MPEP § 2146.03 — Examination Procedure With Respect to Pre-AIA 35 U.S.C. 103(c)

Ninth Edition, Revision 01.2024 · last revised R-01.2024

[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions. See MPEP §§ 717.02 et seq., 2154.02(c) and 2156 for the examination of applications subject to the first inventor to file provisions of the AIA involving, inter alia, commonly owned subject matter or a joint research agreement.]

Examiners are reminded that a reference used in an anticipatory rejection under pre-AIA 35 U.S.C. 102(e), (f), or (g) is not disqualified as prior art if the reference is disqualified under pre-AIA 35 U.S.C. 103(c). Generally, such a reference is only disqualified when

• (A) a proper submission is filed,
• (B) the reference only qualifies as prior art under pre-AIA 35 U.S.C. 102(e), (f) or (g) (e.g., not pre-AIA 35 U.S.C. 102(a) or (b)), and
• (C) the reference was used in an obviousness rejection under pre-AIA 35 U.S.C. 103(a).

Applications and patents will be considered to be owned by, or subject to an obligation of assignment to, the same person, at the time the invention was made, if the applicant(s) or patent owner(s) make(s) a statement to the effect that the application and the reference were, at the time the invention was made, owned by, or subject to an obligation of assignment to, the same person(s) or organization(s). In order to overcome a rejection under pre-AIA 35 U.S.C. 103(a) based upon a reference which qualifies as prior art under only one or more of pre-AIA 35 U.S.C. 102(e), (f), or (g), via the CREATE Act, the applicant must comply with the statute and the rules of practice in effect.

See MPEP § 2146.02 for additional information pertaining to establishing common ownership.

If the application file being examined has not established that the reference is disqualified as prior art under pre-AIA 35 U.S.C. 103(c), the examiner will:

• (A) assume the reference is not disqualified under pre-AIA 35 U.S.C. 103(c);
• (B) examine the application on all grounds other than any conflict between the reference patent(s) or application(s) arising from a possible 35 U.S.C. 103 rejection based on prior art under pre-AIA 35 U.S.C. 102(e), (f) and/or (g);
• (C) consider the applicability of any references under 35 U.S.C. 103 based on prior art under pre-AIA 35 U.S.C. 102(e), (f) and/or (g), including provisional rejections under 35 U.S.C. 103(a) based on provisional prior art under pre-AIA 35 U.S.C. 102(e) (see MPEP § 2146.03(a)); and
• (D) apply the best references against the claimed invention by rejections under 35 U.S.C. 102 and 103(a), including any rejections under 35 U.S.C. 103(a) based on prior art under pre-AIA 35 U.S.C. 102(e), (f) and/or (g), until such time that the reference is disqualified under pre-AIA 35 U.S.C. 103(c).

When applying any references that qualify as prior art under pre-AIA 35 U.S.C. 102(e) in a rejection under 35 U.S.C. 103(a) against the claims, the examiner should anticipate that the reference may be disqualified under pre-AIA 35 U.S.C. 103(c) and consider making an appropriate additional, alternative rejection. See MPEP § 2120, subsection I. If a statement of common ownership or assignment is filed in reply to the 35 U.S.C. 103(a) rejection based on prior art under pre-AIA 35 U.S.C. 102(e) and the claims are not amended, the examiner may not make the next Office action final if a new rejection is made. See MPEP § 706.07(a). If the reference is disqualified under the joint research agreement provision of pre-AIA 35 U.S.C. 103(c) and a new subsequent nonstatutory double patenting rejection based upon the disqualified reference is applied, the next Office action, which contains the new nonstatutory 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 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p)). The Office action is properly made final because the new nonstatutory double patenting rejection was necessitated by amendment of the application by applicant.

If the application being examined has established that the reference is disqualified as prior art under pre-AIA 35 U.S.C. 103(c) the examiner will:

• (A) examine the applications as to all grounds, except pre-AIA 35 U.S.C. 102(e), (f) and (g) including provisional rejections based on provisional prior art under pre-AIA 35 U.S.C. 102(e), as they apply through 35 U.S.C. 103(a);
• (B) examine the applications for double patenting, including statutory and nonstatutory double patenting, and make a provisional rejection, if appropriate; and
• (C) invite the applicant to file a terminal disclaimer to overcome any provisional or actual nonstatutory double patenting rejection, if appropriate (see 37 CFR 1.321).

Commonly owned applications of different inventive entities may be rejected on the ground of double patenting, even if the later filed application claims 35 U.S.C. 120 benefit to the earlier application, subject to the conditions discussed in MPEP § 804et seq. In addition, a double patenting rejection may arise as a result of the amendment to pre-AIA 35 U.S.C. 103(c) by the CREATE Act (Public Law 108-453, 118 Stat. 3596 (2004)). Congress recognized that this amendment to 35 U.S.C. 103(c) would result in situations in which there would be double patenting rejections between applications not owned by the same party (see H.R. Rep. No. 108-425, at 5-6 (2003). For purposes of double patenting analysis, the application or patent and the subject matter disqualified under pre-AIA 35 U.S.C. 103(c) as amended by the CREATE Act will be treated as if commonly owned.

A rejection based on a pending application would be a provisional rejection. The practice of rejecting claims on the ground of nonstatutory double patenting in commonly owned applications of different inventive entities is in accordance with existing case law and prevents an organization from obtaining two or more patents with different expiration dates covering nearly identical subject matter. See MPEP § 804 for guidance on nonstatutory double patenting issues. In accordance with established patent law doctrines, nonstatutory double patenting rejections can be overcome in certain circumstances by disclaiming, pursuant to the existing provisions of 37 CFR 1.321, the terminal portion of the term of the later patent and including in the disclaimer a provision that the patent shall be enforceable only for and during the period the patent is commonly owned with the application or patent which formed the basis for the rejection, thereby eliminating the problem of extending patent life. For a nonstatutory double patenting rejection based on a non-commonly owned patent (treated as if commonly owned pursuant to the CREATE Act), the nonstatutory double patenting rejection may be obviated by filing a terminal disclaimer in accordance with 37 CFR 1.321(d). See MPEP §§ 804, 804.02 and 1490, subsection VI.