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Disqualifying Prior Art under 35 U.S.C. § 103(c)


A reference cited in a rejection under 35 U.S.C. § 103 that is either owned by, or under an obligation of assignment to, the same individual or corporate entity as an application may be disqualified if the reference only qualifies as prior art under 35 U.S.C. § 102(e), (f) and/or (g). In such as a case, it may be beneficial to traverse the rejection along the lines of the following.

Example Argument

On pages [PAGE NUMBERS] of the Office Action, the Examiner rejected claims [CLAIM NUMBERS] under 35 U.S.C. § 103(a) as allegedly being unpatentable over [CITED ART]. However, [REFERENCE] is disqualified as prior art under 35 U.S.C. § 103(c). 35 U.S.C. § 103(c)(1) states:

Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f) and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.

For the purposes of 35 U.S.C. § 103(c), a “person” may be a corporation. The only section of 35 U.S.C. § 102 that [REFERENCE] potentially qualifies under is 35 U.S.C. § 102(e), and [REFERENCE] and the claimed invention were both under an obligation of assignment to [ENTITY] at the time the claimed invention was made. Thus, [REFERENCE] does not qualify as prior art per 35 U.S.C. § 103(c), and the rejection is improper and must be withdrawn. [IF AFTER FINAL, APPLICANT MIGHT INCLUDE THE FOLLOWING SENTENCE...] As such, the finality of the outstanding Office Action must be withdrawn and a new Office Action must be issued.

Important Note

If the reference is disqualified under the joint research agreement provision of 35 U.S.C. § 103(c) and a new subsequent double patenting rejection based upon the disqualified reference is applied, a next Office action containing the new double patenting rejection may be made final even if Applicant did not amend the claims (provided that the Examiner introduces no other new ground of rejection that was not necessitated by either amendment or an information disclosure statement filed during the time period set forth in 37 C.F.R. § 1.97(c) with the fee set forth in 37 C.F.R. § 1.17(p)). (See MPEP § 706.02(I)(3)(I)).