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2136.02 Content of the Prior Art Available Against the Claims [R-1] - 2100 Patentability
2136.02 Content of the Prior Art Available Against the Claims [R-1]
A 35 U.S.C. 102(e) REJECTION MAY RELY ON ANY PART OF THE PATENT OR APPLICATION PUBLICATION DISCLOSURE
Under 35 U.S.C. 102(e), the entire disclosure of a U.S. patent, **>a U.S. patent< application publication **>, or an international application publication< having an earlier >effective U.S.< filing date >(which will include certain international filing dates)< can be relied on to reject the claims. Sun Studs, Inc. v. ATA Equip. Leasing, Inc., 872 F.2d 978, 983, 10 USPQ2d 1338, 1342 (Fed. Cir. 1989). >See MPEP § 706.02(a).<
* REFERENCE MUST ITSELF CONTAIN THE SUBJECT MATTER RELIED ON IN THE REJECTION
When a U.S. patent, **>a U.S. patent< application publication **>, or an international application publication< is used to reject claims under 35 U.S.C. 102(e), the disclosure relied on in the rejection must be present in the issued patent or application publication. It is the >earliest effective U.S.< filing date >(which will include certain international filing dates)< of the U.S. patent or application publication being relied on as the critical reference date and subject matter not included in the patent or application publication itself can only be used when that subject matter becomes public. Portions of the patent application which were canceled are not part of the patent or application publication and thus cannot be relied on in a 35 U.S.C. 102(e) rejection over the issued patent or application publication. Ex parte Stalego, 154 USPQ 52 (Bd. App. 1966). Likewise, subject matter which is disclosed in a parent application, but not included in the child continuation-in-part (CIP) cannot be relied on in a 35 U.S.C. 102(e) rejection over the issued or published CIP. In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967) (The examiner made a 35 U.S.C. 102(e) rejection over an issued U.S. patent which was a continuation-in-part (CIP). The parent application of the U.S. patent reference contained an example II which was not carried over to the CIP. The court held that the subject matter embodied in the canceled example II could not be relied on as of either parent or child filing date. Thus, the use of example II subject matter to reject the claims under 35 U.S.C. 102(e) was improper.).
THE SUPREME COURT HAS AUTHORIZED 35 U.S.C. 103 REJECTIONS BASED ON 35 U.S.C. 102(e)
U.S. patents may be used as of their filing dates to show that the claimed subject matter is anticipated or obvious. Obviousness can be shown by combining other prior art with the U.S. patent reference in a 35 U.S.C. 103 rejection. Hazeltine Research v. Brenner, 382 U.S. 252, 147 USPQ 429 (1965). Similarly, **>certain< U.S. application publications and certain international application publications may also be used as of their >earliest effective U.S.<filing dates >(which will include certain international filing dates)< to show that the claimed subject matter would have been anticipated or obvious.
For applications filed on or after November 29, 1999, if the applicant provides evidence that the application and prior art reference were owned by the same person, or subject to an obligation of assignment to the same person, at the time the invention was made, any rejections under 35 U.S.C. 102(e)/ 103 based upon such a commonly owned reference should not be made or maintained. See MPEP § 706.02(l)(1) - § 706.02(l)(3) for additional information on rejections under 35 U.S.C. 102(e)/ 103 and evidence of common ownership.
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