Potter question

22. The Potter patent application was filed on June 6, 2002, claiming subject matter invented by Potter.

The Potter application properly claims priority to a German application filed on June 6, 2001. In a first

Office action all the claims of the Potter application are rejected under 35 USC 102(e) based on a U.S.

patent application publication to Smith et al (“Smith”). A registered practitioner prosecuting the Potter

application ascertains that the relevant subject matter in Smith’s published application and Potter’s

claimed invention were, at the time Potter’s invention was made, owned by ABC Company or subject to an

obligation of assignment to ABC Company. The practitioner ascertains that the Smith application was filed

on April 10, 2001 and that the Smith application was published on December 5, 2002. Smith and Potter do

not claim the same patentable invention. To overcome the rejection without amending the claims which of

the following replies would not comply with the USPTO rules and the procedures set forth in the MPEP to be

an effective reply for overcoming the rejection?

(A) A reply that only contains arguments that Smith fails to teach all the elements

in the only independent claim, and which specifically points out the claimed element that Smith lacks.

(B) A reply that consists of an affidavit or declaration under 37 CFR 1.131 properly proving

invention of the claimed subject matter of the Potter application prior to April 10, 2001.

(C) A reply that consists of an affidavit or declaration under 37 CFR 1.132 properly showing that

Smith’s invention is not by “another.”

(D) A reply that properly states that the invention of the Potter application and the Smith application

were commonly owned by ABC Company at the time of the invention of the Potter application.

(E) All of the above.

22. ANSWER: (D) is the most correct answer. See 35 USC §§ 102(e) and 103(c); MPEP § 706.02(l)(1). The prior art

exception in 35 U.S.C. § 103(c) only applies to references that are only prior art under 35 U.S.C. § 102(e), (f),

or (g), and that are applied in a rejection under 35 U.S.C. § 103(a). In this situation, the Smith reference was

applied in a rejection under 35 U.S.C. § 102(e) and not under 35 U.S.C. § 103(a). See MPEP § 706.02(l)(1).

Therefore, the reply in answer (D) would not overcome the rejection. Answer (A) is a proper reply in that it

addresses the examiner’s rejection by specifically pointing out why the examiner failed to make a prima facie

showing. See MPEP § 706.02(b). (B) is incorrect inasmuch as it is a proper reply. See MPEP § 706.02(b). Answer (C)

is incorrect inasmuch as it is a proper reply. See MPEP 706.02(b). Answer (E) is not a correct answer because

answers (A), (B) and (C) all are replies that are in accordance with the USPTO rules and procedures set forth in

the MPEP.