The Subject Patent Already Has Underlining or ... - Bayhdolecentral
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2127 MANUAL OF PATENT EXAMINING PROCEDURE<br />
577 F.2d 610, 613, 198 USPQ 601, 605 (9th Cir.<br />
1978). An abandoned patent application becomes<br />
available as pri<strong>or</strong> art only as of the date the public<br />
gains access to it. See 37 CPR 1.14(e) (2). However,<br />
the subject matter of an abandoned application,<br />
including both provisional and nonprovisional applications,<br />
referred to in a pri<strong>or</strong> art U.S. patent may be<br />
relied on in a 35 U.S.c. 102(e) rejection based on that<br />
patent if the disclosure of the abandoned application<br />
is actually included <strong>or</strong> inc<strong>or</strong>p<strong>or</strong>ated by reference in<br />
the patent. Compare In re Lund, 376 F.2d 982, 991,<br />
153 USPQ 625, 633 (CCPA 1967) (<strong>The</strong> court reversed<br />
a rejection over a patentwhich was a continuation-inpart<br />
of an abandoned application. Applicant's filing<br />
date preceded the issue date of the patent reference.<br />
<strong>The</strong> abandoned application contained subject matter<br />
which was essential to the rejection but which was not<br />
carried over into the continuation-in-part. <strong>The</strong> court<br />
held that the subject matter of the abandoned application<br />
was not available to the public as of either the<br />
parent's <strong>or</strong> the child's filing dates and thus could not<br />
be relied on in the 102(e) rejection.). See also MPEP<br />
§ 901.02. See MPEP § 2136.02 and § 2136.03 f<strong>or</strong> the<br />
35 U.S.C. 102(e) date of a U.S. patent claiming pri<strong>or</strong>ity<br />
under 35 U.S.C. 119?r 120.<br />
II. APPLICATIONS WHICH HAVE ISSUED<br />
INTO U.S. PATENTS<br />
A 35 U.S.C. I02(e) Rejection Cannot Rely on Matter<br />
Which Was Canceled/rom the Application and Thus<br />
Did Not Get Published in the Issued <strong>Patent</strong><br />
Canceled matter in the application file of a U.S.<br />
patent cannot be relied upon in a rejection under<br />
35 U.S.C.l02(e). Ex Parte Stalego, 154 USPQ 52,<br />
53 (Bd. App. 1966). <strong>The</strong> canceled matter only<br />
becomes available as pri<strong>or</strong> art as of the date the application<br />
issues into a patent since this is the date the<br />
application file wrapper becomes available to the public.<br />
In re Lund, 376 F.2d 982, 153 USPQ625 (tCPA<br />
1967). F<strong>or</strong> m<strong>or</strong>e inf<strong>or</strong>mation on available pri<strong>or</strong> art f<strong>or</strong><br />
use in 35 U.S.C. 102(e) rejections see MPEP<br />
§ 2136.02.<br />
August 2001<br />
2100_64<br />
III. FOREIGN APPLICATIONS OPEN FOR<br />
PUBLIC INSPECTION (LAID OPEN AP·<br />
PLICATIONS)<br />
Laid Open Applications May Constitute "Published"<br />
Documents<br />
When the specification is not issued in printed f<strong>or</strong>m<br />
but is announced in an official journal and anyone can<br />
inspect <strong>or</strong> obtain copies, it is sufficiently accessible to<br />
the public to constitute a "publication" within the<br />
meaning of 35 U.S.C. 102(a) and (b). See In re )1yer,<br />
655 F.2d 221,210 USPQ 790 (CCPA 1981).<br />
Older cases have held that laid open patent applications<br />
are not "published" and cannot constitute pri<strong>or</strong><br />
art. Ex parte Haller, 103 USPQ 332 (Bd. App. 1953).<br />
However, whether <strong>or</strong> not a document is "published"<br />
f<strong>or</strong> the purposes of 35 U.S.C. 102 and 103 depends<br />
on how accessible the document.is to the public. As<br />
technology has made reproduction of documents easier,<br />
the accessibility of the laid open applications has<br />
increased. Items provided in .easily reproducible f<strong>or</strong>m<br />
have thus become "printed publications" as the phrase<br />
is used in 35 U.S.C. 102. In re )1yer, 655 F.2d 221,<br />
226, 210 USPQ 790, 794 (CCPA 1981) (Laid open<br />
Australian patent application held to be a "printed<br />
publication" even though only the abstract was published<br />
because it was laid open f<strong>or</strong> public inspection,<br />
microfilmed, "diazo copies" were distributed to five<br />
suboffices having suitable reproduction equipment<br />
and the diazo copies were available f<strong>or</strong> sale.). <strong>The</strong><br />
contents of a f<strong>or</strong>eign patent application should not be<br />
relied upon as pri<strong>or</strong> art until the date of publication<br />
(i.e., the insertion into the laid open application) can<br />
be confirmed by an examiner's review of a copy of<br />
the document. See MPEP § 901.05.<br />
IV. PENDING U.S. APPLICATIONS<br />
As specified in 37 CFR 1.14(a), all pending U.S.<br />
applications are preserved in confidence except f<strong>or</strong><br />
published applications, reissue applications, and<br />
applications in which a request to open the complete<br />
application to inspection by the public has been<br />
granted by the Office (37 CFR Lllfbj), However, if<br />
an application that has not been published has an<br />
assignee <strong>or</strong> invent<strong>or</strong> in common with the application<br />
being examined, a rejection will be proper in some<br />
circumstances.F<strong>or</strong>instance, when the claims between<br />
the two applications are not independent <strong>or</strong> distinct, a