Cancelled matter

48. In accordance with the USPTO rules and the procedures set forth in the MPEP,

which of the following statements regarding a proper prior art reference is true?

(A) Canceled matter in the application file of a U.S. patent is a prior art reference

as of the filing date under 35 USC 102(e).

(B) Where a patent refers to and relies on the disclosure of a copending subsequently

abandoned application, such disclosure is not available as a reference.

(C) Where the reference patent claims the benefit of an earlier filed, copending but

subsequently abandoned application which discloses subject matter in common with the patent,

and the abandoned application has an enabling disclosure for the common subject matter

and the claimed matter in the reference patent, the effective date of the reference patent

as to the common subject matter is the filing date of the reference patent.

(D) Matter canceled from the application file wrapper of a U.S. patent may be used

as prior art as of the patent date.

(E) All foreign patents are available as prior art as of the date they are translated into English.

48. ANSWER: (D) is the most correct answer. See 35 U.S.C. § 102(a). As explained in MPEP § 901.01,

the “matter canceled from the application file wrapper of a U.S. patent may be used as prior art as of the patent date

in that it then constitutes prior public knowledge under 35 U.S.C. 102(a), In re Lund, 376 F.2d 982, 153 USPQ 625

(CCPA 1967). See also MPEP 2127 and 2136.02.” (A) is incorrect. 35 U.S.C. § 102(e). As stated in MPEP § 901.01,

“Canceled matter in the application file of a U.S. patent is not a proper reference as of the filing date under

35 U.S.C. 102(e), see Ex parte Stalego, 154 USPQ 52, 53 (Bd. App. 1966).” (B) is incorrect. As stated in MPEP § 901.02,

“In re Heritage, 182 F.2d 639, 86 USPQ 160 (CCPA 1950), holds that where a patent refers to and relies on the

disclosure of a copending abandoned application, such disclosure is available as a reference. See also In re Lund,

376 F.2d 982, 153 USPQ 625 (CCPA 1967).” (C) is incorrect. As MPEP § 901.02 indicates, where the reference patent

claims the benefit of a copending but abandoned application which discloses subject matter in common with the patent,

and the abandoned application has an enabling disclosure of the common subject matter and claimed matter in the

reference patent, the effective date of the reference as to the common subject matter is the filing date of the

abandoned application. In re Switzer, 77 USPQ 1, 612 O.G. 11 (CCPA 1948); Ex parte Peterson, 63 USPQ 99

(Bd. App. 1944); and Ex parte Clifford, 49 USPQ 152 (Bd. App. 1940).” (E) is incorrect. As stated in MPEP § 901.05,

“In general, a foreign patent, the contents of its application, or segments of its content should not be cited

as a reference until its date of patenting or publication can be confirmed by an examiner’s review of a copy of

the document.”