MPEP 2146.03(a)
Provisional Rejection (Obviousness) Under 35 U.S.C. 103(a) Using Provisional Prior Art Under Pre-AIA 35 U.S.C. 102(e)

Ninth Edition of the MPEP, Revision 07.2022, Last Revised in February 2023

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2146.03(a)    Provisional Rejection (Obviousness) Under 35 U.S.C. 103(a) Using Provisional Prior Art Under Pre-AIA 35 U.S.C. 102(e) [R-07.2022]

[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159. See MPEP § 2154 et seq. for the examination of applications subject to the first inventor to file provisions of the AIA involving, inter alia, rejections based on U.S. patent documents.]

Where two applications of different inventive entities are copending, not published under 35 U.S.C. 122(b), and the filing dates differ, a provisional rejection under pre-AIA 35 U.S.C. 103(a) based on provisional prior art under pre-AIA 35 U.S.C. 102(e) should be made in the later filed application unless the application has been disqualified under pre-AIA 35 U.S.C. 103(c). See MPEP § 2146.03 for examination procedure with respect to pre-AIA 35 U.S.C. 103(c). See also MPEP § 2136.01 for examination procedure in determining when provisional rejections are appropriate. Otherwise the confidential status of unpublished application, or any part thereof, under 35 U.S.C. 122 must be maintained. Such a rejection alerts the applicant that the applicant can expect a nonprovisional rejection on the same ground if one of the applications issues and also lets applicant know that action must be taken to avoid the rejection.

This gives applicant the opportunity to analyze the propriety of the rejection and possibly avoid the loss of rights to desired subject matter. Provisional rejections under pre-AIA 35 U.S.C. 103(a) based on provisional prior art under pre-AIA 35 U.S.C. 102(e) are rejections applied to copending applications wherein each application has a common assignee or a common inventor. The application with the earlier pre-AIA 35 U.S.C. 102(e) date, if patented or published, would constitute prior art against the other application. The rejection can be overcome by:

  • (A) Arguing patentability over the earlier filed application;
  • (B) Combining the subject matter of the copending applications into a single application claiming benefit under 35 U.S.C. 120 of the prior applications and abandoning the copending applications (Note that a claim in a subsequently filed application that relies on a combination of prior applications may not be entitled to the benefit of an earlier filing date under 35 U.S.C. 120 if the earlier filed application does not contain a disclosure which complies with 35 U.S.C. 112 for the claim in the subsequently filed application. Studiengesellschaft Kohle m.b.H. v. Shell Oil Co., 112 F.3d 1561, 42 USPQ2d 1674 (Fed. Cir. 1997).);
  • (C) Filing an affidavit or declaration under 37 CFR 1.132 showing that any unclaimed invention disclosed in the copending application was derived from the inventor of the other application and is thus not invention "by another" (see MPEP §§ 715.01(a), 715.01(c), and 716.10);
  • (D) Filing an affidavit or declaration under 37 CFR 1.131(a) showing a date of invention prior to the pre-AIA 35 U.S.C. 102(e) date of the copending application. See MPEP § 715; or
  • (E) For an application that is pending on or after December 10, 2004, a showing that (1) the prior art and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person, or (2) the subject matter is disqualified under pre-AIA 35 U.S.C. 103(c) (i.e., joint research agreement disqualification).

Where the applications are claiming interfering subject matter as defined in 37 CFR 41.203(a), a terminal disclaimer and an affidavit or declaration under 37 CFR 1.131(c) may be used to overcome a rejection under 35 U.S.C. 103 in a common ownership situation if the earlier filed application has been published or matured into a patent. See MPEP § 718.

If an obviousness rejection based on provisional pre-AIA 35 U.S.C. 102(e) prior art is made and the copending applications are combined into a single application, and the resulting combined application is subject to a restriction requirement, a proper divisional application would not be subject to a provisional or nonprovisional rejection under 35 U.S.C. 103(a) in view of the combined application. This is because the provisions of 35 U.S.C. 121 would preclude the use of a patent issuing from the combined application as a reference against the divisional application. Additionally, the combined application would be a continuation-in-part application entitled to 35 U.S.C. 120 benefit of each of the prior applications. This is illustrated in Example 2, below.

The following examples are illustrative of the application of 35 U.S.C. 103(a) in applications filed prior to November 29, 1999 for which a patent was granted prior to December 10, 2004:

Example 1. Assumption: Employees A and B work for C, each with knowledge of the other’s work, and with obligation to assign inventions to C while employed.

SITUATIONS RESULTS
1. A invents X and later files application. This is permissible.
2. B modifies X to XY. B files application before A’s filing. No 35 U.S.C. 103(a) rejection based on prior art under pre-AIA 35 U.S.C. 102(f) or 102(g); provisional 35 U.S.C. 103(a) rejection made in A’s later-filed application based on B’s application as provisional prior art under pre-AIA 35 U.S.C. 102(e). Provisional double patenting rejection made.
3. B’s patent issues. A’s claims rejected over B’s patent under 35 U.S.C. 103(a) based on prior art under pre-AIA 35 U.S.C. 102(e) and double patenting.
4. A files 37 CFR 1.131(c) affidavit to disqualify B’s patent as prior art where interfering subject matter as defined in 37 CFR 41.203(a) is being claimed. Terminal disclaimer filed under 37 CFR 1.321(c). Rejection under 35 U.S.C.103(a) based on prior art under pre-AIA 35 U.S.C. 102(e) may be overcome and double patenting rejection may be overcome if inventions X and XY are commonly owned and all requirements of 37 CFR 1.131(c) and 1.321 are met.

In situation (2.) above, the result is a provisional rejection under 35 U.S.C. 103(a) made in the later-filed application based on provisional prior art under pre-AIA 35 U.S.C. 102(e). The rejection is provisional since the subject matter and the prior art are pending applications.

Example 2. Assumption: Employees A and B work for C, each with knowledge of the other’s work, and with obligation to assign inventions to C while employed.

SITUATIONS RESULTS
1. A invents X and files application. This is permissible.
2. B modifies X to XY after A’s application is filed. B files application establishing that A and B were both under obligation to assign inventions to C at the time the inventions were made. Provisional 35 U.S.C. 103(a) rejection made in B’s later-filed application based on A’s application as provisional prior art under pre-AIA 35 U.S.C. 102(e) made; provisional double patenting rejection made; no 35 U.S.C. 103(a) rejection based on prior art under pre-AIA 35 U.S.C. 102(f) or 102(g) made.
3. A and B jointly file continuing application claiming priority to both their earlier applications and abandon the earlier applications. Assume it is proper that restriction be required between X and XY.
4. X is elected, a patent issues on X, and a divisional application is timely filed on XY. No rejection of divisional application under 35 U.S.C. 103(a) based on prior art under pre-AIA 35 U.S.C. 102(e) in view of 35 U.S.C. 121.

The following examples are illustrative of rejections under 35 U.S.C. 103(a) based on prior art under pre-AIA 35 U.S.C. 102(e) in applications that are pending on or after December 10, 2004:

Example 3. Assumption: Employees A and B work for C, each with knowledge of the other’s work, and with obligation to assign inventions to C while employed. Employee A’s application, which is pending on or after December 10, 2004, is being examined.

SITUATIONS RESULTS
1. A invents X and later files application. This is permissible.
2. B modifies X to XY. B files application before A’s filing. A files an application on invention X. Provisional 35 U.S.C. 103(a) rejection of A’s later-filed application based on B’s application as provisional prior art under pre-AIA 35 U.S.C. 102(e) and a provisional double patenting rejection are made.
3. B’s patent issues. A’s claims are rejected under 35 U.S.C. 103(a) based on B’s patent under pre-AIA 35 U.S.C. 102(e) and double patenting.
4. A files evidence of common ownership of inventions X and XY at the time invention XY was made to disqualify B’s patent as prior art. In addition, A files a terminal disclaimer under 37 CFR 1.321(c). Rejection of A’s claims under 35 U.S.C. 103(a) based on prior art under pre-AIA 35 U.S.C. 102(e) will be withdrawn and double patenting rejection will be obviated if inventions X and XY are commonly owned at the time invention XY was made and all requirements of 37 CFR 1.321 are met.

In situation (2.) above, the result is a provisional rejection under 35 U.S.C. 103(a) made in the later-filed application based on provisional prior art under pre-AIA 35 U.S.C. 102(e) (the earlier-filed application). The rejection is provisional since the subject matter and the prior art are pending applications.

Example 4. Assumption: Employees A and B work for C, each with knowledge of the other’s work, and with obligation to assign inventions to C while employed. Employee B’s application, which is pending on or after December 10, 2004, is being examined.

SITUATIONS RESULTS
1. A invents X and files application. This is permissible.
2. B modifies X to XY after A’s application is filed. B files evidence in B’s application establishing that A and B were both under obligation to assign inventions to C at the time the invention XY was made. Provisional 35 U.S.C. 103(a) rejection of B’s claims based on A’s application as provisional prior art under pre-AIA 35 U.S.C. 102(e) cannot be made; provisional double patenting rejection is made; no 35 U.S.C. 103(a) rejection based on prior art under pre-AIA 35 U.S.C. 102(f) or 102(g) is made.
3. B files a terminal disclaimer under 37 CFR 1.321(c). The provisional double patenting rejection made in B’s application would be obviated if all requirements of 37 CFR 1.321 are met.

Example 5. Assumption: Employee A works for assignee I and Employee B works for assignee J. There is a joint research agreement, pursuant to pre-AIA 35 U.S.C. 103(c), between assignees I and J. Employees A and B each filed an application as set forth below. Employee B’s invention claimed in his application was made after the joint research agreement was entered into, and it was made as a result of activities undertaken within the scope of the joint agreement. Employee B’s application discloses assignees I and J as the parties to the joint research agreement. Employee B’s application, which is pending on or after December 10, 2004, is being examined.

SITUATIONS RESULTS
1. A invents X and files application. This is permissible.
2. B modifies X to XY after A’s application is filed. B files evidence in B’s application establishing a joint research agreement in compliance with pre-AIA 35 U.S.C. 103(c). Provisional 35 U.S.C. 103(a) rejection of B’s claims based on A’s application as provisional prior art under pre-AIA 35 U.S.C. 102(e) cannot be made; provisional double patenting rejection is made; no 35 U.S.C. 103(a) rejection based on prior art under pre-AIA 35 U.S.C. 102(f) or 35 U.S.C. 102(g) made.
3. B files a terminal disclaimer under 37 CFR 1.321. The provisional double patenting rejection made in B’s application would be obviated if all requirements of 37 CFR 1.321 are met.