Smith 102(e)

2003 APRIL AM

12. 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. A first

Office action contains a rejection of all the claims of the application under 35 USC 103(a) based on a

U.S. patent application publication to Smith in view of a U.S. patent to Jones. 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 also observes that the

Smith patent application was filed on April 10, 2001 and that the patent 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 timely replies would 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 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.

(C) A reply that consists of an affidavit or declaration under 37 CFR 1.132 stating that the affiant

has never seen the invention in the Potter application before.

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

of the claimed subject matter of Potter application only prior to June 6, 2001.

(E) A reply that consists of a proper terminal disclaimer and affidavit or declaration under 37 CFR 1.130.

12. ANSWER: (B) is the most correct answer. See 35 U.S.C. § 103(a); MPEP §§ 706.02(l)(1) and 2145.

The prior art exception in 35 U.S.C. § 103(c) is applicable because the Smith reference is only prior art

under 35 U.S.C. § 102(e), (f), or (g), was applied in a rejection under 35 U.S.C. § 103(a), and was commonly

owned at the time Potter made the invention claimed by Potter. See MPEP § 706.02(l)(1). Answer (A) is not a

correct answer in that one cannot show nonobviousness by attacking the references individually where the

rejections are based on a combination of references. See MPEP § 2145. Answer (C) is not a correct answer.

An affirmation that the affiant has never seen the invention before is not relevant to the issue of

nonobviousness of the claimed subject matter. See MPEP 716. Answer (D) is not a correct answer. Invention

must be proved prior to the effective filing date of Smith, which is April 10, 2001. See MPEP § 715. Answer

(E) is not a correct answer. A terminal disclaimer and affidavit or declaration under 37 CFR § 1.130 are not

proper because the Potter application and the Smith reference are not claiming the same patentable invention.

See MPEP § 706.02(k).