Antedating 102e reference
102(e) rejection may be made if the earlier filed copending U. application has been published as redacted (37 CFR 1.217) and the subject matter relied upon in the rejection is not supported in the redacted publication of the patent application. 102(e) are only authorized when there is a common inventor or assignee, otherwise the copending application prior to publication must remain confidential.
filing dates (which will include certain international filing dates). Based on the assumption that an application will ripen into a U. patent (or into an application publication), it is permissible to provisionally reject a later application over an earlier filed, and unpublished, application under 35 U. 102(a) or (b)) it will not be disqualified as prior art under 35 U. patent application publication, or an international application publication having an earlier effective U. filing date (which will include certain international filing dates) can be relied on to reject the claims. 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. (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. (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. 102(e) when there is a common assignee or inventor. In addition, since both applications are pending and usually have the same assignee, more options are available to applicant for overcoming the provisional rejection than if the other application were already issued.
Such a provisional rejection “serves to put applicant on notice at the earliest possible time of the possible prior art relationship between copending applications” and gives applicant the fullest opportunity to overcome the rejection by amendment or submission of evidence. For applications filed on or after November 29, 1999 or pending on or after December 10, 2004, a provisional rejection under 35 U.
filing date (which will include certain international filing dates) of the U. 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. 102(e) rejection over the issued patent or application publication.
Obviousness can be shown by combining other prior art with the U.
patent application publication, or an international application publication is used to reject claims under 35 U.
102(e), the disclosure relied on in the rejection must be present in the issued patent or application publication. 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. 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.
119 priority date which is earlier than the reference’s U.