S. provisional applications under 35 U.S.C. 119(e), and to earlier-filed U.S. nonprovisional applications and international applications under 35 U.S.C. 120, 121, 365(c), or 386(c) if the subject matter used to make the rejection is appropriately supported in the relied upon earlier-filed application’s disclosure (and any intermediate application(s)). A benefit claim to a U.S. patent of an earlier-filed international application, which has an international filing date prior to November 29, 2000, may only result in an effective U.S. filing date as of the date the requirements of 35 U.S.C. 371(c)(1), (2) and (4) were fulfilled. Do NOT consider any benefit claims to U.S. applications which are filed before an international application that has an international filing date prior to November 29, 2000. Do NOT consider foreign priority claims under 35 U.S.C. 119(a) - (d), 365(a) or (b), or 35 U.S.C. 386(a) or (b).

    In addition, a reference (i.e., a U.S. patent, published U.S. patent application, or WIPO publication) is entitled to the benefit of the filing date of a provisional application only if at least one of the claims in the reference is supported by the written description of the provisional application in compliance with pre-AIA 35 U.S.C. 112, first paragraph or 35 U.S.C. 112(a). See Dynamic Drinkware, LLC, v. National Graphics, Inc., 800 F.3d 1375, 116 USPQ2d 1045 (Fed. Cir. 2015) and Amgen v. Sanofi, 872 F.3d 1367, 1380 (Fed. Cir. 2017).

  • 5. If the reference is a publication of an international application (PCT), including voluntary U.S. publication under 35 U.S.C. 122 of the national stage or a WIPO (PCT) publication, that has an international filing date prior to November 29, 2000, did not designate the United States or was not published in English by WIPO, do not use this form paragraph. Such a reference is not a prior art reference under pre-AIA 35 U.S.C. 102(e). The reference may be applied under pre-AIA 35 U.S.C. 102(a) or (b) as of its publication date. See form paragraphs 7.08.fti and 7.09.fti.
  • 6. In bracket 2, insert either --clearly anticipated-- or --anticipated-- with an explanation at the end of the paragraph.
  • 7. In bracket 3, insert the prior art relied upon.
  • 8. This form paragraph must be preceded by either of form paragraphs 7.12.fti or 7.12.01.fti.
  • 9. Patent application publications may only be used if this form paragraph was preceded by form paragraph 7.12.fti.

¶ 7.16.fti Rejection, pre-AIA 35 U.S.C. 102(b), Public Use or on Sale

Claim [1] rejected under pre-AIA 35 U.S.C. 102(b) based upon a public use or sale of the invention. [2]

Examiner Note:

  • 1. This form paragraph must be preceded either by form paragraphs 7.07.fti and 7.09.fti or by form paragraph 7.103.
  • 2. A full explanation of the evidence establishing a public use or sale must be provided in bracket 2.

¶ 7.17.fti Rejection, pre-AIA 35 U.S.C. 102(c), Abandonment of Invention

Claim [1] rejected under pre-AIA 35 U.S.C. 102(c) because the invention has been abandoned. [2]

Examiner Note:

  • 1. This form paragraph must be preceded either by form paragraph 7.07.fti and 7.10.fti or by form paragraph 7.103.
  • 2. In bracket 2, insert a full explanation of the evidence establishing abandonment of the invention. See MPEP § 2134.

¶ 7.18.fti Rejection, pre-AIA 35 U.S.C. 102(d), Foreign Patenting

Claim [1] rejected under pre-AIA 35 U.S.C. 102(d) as being barred by applicants [2]. [3]

Examiner Note:

¶ 7.19.fti Rejection, pre-AIA 35 U.S.C. 102(f), Applicant Not the Inventor

Claim [1] is/are rejected under pre-AIA 35 U.S.C. 102(f) because the applicant did not invent the claimed subject matter. [2]

Examiner Note:

  • 1. This paragraph must be preceded either by paragraphs 7.07.fti and 7.13.fti or by paragraph 7.103.
  • 2. In bracket 2, insert an explanation of the supporting evidence establishing that applicant was not the inventor. See MPEP § 2137.

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