901.02
`
`MANUAL OF PATENT EXAMINING PROCEDURE
`
`canceled from the application file wrapper of a U.S.
`patent may be used as prior art as of the patent date in
`that it then constitutes prior public knowledge under
`35 U.S.C. 102(a). In re Lund, 376 F.2d 982,
`153 USPQ 625 (CCPA 1967). See also MPEP § 2127
`and § 2136.02.
`
`901.02
`
`Abandoned Applications
`
` If an abandoned application was previously pub-
`lished under 35 U.S.C. 122(b), that patent application
`publication is available as prior art under 35 U.S.C.
`102(a) and 102(b) as of its patent application publica-
`tion date because the patent application publication is
`considered to be a “printed” publication within the
`meaning of 35 U.S.C. 102(a) and 102(b), even though
`the patent application publication is disseminated by
`the U.S. Patent and Trademark Office (Office) using
`only electronic media. See MPEP § 2128. Addition-
`ally, as described in MPEP § 901.03, a patent applica-
`tion publication published under 35 U.S.C. 122(b) is
`available as prior art under 35 U.S.C. 102(e) as of the
`earliest effective U.S. filing date of the published
`application against U.S. applications filed on or after
`November 29, 2000 and applications filed prior to
`November 29, 2000 which are voluntarily published.
`As provided in 37 CFR 1.11(a), unless a redacted
`copy of the application was used for the patent appli-
`cation publication, the specification, drawings, and all
`papers relating to the file of an abandoned published
`application are open to inspection by the public, and
`copies may be obtained from the Office. The informa-
`tion that is available to the public under 37 CFR
`1.11(a) may be used as prior art under 35 U.S.C.
`102(a) or 102(b) as of the date the information
`became publicly available.
`
`Where an abandoned application is referred to in an
`issued U.S. patent or in one of the types of published
`or publicly available patent applications described in
`37 CFR 1.14(e), access to the abandoned application
`file may be provided to the public. See 37 CFR 1.14
`(e)(2). Similarly, a copy of the application-as-filed
`and/or a copy of the file wrapper and its contents may
`be publicly available. See 37 CFR 1.14(c). Subject
`matter from abandoned applications which is avail-
`able to the public under 37 CFR 1.14(c) or 37 CFR
`1.14(e) may be used as prior art against a pending
`U.S. application under 35 U.S.C. 102(a) or 102(b) as
`
`of the date the subject matter became publicly avail-
`able.
`In re Heritage, 182 F.2d 639, 86 USPQ 160 (CCPA
`1950), holds that where a patent refers to and relies on
`the disclosure of a previously copending but subse-
`quently abandoned application, such disclosure is
`available as a reference. See also In re Lund, 376 F.2d
`982, 153 USPQ 625 (CCPA 1967).
`It has also been held that where the reference patent
`refers to a previously copending but subsequently
`abandoned application which discloses subject matter
`in common with the patent, the effective date of the
`reference as to the common subject matter is the filing
`date of the abandoned application. In re Switzer,
`166 F.2d 827, 77 USPQ 156 (CCPA 1948); Ex parte
`Peterson, 63 USPQ 99 (Bd. App. 1944); and Ex parte
`Clifford, 49 USPQ 152 (Bd. App. 1940). See MPEP
`§ 2127(a).
`Published abstracts, abbreviatures, defensive publi-
`cations (MPEP § 901.06(d)), and statutory invention
`registrations (MPEP Chapter 1100) are references.
`
`901.03
`
`Pending Applications
`
`in 37 CFR 1.11(b),
`Except as provided
`37 CFR 1.14(c) and 37 CFR 1.14(e), pending U.S.
`applications filed before November 29, 2000 which
`are not voluntarily published and applications filed on
`or after November 29, 2000 which have not been pub-
`lished are generally preserved in confidence (37 CFR
`1.14(a)) and are not available as references. However,
`claims in one nonprovisional application may be
`rejected on the claimed subject matter of a copending
`nonprovisional application of the same inventive
`entity. See MPEP § 804. For applications having a
`common assignee and different inventive entities
`claiming
`a
`single
`inventive
`concept,
`see
`MPEP § 804.03. See also MPEP § 2127, paragraph
`IV.
`The American Inventors Protection Act of 1999
`(AIPA) was enacted into law on November 29, 1999.
`The AIPA amended 35 U.S.C. 122 to provide that,
`with certain exceptions, applications for patent filed
`on or after November 29, 2000 shall be published
`promptly after the expiration of a period of eighteen
`(18) months from the earliest filing date for which a
`benefit is sought under title 35, United States Code,
`and that an application may be published earlier at the
`request of the applicant. See 35 U.S.C. 122(b) and
`
`August 2001
`
`900-2
`
`