w*******d
发帖数: 70 | 1 I have an OA in which claims in my application (B) are rejected under 103(a)
over patent application A in view of 2 other references.
Application B is actually a CIP to application A. But the only one
independent claim in B was not supported pursuant to 112 2nd paragraph in
the parent application A, so the examiner argues the CIP can't claim
priority to the parent.
Now I am thinking of using 103(c) to disqualify the parent A as prior art.
35 U.S.C. § 103(c)(1) states that
Subject matter developed by another person, which qualifies as prior art
only under one or more of subsections (e), (f), and (g) of section 102 of
this title, shall not preclude patentability under this section 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.
However, since A does not anticipate B, it is not a prior art under 102 (e)
(f) or (g).
So my question is : can I still use 103(c) to disqualify A, when A is not a
prior art under 102 (e), (f) or (g)?
Thank you! | d********e
发帖数: 2221 | 2 "qualifies as prior art
only under one or more of subsections (e), (f), and (g) of section 102"
means the prior art qualifies as prior art in terms of its priority date
under (e), (f), and (g) of section 102.
Note: A must be by another (at least one different inventor) to use 103(c).
CIP of course can claim priority to its parent except those subject matters
not supported in the parent. If you can find support, point it out. | w*******d
发帖数: 70 | 3 Thank you for the response.
The parent application "A" was actually published 4 years before the filing
date of CIP B. Application "A" discloses using compound for a group of
diseases, but does not specifically disclose using the compound for disease
X. The CIP claims are directed to using the compound for disease X.
The examiner argues the CIP can not claim priority to "A" because of no
support for using the compound for disease X in the parent "A", and then
uses "A" in view of other references in a 103(a) rejection.
According to your suggestion, doesn't "A" also qualify as prior art under
102(a) or 102(b) if I admit it qualifies under 102(e) just by looking at
the prior art date? (since "A" is a published application) If this is the
case, 103(c) can not be used.
"A" and "B" do differ by one inventor.
Thank you!
matters
【在 d********e 的大作中提到】
: "qualifies as prior art
: only under one or more of subsections (e), (f), and (g) of section 102"
: means the prior art qualifies as prior art in terms of its priority date
: under (e), (f), and (g) of section 102.
: Note: A must be by another (at least one different inventor) to use 103(c).
: CIP of course can claim priority to its parent except those subject matters
: not supported in the parent. If you can find support, point it out.
| p********e
发帖数: 1960 | 4 你这个A 明显是著名的CIP trap 啊，102b art. 建议读一下Rasmussen.
filing
disease
【在 w*******d 的大作中提到】
: Thank you for the response.
: The parent application "A" was actually published 4 years before the filing
: date of CIP B. Application "A" discloses using compound for a group of
: diseases, but does not specifically disclose using the compound for disease
: X. The CIP claims are directed to using the compound for disease X.
: The examiner argues the CIP can not claim priority to "A" because of no
: support for using the compound for disease X in the parent "A", and then
: uses "A" in view of other references in a 103(a) rejection.
: According to your suggestion, doesn't "A" also qualify as prior art under
: 102(a) or 102(b) if I admit it qualifies under 102(e) just by looking at
| d********e
发帖数: 2221 | 5 A is 102b art. You cannot use 103(c). The claim of using the compound for
disease X does not have priority of A.
filing
disease
【在 w*******d 的大作中提到】
: Thank you for the response.
: The parent application "A" was actually published 4 years before the filing
: date of CIP B. Application "A" discloses using compound for a group of
: diseases, but does not specifically disclose using the compound for disease
: X. The CIP claims are directed to using the compound for disease X.
: The examiner argues the CIP can not claim priority to "A" because of no
: support for using the compound for disease X in the parent "A", and then
: uses "A" in view of other references in a 103(a) rejection.
: According to your suggestion, doesn't "A" also qualify as prior art under
: 102(a) or 102(b) if I admit it qualifies under 102(e) just by looking at
| z******n
发帖数: 336 | 6 Are you sure the Examiner is talking about 112 2nd paragraph?
To claim priorty, only 112 1st paragraph needs to be satisfied. If 1st
paragraph is satisfied, priority can be claimed.
Under 35 U.S.C. 120, a claim in a U.S. application is entitled to the
benefit of the filing date of an earlier filed U.S. application if the
subject matter of the claim is disclosed in the manner provided by 35 U.S.C.
112, first paragraph, in the earlier filed application.
a)
【在 w*******d 的大作中提到】
: I have an OA in which claims in my application (B) are rejected under 103(a)
: over patent application A in view of 2 other references.
: Application B is actually a CIP to application A. But the only one
: independent claim in B was not supported pursuant to 112 2nd paragraph in
: the parent application A, so the examiner argues the CIP can't claim
: priority to the parent.
: Now I am thinking of using 103(c) to disqualify the parent A as prior art.
: 35 U.S.C. § 103(c)(1) states that
: Subject matter developed by another person, which qualifies as prior art
: only under one or more of subsections (e), (f), and (g) of section 102 of
| z******n
发帖数: 336 | 7 有两个概念不要混淆
是否102 prior art 和 是否支持102 rejection
to support a 102 rejection is not the criteria for something to be a
qualified 102 prior art.
something can be a well-qualified 102 prior art but does not support a 102
rejection
102 prior art or not, just follow 102 literally, mostly on dates
102 rejection or not, each and every element is taught in one prior art (
prior art can be 102 prior art or admitted prior art...)
所以 A application publication is a 102b in your situation because it is
published one year before your B filing date, unless you can claim any other priority to move your B effecive filing date earlier within one year of A publication date
103(c) does not apply here and you have to get your priorty date to A or
"some other copending applications" to move your B effective filing date into one year of A publication date.
But it seems that X is not even mentioned in A, so it will be difficult to satisfy 112 1st paragraph to get A date.
If dates cannot help, then you have to amend claims and aruge on the merits.
filing
disease
【在 w*******d 的大作中提到】
: Thank you for the response.
: The parent application "A" was actually published 4 years before the filing
: date of CIP B. Application "A" discloses using compound for a group of
: diseases, but does not specifically disclose using the compound for disease
: X. The CIP claims are directed to using the compound for disease X.
: The examiner argues the CIP can not claim priority to "A" because of no
: support for using the compound for disease X in the parent "A", and then
: uses "A" in view of other references in a 103(a) rejection.
: According to your suggestion, doesn't "A" also qualify as prior art under
: 102(a) or 102(b) if I admit it qualifies under 102(e) just by looking at
| z******n
发帖数: 336 | 8 Note: A must be by another (at least one different inventor) to use 103(c).
求教这个的出处在哪里？如果不是by another怎么办？
还是你的意思是如果不是by another，就不可能是102（e),(f),(g)?也就无所谓使用103(c)了。这个说法倒是没错
matters
【在 d********e 的大作中提到】
: "qualifies as prior art
: only under one or more of subsections (e), (f), and (g) of section 102"
: means the prior art qualifies as prior art in terms of its priority date
: under (e), (f), and (g) of section 102.
: Note: A must be by another (at least one different inventor) to use 103(c).
: CIP of course can claim priority to its parent except those subject matters
: not supported in the parent. If you can find support, point it out.
| w*******d
发帖数: 70 | 9 Sorry, I meant 112 1st paragraph.
C.
【在 z******n 的大作中提到】
: Are you sure the Examiner is talking about 112 2nd paragraph?
: To claim priorty, only 112 1st paragraph needs to be satisfied. If 1st
: paragraph is satisfied, priority can be claimed.
: Under 35 U.S.C. 120, a claim in a U.S. application is entitled to the
: benefit of the filing date of an earlier filed U.S. application if the
: subject matter of the claim is disclosed in the manner provided by 35 U.S.C.
: 112, first paragraph, in the earlier filed application.
:
: a)
:
| d********e
发帖数: 2221 | 10 103(c)(1)
"Subject matter developed by another person, which qualifies as prior art
only under one or more of subsections (e), (f), and (g) of section 102 of
this title, shall not preclude patentability under this section 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."
if not by another, you cannot use 103(c). what I meant was that if the
reference is not by another, the reference can still qualify as prior art
under 102(e), (f), (g), but you simply cannot use 103(c) to overcome it.
You can change the inventorship so that the reference and the application at
issue have different inventors, e.g., by dropping one inventor and all his
claims from the application at issue. I know this works.
I suppose you can also show the "subject matter" in 103(c)(1) is developed
by a person different from the inventors who invented the claims at issue.
I'm not sure whether this will work.
Say, the reference and the application both have A, B, C as inventors.
claim 1 is rejected over some subject matter X in the reference. You may
show by a declaration that A developed that subject matter X and A, B, C
developed the subject matter recited in claim 1.
103(c)了。这个说法倒是没错
【在 z******n 的大作中提到】
: Note: A must be by another (at least one different inventor) to use 103(c).
: 求教这个的出处在哪里？如果不是by another怎么办？
: 还是你的意思是如果不是by another，就不可能是102（e),(f),(g)?也就无所谓使用103(c)了。这个说法倒是没错
:
: matters
| z******n
发帖数: 336 | 11 Thanks. Do you think "by another person" stated in 103(c) is redundant?
102(e), 102(f), 102(g) are already requiring "by another"
of
【在 d********e 的大作中提到】
: 103(c)(1)
: "Subject matter developed by another person, which qualifies as prior art
: only under one or more of subsections (e), (f), and (g) of section 102 of
: this title, shall not preclude patentability under this section 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."
: if not by another, you cannot use 103(c). what I meant was that if the
: reference is not by another, the reference can still qualify as prior art
: under 102(e), (f), (g), but you simply cannot use 103(c) to overcome it.
| d********e
发帖数: 2221 | 12 i never thought of that. I guess no because in the context of 103(a), a
reference qualifies as prior art as long as its priority/publication date
falls under one of the 102 sections.
【在 z******n 的大作中提到】
: Thanks. Do you think "by another person" stated in 103(c) is redundant?
: 102(e), 102(f), 102(g) are already requiring "by another"
:
: of
| z******n
发帖数: 336 | 13 what I am sayting is:
If a prior art is ONLY 102(e), 102(f), or 102(g), the prior art is
necessarily "by another" and of course the prior satisfy "by another"
requirement as written in 103(c).
Or
If "by another" is deleted from 103(c), the law stays the same.
【在 d********e 的大作中提到】
: i never thought of that. I guess no because in the context of 103(a), a
: reference qualifies as prior art as long as its priority/publication date
: falls under one of the 102 sections.
| d********e
发帖数: 2221 | 14 I'm not sure about 102(f) or (g) because I've never seen those in action.
About 102(e), PTO can certainly use a reference under 103(a) if the
reference satisfies the 102(e) ***priority requirement*** but by the same
inventor.
Of course, such a reference cannot be used in a 102 rejection because it's
not by another.
【在 z******n 的大作中提到】
: what I am sayting is:
: If a prior art is ONLY 102(e), 102(f), or 102(g), the prior art is
: necessarily "by another" and of course the prior satisfy "by another"
: requirement as written in 103(c).
: Or
: If "by another" is deleted from 103(c), the law stays the same.
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