¶ 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 (i.e., changing from AIA to pre-AIA) 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.  

¶ 7.20.fti Statement of Statutory Basis, Pre-AIA 35 U.S.C. 103(a)

The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:

(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.

Examiner Note:

• 1. The statute is not to be cited in all Office actions. It is only required in first actions on the merits employing pre-AIA 35 U.S.C. 103(a) and final rejections. Where the statute is being applied, but is not cited in an action on the merits, use paragraph 7.103.
• 2. This form paragraph should only be used ONCE in a given Office action.
• 3. This form paragraph must precede form paragraphs 7.20.01.fti - 7.22.fti when this form paragraph is used to cite the statute in first actions and final rejections.

¶ 7.20.01.fti Pre-AIA 103(a) Rejection Using Prior Art Under Pre-AIA 102(e), (f), or (g) That Is Not Disqualified Under Pre-AIA 35 U.S.C. 103(c) Because Reference Is Prior Art Under Another Subsection of Pre-AIA 35 U.S.C. 102

Applicant has provided a submission in this file that the invention was owned by, or subject to an obligation of assignment to, the same entity as [1] at the time this invention was made, or was subject to a joint research agreement at the time this invention was made. However, reference [2] qualifies as prior art under another subsection of pre-AIA 35 U.S.C. 102, and therefore is not disqualified as prior art under pre-AIA 35 U.S.C. 103(c).

Applicant may overcome the applied art either by a showing under 37 CFR 1.132 that the invention disclosed therein was derived from the inventor of this application, and is therefore, not the invention “by another,” or by antedating the applied art under 37 CFR 1.131(a).

Examiner Note:

• 1. This form paragraph must be included following form paragraph 7.20.fti in all actions containing rejections under pre-AIA 35 U.S.C. 103(a) using art that is disqualified under pre-AIA 103(c) using pre-AIA 102(e), (f), or (g), but which qualifies under another section of pre-AIA 35 U.S.C. 102.
• 2. In bracket 1, identify the common assignee.
• 3. In bracket 2, identify the reference which has been disqualified.

¶ 7.20.02.fti Joint Inventors, Common Ownership Presumed

This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).

Examiner Note:

• This paragraph must be used in all applications with joint inventors (unless the claims are clearly restricted to only one claimed invention, e.g., only a single claim is presented in the application).

¶ 7.20.04.fti Pre-AIA 103(a) Rejection Using Prior Art Under Pre-AIA 102(e), (f), or (g) That Is Attempted To Be Disqualified Under pre-AIA 35 U.S.C. 103(c) Using the Common Ownership or Assignment Provision

Applicant has attempted to disqualify reference [1] under pre-AIA 35 U.S.C. 103(c) by showing that the invention was owned by, or subject to an obligation of assignment to, the same entity as [2] at the time this invention was made. However, applicant has failed to provide a statement that the application and the reference were owned by, or subject to an obligation of assignment to, the same person at the time the invention was made in a conspicuous manner, and therefore, the reference is not disqualified as prior art under pre-AIA 35 U.S.C. 103(a). Applicant must file the required submission in order to properly disqualify the reference under pre-AIA 35 U.S.C. 103(c). See MPEP § 2146.02, subsection II.

In addition, applicant may overcome the applied art either by a showing under 37 CFR 1.132 that the invention disclosed therein was derived from the inventor of this application, and is therefore not the invention “by another,” or by antedating the applied art under 37 CFR 1.131(a).

Examiner Note:

• 1. This form paragraph must be included in all actions containing rejections under pre-AIA 35 U.S.C. 103(a) where an attempt has been made to disqualify the reference under pre-AIA 35 U.S.C. 103(c), but where the applicant has not provided a proper statement indicating common ownership or assignment at the time the invention was made.
• 2. In brackets 1 and 2, identify the commonly owned applied art (e.g., patent or co-pending application).

¶ 7.20.05.fti Pre-AIA 103(a) Rejection Using Prior Art Under Pre-AIA 102(e), (f), or (g) That Is Attempted To Be Disqualified Under Pre-AIA 35 U.S.C. 103(c) Using the Joint Research Agreement Provisions

Applicant has attempted to disqualify reference [1] under pre-AIA 35 U.S.C. 103(c) by showing that the invention was subject to a joint research agreement at the time this invention was made. However, applicant has failed to [2]. Applicant must file the missing requirements in order to properly disqualify the reference under pre-AIA 35 U.S.C. 103(c). See 37 CFR 1.71(g) and 1.104(c) and MPEP § 2146.02, subsection III.

In addition, applicant may overcome the applied art either by a showing under 37 CFR 1.132 that the invention disclosed therein was derived from the inventor of this application, and is therefore, not the invention “by another,” or by antedating the applied art under 37 CFR 1.131(a).

Examiner Note:

• 1. This form paragraph must be included in all actions containing rejections under pre-AIA 35 U.S.C. 103(a) where an attempt has been made to disqualify the reference under pre-AIA 35 U.S.C. 103(c) using the joint research agreement provisions but the disqualification attempt is ineffective.
• 2. In bracket 1, identify the reference which is sought to be disqualified under pre-AIA 35 U.S.C. 103(c).
• 3. In bracket 2, identify the reason(s) why the disqualification attempt is ineffective. The reason(s) could be noncompliance with the statutory requirements of pre-AIA 35 U.S.C. 103(c) or rule requirements relating to the CREATE Act, such as failure to submit the required statement or failure to amend the specification to include the names of the parties to the joint research agreement. See 37 CFR 1.104(c)(5)(ii).

¶ 7.21.fti Rejection, Pre-AIA 35 U.S.C. 103(a)

Claim [1] is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over [2].

Examiner Note:

• 1. This paragraph must be preceded by either form paragraph 7.20.fti or form paragraph 7.103.
• 2. An explanation of the rejection must follow this form paragraph. See MPEP § 2144.
• 3. If the rejection relies upon prior art under pre-AIA 35 U.S.C. 102(e), use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. In other words, use pre-AIPA 35 U.S.C. 102(e) only 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 under 35 U.S.C. 120, 121 or 365(c) to an international application having an international filing date prior to November 29, 2000. 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.
• 4. If the applicability of this rejection (e.g., the availability of the prior art as a reference under pre-AIA 35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(b)) prevents the reference from being disqualified under pre-AIA 35 U.S.C. 103(c), form paragraph 7.20.01.fti must follow this form paragraph.
• 5. If this rejection is a provisional pre-AIA 35 U.S.C. 103(a) rejection based upon a copending application that would comprise prior art under pre-AIA 35 U.S.C. 102(e) if patented or published, use form paragraph 7.21.01.fti instead of this paragraph.
• 6. In bracket 1, insert the claim numbers which are under rejection.
• 7. In bracket 2, insert the prior art relied upon.

¶ 7.21.01.fti Provisional Rejection, Pre-AIA 35 U.S.C. 103(a), Common Assignee, Common Applicant, or at Least One Common (Joint) Inventor

Claim [1] is/are provisionally rejected under pre-AIA 35 U.S.C. 103(a) as being obvious over copending Application No. [2] which has a common [3] with the instant application. The copending application would constitute prior art under pre-AIA 35 U.S.C. 102(e) if published or patented. This provisional rejection under pre-AIA 35 U.S.C. 103(a) is based upon a presumption of future publication or patenting of the copending application. [4]

This provisional rejection 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 or joint inventors (i.e., the inventive entity) of this application and is thus not the invention “by another,” or by a showing of a date of invention for the instant application prior to the pre-AIA 35 U.S.C. 102(e)date of the copending application under 37 CFR 1.131(a). This rejection might also be overcome by showing that the copending application is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a rejection under pre-AIA 35 U.S.C. 103(a). See MPEP § 2146 et seq.

Examiner Note:

• 1. This paragraph is used to provisionally reject claims not patentably distinct from the disclosure in a copending application that would be prior art under pre-AIA 35 U.S.C. 102(e) to the claimed invention if published or issued as a patent and also has either a common assignee, a common applicant (35 U.S.C. 118), or at least one common (joint) inventor. This form paragraph should not be used when the copending application is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection. See MPEP § 2146.03(a).
• 2. Use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act (AIPA) 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) to determine the copending application’s prior art date. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s pre-AIA and pre-AIPA 35 U.S.C. 102(e) dates, respectively.
• 3. If the claimed invention is fully disclosed in the copending application, use paragraph 7.15.01.fti.
• 4. In bracket 1, insert the claim number(s) which is/are under rejection.
• 5. In bracket 2, insert the application number.
• 6. In bracket 3, insert --assignee--, --applicant--, or --joint inventor--.
• 7. In bracket 4, insert an explanation of obviousness. See MPEP § 2144.
• 8. If the claimed invention is not patentably distinct from the invention claimed in the copending application, a provisional obviousness double patenting rejection should additionally be made using form paragraphs 8.33 and 8.37.
• 9. A rejection should additionally be made under pre-AIA 35 U.S.C. 103(a) using form paragraph 7.21.fti if:
  • evidence indicates that the copending application is also prior art under pre-AIA 35 U.S.C. 102(f) or (g) (e.g., applicant has named the prior inventor in response to a requirement made using form paragraph 8.28.fti); and
  • the copending application has not been disqualified as prior art in a pre-AIA 35 U.S.C. 103(a) rejection pursuant to pre-AIA 35 U.S.C. 103(c).

¶ 7.21.02.fti Rejection, pre-AIA 35 U.S.C. 103(a), Common Assignee, Common Applicant, or at Least One Common (Joint) Inventor

Claim [1] is/are rejected under pre-AIA 35 U.S.C. 103(a) as being obvious over [2].

The applied reference has a common [3] with the instant application. Based upon the pre-AIA 35 U.S.C. 102(e) date of the reference, it constitutes prior art. This rejection under pre-AIA 35 U.S.C. 103(a) might be overcome by: (1) a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the reference was derived from the inventor of this application and is thus not an invention “by another”; (2) a showing of a date of invention for the claimed subject matter of the application which corresponds to subject matter disclosed but not claimed in the reference, prior to the pre-AIA 35 U.S.C. 102(e) date of the reference under 37 CFR 1.131(a); or (3) an oath or declaration under 37 CFR 1.131(c) stating that the application and reference are currently owned by the same party and that the inventor or joint inventors (i.e., the inventive entity) named in the application is the prior inventor under pre-AIA 35 U.S.C. 104 as in effect on March 15, 2013, together with a terminal disclaimer in accordance with 37 CFR 1.321(c). This rejection might also be overcome by showing that the reference is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a rejection under pre-AIA 35 U.S.C. 103(a). See MPEP § 2146 et seq. [4]

Examiner Note:

• 1. This paragraph is used to reject over a reference (patent or published application) that discloses the claimed invention, and that only qualifies as prior art under pre-AIA 35 U.S.C. 102(e). If the reference qualifies as prior art under pre-AIA 35 U.S.C. 102(a) or (b), then this form paragraph should not be used (form paragraph 7.21.fti should be used instead). The reference must have either a common assignee, a common applicant (35 U.S.C. 118), or at least one common (joint) inventor. This form paragraph should not be used in applications when the reference is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection. See MPEP § 2146.03.
• 2. Pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act of 1999 (AIPA) 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) 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 bracket 1, insert the claim number(s) which is/are under rejection.
• 5. In bracket 2, insert the prior art reference(s) relied upon for the obviousness rejection.
• 6. In bracket 3, insert --assignee--, --applicant--, or --joint inventor--.
• 7. In bracket 4, insert an explanation of obviousness. See MPEP § 2144.

¶ 7.22.fti Rejection, pre-AIA 35 U.S.C. 103(a), Further in View Of

Claim [1] rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over [2] as applied to claim [3] above, and further in view of [4].

Examiner Note:

• 1. This form paragraph must be preceded by form paragraph 7.21.fti.
• 2. An explanation of the rejection must follow this form paragraph. See MPEP § 2144.
• 3. If the rejection relies upon prior art under pre-AIA 35 U.S.C. 102(e), use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. In other words, use pre-AIPA 35 U.S.C. 102(e) only 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 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. 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.

¶ 7.23.fti Test for Obviousness

The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:

• 1. Determining the scope and contents of the prior art.
• 2. Ascertaining the differences between the prior art and the claims at issue.
• 3. Resolving the level of ordinary skill in the pertinent art.
• 4. Considering objective evidence present in the application indicating obviousness or nonobviousness.

Examiner Note:

This form paragraph may be used, if appropriate, in response to an argument regarding the applicability of the factors for determining obviousness.

¶ 7.27.fti Rejection, pre-AIA 35 U.S.C. 102 or pre-AIA 103(a)

Claim(s) [1] is/are rejected under pre-AIA 35 U.S.C. 102([2]) as anticipated by or, in the alternative, under pre-AIA 35 U.S.C. 103(a) as obvious over [3].

Examiner Note:

• 1. This form paragraph is NOT intended to be commonly used as a substitute for a rejection under pre-AIA 35 U.S.C. 102. In other words, a single rejection under either pre-AIA 35 U.S.C. 102 or pre-AIA 35 U.S.C. 103(a) should be made whenever possible using appropriate form paragraphs 7.15.fti to 7.19.fti, 7.21.fti and 7.22.fti. Examples of circumstances where this paragraph may be used are as follows:
  • When the interpretation of the claim(s) is or may be in dispute, i.e., given one interpretation, a rejection under pre-AIA 35 U.S.C. 102 is appropriate and given another interpretation, a rejection under pre-AIA 35 U.S.C. 103(a) is appropriate. See MPEP §§ 2111 - 2116.01 for guidelines on claim interpretation.
  • When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §§ 2112 - 2112.02.
  • When the reference teaches a small genus which places a claimed species in the possession of the public as in In re Schaumann, 572 F.2d 312, 197 USPQ 5 (CCPA 1978), and the species would have been obvious even if the genus were not sufficiently small to justify a rejection under 35 U.S.C. 102. See MPEP §§ 2131.02 and 2144.08 for more information on anticipation and obviousness of species by a disclosure of a genus.
  • When the reference teaches a product that appears to be the same as, or an obvious variant of, the product set forth in a product-by-process claim although produced by a different process. See In re Marosi, 710 F.2d 799, 218 USPQ 289 (Fed. Cir. 1983) and In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). See also MPEP § 2113.
  • When the reference teaches all claim limitations except a means plus function limitation and the examiner is not certain whether the element disclosed in the reference is an equivalent of the claimed element and therefore anticipatory, or whether the prior art element is an obvious variant of the claimed element. See MPEP §§ 2183 - 2184.
  • When the ranges disclosed in the reference and claimed by applicant overlap in scope but the reference does not contain a specific example within the claimed range. See the concurring opinion in Ex parte Lee, 31 USPQ2d 1105 (Bd. Pat. App. & Inter. 1993). See MPEP § 2131.03.
• 2. If the interpretation of the claim(s) renders the claim(s) indefinite, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd paragraph, may be appropriate.
• 3. In bracket 1, insert the claim number(s) which is/are under rejection.
• 4. In bracket 2, insert the appropriate paragraph letter(s) in parenthesis.
• 5. In bracket 3, insert the prior art reference relied upon for the rejection.
• 6. A full explanation should follow this form paragraph.
• 7. If the rejection relies upon prior art under pre-AIA 35 U.S.C. 102(e), use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act (AIPA) to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. In other words, use pre-AIPA 35 U.S.C. 102(e) only 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 under 35 U.S.C. 120 , 121 or 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s pre-AIA and pre-AIPA 35 U.S.C. 102(e) dates, respectively.
• 8. This form paragraph must be preceded by 7.07.fti, one or more of form paragraphs 7.08.fti to 7.14.fti as appropriate, and form paragraph 7.20.fti or by form paragraph 7.103.
• 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.