Patentability
`
`2105
`
`2106
`
`2106.01
`
`2106.02
`2107
`
`2107.01
`
`2107.02
`
`2111
`
`2112.01
`2112.02
`2113
`2114
`
`2121
`
`2121.01
`
`2121.02
`
`2121.03
`
`2121.04
`
`2122
`2123
`
`2124
`
`2125
`2126
`
`Patentable Subject Matter — Living Subject
`Matter
`Patentable Subject Matter - Computer-Related
`Inventions
`Computer Programming and 35 U.S.C. 112,
`First Paragraph
`Disclosure in Computer Programming Cases
`General Principles Governing Utility
`Rejections
`Procedural Considerations Related to
`Rejections for Lack of Utility
`Special Considerations for Asserted
`Therapeutic or Pharmacological Utilities
`Claim Interpretation; Broadest Reasonable
`Interpretation
`Plain Meaning
`2111.01
`2111.02 Weight of Preamble
`2111.03
`Transitional Phrases
`2112
`Requirements of Rejection Based on Inherency;
`Burden of Proof
`Composition, Product, and Apparatus Claims
`Process Claims
`Product-by-Process Claims
`Apparatus and Article Claims - Functional
`Language
`2115 Material or Article Worked Upon by
`Apparatus
`2116 Material Manipulated in Process
`2116.01
`Novel, Unobvious Starting Material or End
`Product
`Prior Art; General Level of Operability
`Required to Make a Prima Facie Case
`Use of Prior Art in Rejections Where
`Operability Is in Question
`Compounds and Compositions - What
`Constitutes Enabling Prior Art
`Plant Genetics - What Constitutes Enabling
`Prior Art
`Apparatus and Articles - What Constitutes
`Enabling Prior Art
`Discussion of Utility in the Prior Art
`Rejection Over Prior Art’s Broad Disclosure
`Instead of Preferred Embodiments
`Exception to the Rule That the Critical
`Reference Date Must Precede the Filing Date
`Drawings as Prior Art
`Availability of a Document as a “Patent” for
`Purposes of Rejection Under 35 U.S.C. 102(a),
`(b), and (d)
`
`Chapter 2100 Patentability
`2126.01
`Date of Availability of a Patent As a Reference
`2126.02
`Scope of Reference’s Disclosure Which Can
`Be Used to Reject Claims When the Reference
`Is a “Patent” but Not a “Publication”
`Domestic and Foreign Patent Applications as
`Prior Art
`“Printed Publications” as Prior Art
`Level of Public Accessibility Required
`Date Publication Is Available as a Reference
`Admissions as Prior Art
`Anticipation - Application of 35 U.S.C. 102(a),
`(b), and (e)
`Multiple Reference 35 U.S.C. 102 Rejections
`Genus-Species Situations
`Anticipation of Ranges
`Secondary Considerations
`Nonanalogous Art
`35 U.S.C. 102(a)
`Publications as 35 U.S.C. 102(a) Prior Art
`35 U.S.C. 102(b)
`Rejections of Continuation-In-Part (CIP)
`Applications
`Rejections Based on Publications and Patents
`2133.02
`Rejections Based on “Public Use” or “On Sale”
`2133.03
`2133.03(a) “Public Use”
`2133.03(b) “On Sale”
`2133.03(c) The “Invention”
`2133.03(d) “In This Country”
`2133.03(e) Permitted Activity; Experimental Use
`2133.03(e)(1) Commercial Exploitation
`2133.03(e)(2) Intent
`2133.03(e)(3) “Completeness” of the Invention
`2133.03(e)(4) Factors Indicative of an Experimental
`Purpose
`2133.03(e)(5) Experimentation and Degree of Supervision
`and Control
`2133.03(e)(6) Permitted Experimental Activity and
`Testing
`2133.03(e)(7) Activity of an Independent Third Party
`Inventor
`35 U.S.C. 102(c)
`35 U.S.C. 102(d)
`The Four Requirements of 35 U.S.C. 102(d)
`35 U.S.C. 102(e)
`Status of U.S. Patent as a Reference Before and
`After Issuance
`Content of the Prior Art Available Against the
`Claims
`Critical Reference Date
`Different Inventive Entity; Meaning of “By
`Another”
`
`2127
`
`2128
`2128.01
`2128.02
`2129
`2131
`
`2131.01
`2131.02
`2131.03
`2131.04
`2131.05
`2132
`2132.01
`2133
`2133.01
`
`2134
`2135
`2135.01
`2136
`2136.01
`
`2136.02
`
`2136.03
`2136.04
`
`2100-1
`
`Rev. 1, Feb. 2000
`
`Fraunhofer Ex 2046-p 1
`Sirius v Fraunhofer
`IPR2018-00690
`
`

`

`MANUAL OF PATENT EXAMINING PROCEDURE
`
`2136.05
`
`2137
`2137.01
`2137.02
`2138
`2138.01
`2138.02
`2138.03
`
`Overcoming a Rejection Under 35 U.S.C.
`102(e)
`35 U.S.C. 102(f)
`Inventorship
`Applicability of 35 U.S.C. 103(c)
`35 U.S.C. 102(g)
`Interference Practice
`“The Invention Was Made in This Country”
`“By Another Who Has Not Abandoned,
`Suppressed, or Concealed It”
`“Conception”
`2138.04
`“Reduction to Practice”
`2138.05
`“Reasonable Diligence”
`2138.06
`35 U.S.C. 103; The Graham Factual Inquiries
`2141
`Scope and Content of the Prior Art
`2141.01
`2141.01(a) Analogous and Nonanalogous Art
`2141.02
`Differences Between Prior Art and Claimed
`Invention
`Level of Ordinary Skill in the Art
`Legal Concept of Prima Facie Obviousness
`Basic Requirements of a Prima Facie Case of
`Obviousness
`Suggestion or Motivation to Modify the
`References
`Reasonable Expectation of Success Is Required
`All Claim Limitations Must Be Taught or
`Suggested
`Sources of Rationale Supporting a Rejection
`Under 35 U.S.C. 103
`Implicit Disclosure
`Reliance on Scientific Theory
`Reliance on Common Knowledge in the Art or
`“Well Known” Prior Art
`Legal Precedent as Source of Supporting
`Rationale
`Obviousness of Ranges
`Art Recognized Equivalence for the Same
`Purpose
`Art Recognized Suitability for an Intended
`Purpose
`Obviousness of Species When Prior Art
`Teaches Genus
`Close Structural Similarity Between Chemical
`Compounds (Homologs, Analogues, Isomers)
`Consideration of Applicant’s Rebuttal
`Arguments
`35 U.S.C. 103(c)
`Three Separate Requirements for Specification
`Under 35 U.S.C. 112, First Paragraph
`Policy Underlying 35 U.S.C. 112, First
`Paragraph
`
`2141.03
`2142
`2143
`
`2143.01
`
`2143.02
`2143.03
`
`2144
`
`2144.01
`2144.02
`2144.03
`
`2144.04
`
`2144.05
`2144.06
`
`2144.07
`
`2144.08
`
`2144.09
`
`2145
`
`2146
`2161
`
`2162
`
`2163
`2163.01
`
`2163.02
`
`2163.03
`
`2163.04
`
`2163.05
`2163.06
`
`2163.07
`
`The Written Description Requirement
`Support for the Claimed Subject Matter in
`Disclosure
`Standard for Determining Compliance With
`the Written Description Requirement
`Typical Circumstances Where Adequate
`Written Description Issue Arises
`Burden on the Examiner With Regard to the
`Written Description Requirement
`Changes to the Scope of Claims
`Relationship of Written Description
`Requirement to New Matter
`Amendments to Application Which Are
`Supported in the Original Description
`Inherent Function, Theory, or Advantage
`2163.07(a)
`2163.07(b) Incorporation by Reference
`2164
`The Enablement Requirement
`2164.01
`Test of Enablement
`2164.01(a) Undue Experimentation Factors
`2164.01(b) How to Make the Claimed Invention
`2164.01(c) How to Use the Claimed Invention
`2164.02 Working Example
`2164.03
`Relationship of Predictability of the Art and the
`Enablement Requirement
`Burden on the Examiner Under the Enablement
`Requirement
`Determination of Enablement Based on
`Evidence As a Whole
`2164.05(a) Specification Must Be Enabling as of the Filing
`Date
`2164.05(b) Specification Must Be Enabling to Persons
`Skilled in the Art
`Quantity of Experimentation
`2164.06
`2164.06(a) Examples of Enablement Issues-Missing
`Information
`2164.06(b) Examples of Enablement Issues - Chemical
`Cases
`Relationship of Enablement Requirement to
`Utility Requirement of 35 U.S.C. 101
`Enablement Commensurate in Scope With the
`Claims
`2164.08(a) Single Means Claim
`2164.08(b) Inoperative Subject Matter
`2164.08(c) Critical Feature Not Claimed
`2165
`The Best Mode Requirement
`2165.01
`Considerations Relevant to Best Mode
`2165.02
`Best Mode Requirement Compared to
`Enablement Requirement
`Requirements for Rejection for Lack of Best
`Mode
`Examples of Evidence of Concealment
`
`2164.04
`
`2164.05
`
`2164.07
`
`2164.08
`
`2165.03
`
`2165.04
`
`Rev. 1, Feb. 2000
`
`2100-2
`
`Fraunhofer Ex 2046-p 2
`Sirius v Fraunhofer
`IPR2018-00690
`
`

`

`2171
`
`2172
`
`2172.01
`2173
`
`2173.01
`2173.02
`2173.03
`
`2173.04
`2173.05
`
`Two Separate Requirements for Claims Under
`35 U.S.C. 112, Second Paragraph
`Subject Matter Which Applicants Regard as
`Their Invention
`Unclaimed Essential Matter
`Claims Must Particularly Point Out and
`Distinctly Claim the Invention
`Claim Terminology
`Clarity and Precision
`Inconsistency Between Claim and
`Specification Disclosure or Prior Art
`Breadth Is Not Indefiniteness
`Specific Topics Related to Issues Under
`35 U.S.C. 112, Second Paragraph
`2173.05(a) New Terminology
`2173.05(b) Relative Terminology
`2173.05(c) Numerical Ranges and Amounts Limitations
`2173.05(d) Exemplary Claim Language (“for example,”
`“such as”)
`2173.05(e) Lack of Antecedent Basis
`2173.05(f) Reference to Limitations in Another Claim
`2173.05(g) Functional Limitations
`2173.05(h) Alternative Limitations
`2173.05(i) Negative Limitations
`2173.05(j) Old Combination
`2173.05(k) Aggregation
`2173.05(m) Prolix
`2173.05(n) Multiplicity
`2173.05(o) Double Inclusion
`2173.05(p) Claim Directed to Product-By- Process or
`Product and Process
`2173.05(q) “Use” Claims
`2173.05(r) Omnibus Claim
`2173.05(s) Reference to Figures or Tables
`2173.05(t) Chemical Formula
`2173.05(u) Trademarks or Trade Names in a Claim
`2173.05(v) Mere Function of Machine
`2173.06
`Prior Art Rejection of Claim Rejected as
`Indefinite
`Relationship Between the Requirements of the
`First and Second Paragraphs of 35 U.S.C. 112
`Identifying a 35 U.S.C. 112, Sixth Paragraph
`Limitation
`Scope of the Search and Identification of the
`Prior Art
`2183 Making a Prima Facie Case of Equivalence
`2184
`Determining Whether an Applicant Has Met
`the Burden of Proving Nonequivalence After a
`Prima Facie Case Is Made
`Related Issues Under 35 U.S.C. 112, First or
`Second Paragraphs
`Relationship to the Doctrine of Equivalents
`
`2174
`
`2181
`
`2182
`
`2185
`
`2186
`
`PATENTABILITY
`
`2105
`
`2105
`
`Patentable Subject Matter — Living
`Subject Matter [R-1]
`
`in Diamond v.
`The decision of the Supreme Court
`Chakrabarty, 447 U.S. 303, 206 USPQ 193 (1980), held
`that microorganisms produced by genetic engineering are
`not excluded from patent protection by 35 U.S.C. 101. It is
`clear from the Supreme Court decision and opinion that the
`question of whether or not an invention embraces living
`matter is irrelevant to the issue of patentability. The test set
`down by the Court for patentable subject matter in this area
`is whether the living matter is the result of human interven-
`tion.
`In view of this decision, the Office has issued these
`guidelines as to how 35 U.S.C. 101 will be interpreted.
`The Supreme Court made the following points in the
`Chakrabarty opinion:
`
`1. “Guided by these canons of construction, this Court has
`read the term ‘manufacture’ in § 101 in accordance with its dic-
`tionary definition to mean `the production of articles for use from
`raw materials prepared by giving to these materials new forms,
`qualities, properties, or combinations whether by hand labor or
`by machinery.'”
`
`2. “In choosing such expansive terms as ‘manufacture’ and
`‘composition of matter,’ modified by the comprehensive ‘any,’
`Congress plainly contemplated that the patent laws would be
`given wide scope.”
`
`3. “The Act embodied Jefferson’s philosophy that ‘ingenuity
`should receive a liberal encouragement.’ 5 Writings of Thomas
`Jefferson, at 75-76. See Graham v. John Deere Co., 383 U.S. 1,
`7-10 (1966). Subsequent patent statutes in 1836, 1870, and 1874
`employed this same broad language. In 1952, when the patent
`laws were recodified, Congress replaced the word ‘art’ with ‘pro-
`cess,’ but otherwise left Jefferson’s language intact. The Commit-
`tee Reports accompanying the 1952 act inform us that Congress
`intended statutory subject matter to ‘include any thing under the
`sun that is made by man.’ S. Rep. No. 1979, 82d Cong., 2d Sess.,
`5 (1952).”
`
`4. “This is not to suggest that § 101 has no limits or that it
`embraces every discovery. The laws of nature, physical phenom-
`ena, and abstract ideas have been held not patentable.”
`
`5. “Thus, a new mineral discovered in the earth or a new plant
`found in the wild is not patentable subject matter. Likewise, Ein-
`stein could not patent his celebrated law that E=mc2 ; nor could
`Newton have patented the law of gravity.”
`
`6. “His claim is not to a hitherto unknown natural phenome-
`non, but to a nonnaturally occurring manufacture or composition
`of matter __ a product of human ingenuity ‘having a distinctive
`name, character [and] use.’ ”
`
`7. “Congress thus recognized that the relevant distinction was
`not between living and inanimate things, but between products of
`nature, whether living or not, and human-made inventions. Here,
`
`2100-3
`
`Rev. 1, Feb. 2000
`
`Fraunhofer Ex 2046-p 3
`Sirius v Fraunhofer
`IPR2018-00690
`
`

`

`2136
`
`MANUAL OF PATENT EXAMINING PROCEDURE
`
`In re Talbott, 443 F.2d 1397, 170
`35 U.S.C. 102(a) or (b).);
`USPQ 281 (CCPA 1971)
`(Applicant cannot avoid a
`35 U.S.C. 102(d) rejection by exercising an option to keep
`the subject matter of a German Gebrauchsmuster (petty
`patent) in secrecy until time of U.S. filing.).
`
`IV.
`
`SAME
`THE
`INVOLVED
`
`INVENTION MUST
`
`BE
`
`“Same Invention” Means That the Application Claims
`Could Hsve Been Presented in the Foreign Patent
`
`Under 35 U.S.C. 102(d), the “invention... patented” in
`the foreign country must be the same as the invention
`sought to be patented in the U.S. When the foreign patent
`contains the same claims as the U.S. application, there is no
`question that “the invention was first patented... in a foreign
`country.” In re Kathawala, 9 F.3d 942, 945, 28 USPQ2d
`1785, 1787 (Fed. Cir. 1993). However, the claims need not
`be identical or even within the same statutory class. If
`applicant is granted a foreign patent which fully discloses
`the invention and which gives applicant a number of differ-
`ent claiming options in the U.S., the reference in 35 U.S.C.
`102(d) to “ `invention... patented' necessarily includes all
`the disclosed aspects of the invention. Thus, the section
`102(d) bar applies regardless whether the foreign patent
`contains claims to less than all aspects of the invention.” 9
`F.3d at 946, 28 USPQ2d at 1788. In essence, a 35 U.S.C.
`102(d) rejection applies if applicant’s foreign application
`supports the subject matter of the U.S. claims. In re Katha-
`wala, 9 F.3d 942, 28 USPQ2d 1785 (Fed. Cir. 1993)
`(Applicant was granted a Spanish patent claiming a method
`of making a composition. The patent disclosed compounds,
`methods of use and processes of making the compounds.
`After the Spanish patent was granted, the applicant filed a
`U.S. application with claims directed to the compound but
`not the process of making it. The Federal Circuit held that it
`did not matter that the claims in the U.S. application were
`directed to the composition instead of the process because
`the foreign specification would have supported claims to
`the composition. It was immaterial that the formulations
`were unpatentable pharmaceutical compositions in Spain.).
`2136
`35 U.S.C. 102(e)
`
`35 U.S.C. 102. Conditions for patentability; novelty and loss of
`right to patent.
`A person shall be entitled to a patent unless-
`
`*****
`
`the invention was described in a patent granted on an applica-
`(e)
`tion for patent by another filed in the United States before the invention
`thereof by the applicant for patent, or on an international application by
`another who has fulfilled the requirements of paragraphs (1), (2), and (4)
`of section 371(c) of this title before the invention thereof by the applicant
`for patent.
`
`*****
`
`ONLY U.S. PATENTS AND SIRS ARE ELIGIBLE AS
`PRIOR ART UNDER 35 U.S.C. 102(e)
`
`The reference must be a U.S. patent to be eligible for use
`in a 35 U.S.C. 102(e) rejection. Ex parte Smolka, 207
`USPQ 232 (Bd. App. 1980) (A foreign patent document
`with priority back to an abandoned U.S. application cannot
`be the basis for a 35 U.S.C. 102(e) rejection. The foreign
`document cannot be prior art until it is patented or pub-
`lished.). Statutory Invention Registrations (SIRS) can also
`be used in 35 U.S.C. 102(e) rejections as of their filing
`dates.
`
`DEFENSIVE PUBLICATIONS ARE NOT PRIOR
`ART AS OF THEIR FILING DATE
`
`A defensive publication is not a patent, it is a publica-
`tion. Therefore, it is prior art only as of its publication date.
`Ex parte Osmond, 191 USPQ 334 (Bd. App. 1973) (Exam-
`iner rejected the claims over Defensive Publication T-
`858,018 issued by the PTO to Jacobson. The examiner
`made a 35 U.S.C. 102(a) rejection contending that a defen-
`sive publication can be used as a reference under 35 U.S.C.
`102(a) as of its filing date. This position was authorized at
`that time by the MPEP and a Commissioner’s Notice estab-
`lishing the Defensive Publication Program. The Board
`found that in order for a 35 U.S.C. 102(a) rejection to
`apply, the reference must be of public knowledge and a
`Defensive Publication is not public knowledge at the time
`of its filing. Thus, the Board reversed the rejection. The
`Board also found that 35 U.S.C. 102(e) could not be used
`as a basis for rejection because the use of Defensive Publi-
`cations as of their filing dates was not supported by section
`102(e).) See MPEP § 711.06(a) for more information on
`Defensive Publications as references.
`
`2136.01
`
`Status of U.S. Patent as a Reference
`Before and After Issuance
`
`WHEN THERE IS NO COMMON ASSIGNEE OR
`INVENTOR, AN APPLICATION MUST ISSUE AS A
`PATENT BEFORE IT IS AVAILABLE AS PRIOR
`ART UNDER 35 U.S.C. 102(e)
`
`Generally, a U.S. patent must issue before it can be used
`as a reference in a 35 U.S.C. 102(e) rejection. Ex parte
`Smolka, 207 USPQ 232 (Bd. App. 1980) (An application to
`Smolka and Schwuger was rejected over 35 U.S.C. 102(e)
`based on a pending U.S. application to Corkill whose filing
`date antedated the Smolka et al. application. A German
`application corresponding to the Corkill application had
`been published, but did not antedate the effective filing date
`of the Smolka et al. application. The Board reversed the
`
`Rev. 1, Feb. 2000
`
`2100-72
`
`Fraunhofer Ex 2046-p 4
`Sirius v Fraunhofer
`IPR2018-00690
`
`

`

`PATENTABILITY
`
`2136.03
`
`rejection holding that a U.S. patent had to be issued to
`Corkill before it could become available as prior art under
`35 U.S.C. 102(e). There was no common assignee nor any
`common inventor between the two applications.).
`
`WHEN THERE IS A COMMON ASSIGNEE OR
`INVENTOR, A PROVISIONAL 35 U.S.C. 102(e)
`REJECTION OVER AN EARLIER FILED APPLICA-
`TION CAN BE MADE
`
`Based on the assumption that an application will ripen
`into a U.S. patent, it is permissible to provisionally reject a
`later application over an earlier application under 35 U.S.C.
`102(e). In re Irish, 433 F.2d 1342, 167 USPQ 764 (CCPA
`1970). Such a provisional rejection “serves to put applicant
`on notice at the earliest possible time of the possible prior
`art relationship between copending applications” and gives
`applicant the fullest opportunity to overcome the rejection
`by amendment or submission of evidence. In addition,
`since both applications are pending and usually have the
`same assignee, more options are available to applicant for
`overcoming the provisional rejection than if the other appli-
`cation were already issued. Ex parte Bartfeld, 16 USPQ2d
`1714 (Bd. Pat. App. & Int. 1990) aff’d on other grounds,
`925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991). Note
`that provisional rejections over 35 U.S.C. 102(e) are only
`authorized when there is a common inventor or assignee,
`otherwise the copending application must remain confiden-
`tial. MPEP § 706.02(f) and § 706.02(k) discuss the proce-
`dures to be used in provisional rejections over 35 U.S.C.
`102(e) and 103.
`2136.02 Content of the Prior Art Available
`Against the Claims
`
`A 35 U.S.C. 102(e) REJECTION MAY RELY ON ANY
`PART OF THE PATENT DISCLOSURE
`
`Under 35 U.S.C. 102(e), the entire disclosure of a U.S.
`patent having an earlier filing date can be relied on to reject
`the claims. Sun Studs, Inc. v. ATA Equip. Leasing, Inc., 872
`F.2d 978, 983, 10 USPQ2d 1338, 1342 (Fed. Cir. 1989).
`
`U.S. PATENT REFERENCE MUST ITSELF CON-
`TAIN THE SUBJECT MATTER RELIED ON IN THE
`REJECTION
`
`is used to reject claims under
`When a U.S. patent
`35 U.S.C. 102(e), the disclosure relied on in the rejection
`must be present in the issued patent. It is the filing date of
`the U.S. patent being relied on as the critical reference date
`and subject matter not included in the patent itself can only
`be used when that subject matter becomes public. Portions
`of the patent application which were canceled are not part
`of the patent and thus cannot be relied on in a 35 U.S.C.
`
`102(e) rejection over the issued patent. Ex Parte Stalego,
`154 USPQ 52 (Bd. App. 1966). Likewise, subject matter
`which is disclosed in a parent application, but not included
`in the child continuation-in-part (CIP) cannot be relied on
`in a 35 U.S.C. 102(e) rejection over the issued CIP. In re
`Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967) (The
`examiner made a 35 U.S.C. 102(e) rejection over an issued
`U.S. patent which was a continuation-in-part (CIP). The
`parent application of the U.S. patent reference contained an
`example II which was not carried over to the CIP. The court
`held that
`the subject matter embodied in the canceled
`example II could not be relied on as of either parent or child
`filing date. Thus, the use of example II subject matter to
`reject the claims under 35 U.S.C. 102(e) was improper.).
`
`THE SUPREME COURT HAS AUTHORIZED
`35 U.S.C. 103 REJECTIONS BASED ON 35 U.S.C.
`102(e)
`
`U.S. patents may be used as of their filing dates to show
`that the claimed subject matter is anticipated or obvious.
`Obviousness can be shown by combining other prior art
`with the U.S. patent reference in a 35 U.S.C. 103 rejection.
`Hazeltine Research v. Brenner, 382 U.S. 252, 147 USPQ
`429 (1965).
`2136.03 Critical Reference Date [R-1]
`
`I.
`
`FOREIGN PRIORITY DATE
`
`Reference's Foreign Priority Date Under 35 U.S.C.
`119(a)-(d) Cannot Be Used as the 35 U.S.C. 102(e)
`Reference Date
`
`A U.S. patent reference is effective prior art as of its U.S.
`filing date. 35 U.S.C. 119(a)-(d) does not modify section
`102(e) which is explicitly limited to patent references “filed
`in the United States before the invention thereof by the
`applicant” (emphasis added). Therefore, the foreign prior-
`ity date of the reference under 35 U.S.C. 119(a)-(d) cannot
`be used to antedate the application filing date. In contrast,
`applicant may be able to overcome the 35 U.S.C. 102(e)
`rejection by proving he or she is entitled to his or her own
`35 U.S.C. 119 priority date which is earlier than the refer-
`ence’s U.S. filing date. In re Hilmer, 359 F.2d 859, 149
`USPQ 480 (CCPA 1966) (Hilmer I) (Applicant filed an
`application with a right of priority to a German application.
`The examiner rejected the claims over a U.S. patent to Hab-
`icht based on its Swiss priority date. The U.S. filing date of
`Habicht was later than the application’s German priority
`date. The court held that the reference’s Swiss priority date
`could not be relied on in a 35 U.S.C. 102(e) rejection.
`Because the U.S. filing date of Habicht was later than the
`earli est effective filing date (German priority date) of the
`application,
`the rejection was reversed.). See MPEP
`
`2100-73
`
`Rev. 1, Feb. 2000
`
`Fraunhofer Ex 2046-p 5
`Sirius v Fraunhofer
`IPR2018-00690
`
`

`

`2136.03
`
`MANUAL OF PATENT EXAMINING PROCEDURE
`
`§ 201.15 for information on procedures to be followed in
`considering applicant's right of priority.
`
`>CONTINUATION OF AN< INTERNATIONAL
`(PCT) **>APPLICATION<
`
`II.
`
`**
`
`Where a U.S. application filed under 35 U.S.C. 111(a)
`claims the benefit of the filing date of a copending PCT
`international application under 35 U.S.C. 120, its effective
`date as a reference under 35 U.S.C. 102(e) is the **>U.S.
`filing date of the 35 U.S.C. 111(a) application and not the
`international filing date. When< a U.S. national stage
`application filed under 35 U.S.C. 371 becomes a U.S.
`patent, the 35 U.S.C. 102(e) date of the U.S. Patent as a
`prior art reference is the date applicant fulfilled the require-
`ments of 35 U.S.C. 371(c)(1), (c)(2), and (c)(4). See MPEP
`§ 715 and § 1896.
`
`III.
`
`PRIORITY FROM PROVISIONAL APPLICA-
`TION UNDER 35 U.S.C. 119(e)
`
`The 35 U.S.C. 102(e) critical reference date of a U.S.
`patent entitled to the benefit of the filing date of a provi-
`sional application under 35 U.S.C. 119(e) is the filing date
`of the provisional application, except in the case of a U.S.
`patent granted on an international (PCT) application in
`which the requirements of paragraphs (1), (2) and (4) of
`35 U.S.C. 371(c) have been fulfilled. By the terms of
`35 U.S.C. 102(e), the critical reference date of a U.S. patent
`granted on such a 35 U.S.C. 371 application is the date on
`which paragraphs (c)(1), (c)(2) and (c)(4) have been ful-
`filled, not the filing date of the provisional application.
`
`IV.
`
`PARENT'S FILING DATE WHEN REFER-
`ENCE IS A CONTINUATION-IN-PART OF
`THE PARENT
`
`Filing Date of U.S. Parent Application Can Only Be Used
`as the 35 U.S.C. 102(e) Date If It Supports the Claims of
`the Issued Child
`
`In order to carry back the 35 U.S.C. 102(e) critical date
`of the U.S. patent reference to the filing date of a parent
`application, the parent application must (A) have a right of
`priority to the earlier date under 35 U.S.C. 120 and (B) sup-
`port the invention claimed as required by 35 U.S.C. 112,
`first paragraph. “For if a patent could not theoretically have
`issued the day the application was filed, it is not entitled to
`be used against another as ‘secret prior art’ ” under
`35 U.S.C. 102(e). In re Wertheim, 646 F.2d 527, 537, 209
`USPQ 554, 564 (CCPA 1981) (The examiner made a
`35 U.S.C. 103 rejection over a U.S. patent to Pfluger. The
`Pfluger patent (Pfluger IV) was the child of a string of
`
`abandoned parent applications (Pfluger I, the first applica-
`tion, Pfluger II and III, both CIPs). Pfluger IV was a contin-
`uation of Pfluger III. The court characterized the contents
`of the applications as follows: Pfluger I - subject matter A,
`II-AB, III-ABC, IV-ABC. ABC anticipated the claims of
`the examined application, but the filing date of III was later
`than the application filing date. So the examiner reached
`back to “A” in Pfluger I and combined this disclosure with
`another reference to establish obviousness. The court held
`that
`the examiner impermissibly carried over “A” and
`should have instead determined which of the parent appli-
`cations contained the subject matter which made Pfluger
`patentable. Only if B and C were not claimed, or at least not
`critical to the patentability of Pfluger IV, could the filing
`date of Pfluger I be used. The court reversed the rejection
`based on a determination that Pfluger IV was only entitled
`to the Pfluger III filing date. The added new matter (C) was
`critical to the claims of the issued patent.). Note that In re
`Wertheim modified the holding of In re Lund, 376 F.2d 982,
`153 USPQ 625 (CCPA 1967) as to “carrying back” the sub-
`ject matter to the parent applications.
`
`See also Ex parte Gilderdale, 1990 Pat. App. LEXIS 25
`(Bd. Pat. App. & Inter. Appeal no. 89-0352) (The examiner
`made a 35 U.S.C. 102(e) rejection over a U.S. patent to
`Hernandez et al. Hernandez et al. was a continuation of a
`continuation-in-part. Both the parent and grandparent had
`been abandoned. The parent listed a different inventive
`entity but supported the subject matter of the child’s claims.
`The parent was filed on the same day as the examined
`application and thus no 35 U.S.C. 102(e) rejection could be
`made based on the parent’s filing date. The Board reversed
`the rejection, explaining that the Hernandez patent was
`entitled to the filing date of its parent, as the parent sup-
`ported the patent claims and 35 U.S.C. 120 was satisfied.
`Under 35 U.S.C. 120, an application can claim the benefit
`of an earlier filing date even if not all inventors are the
`same. However, Hernandez was not entitled to the grand-
`parent filing date because the parent and child applications
`contained new matter as compared to the grandparent.).
`
`Compare Ex parte Ebata, 19 USPQ2d 1952 (Bd. Pat.
`App. & Inter. 1991) (The claims were directed to a method
`of administering a salt of lysocellin to animals. A 35 U.S.C.
`102(e) rejection was made over Martin. Martin was a con-
`tinuation of an application which was in turn a continua-
`tion-in-part of an abandoned application. The grandparent
`application disclosed administering a manganese complex
`of lysocellin to animals. The Board found that “the new
`matter relates to additional forms of lysocellin which are
`useful in Martin's process, i.e., species or embodiments
`other than the manganese complex. This is far different
`from adding limitations which are required or necessary
`for patentability.” Unlike the situation in In re Wertheim,
`
`Rev. 1, Feb. 2000
`
`2100-74
`
`Fraunhofer Ex 2046-p 6
`Sirius v Fraunhofer
`IPR2018-00690
`
`

`

`PATENTABILITY
`
`2136.05
`
`Martin's invention was patentable as presented in the
`grandparent application.).
`
`V.
`
`DATE OF CONCEPTION OR REDUCTION TO
`PRACTICE
`
`35 U.S.C. 102(e) Reference Date Is the Filing Date Not
`Date of Patentee's Conception or Reduction to Practice
`
`If the U.S. patent applied as a 35 U.S.C. 102(e) reference
`discloses, but does not claim the subject matter of the
`claims being examined or an obvious variant, the patent is
`not prior art under 35 U.S.C. 102(g). When the cases are
`not in interference, the effective date of the reference U.S.
`patent as prior art is its filing date in the United States, as
`stated in 35 U.S.C. 102(e). The date that the prior art U.S.
`patent subject matter was conceived or reduced to practice
`is of no importance when 35 U.S.C. 102(g) is not at issue.
`Sun Studs, Inc. v. ATA Equip. Leasing, Inc., 872 F.2d 978,
`983, 10 USPQ2d 1338, 1342 (Fed. Cir. 1989) (The defen-
`dant sought to invalidate patents issued to Mason and Sohn
`assigned to Sun Studs. The earliest of these patents issued
`in June 1973. A U.S. patent to Mouat was found which
`issued in March 1976 and which disclosed the invention of
`Mason and Sohn. While the patent to Mouat issued after
`the Mason and Sohn patents, it was filed 7 months earlier
`than the earliest of the Mason and Sohn patents. Sun Studs
`submitted affidavits showing conception in 1969 and dili-
`gence to the constructive reduction to practice and there-
`fore antedated the patent to Mouat. The defendant sought to
`show that Mouat conceived the invention in 1966. The
`court held that conception of the subject matter of the refer-
`ence only becomes an issue when the claims of the conflict-
`ing patents cover inventions which are the same or obvious
`over one another. When 35 U.S.C. 102(e) applies but not
`35 U.S.C. 102(g), the filing date of the prior art patent is the
`earliest date that can be used to reject or invalidate claims.).
`2136.04 Different Inventive Entity;
`Meaning of “By Another”
`
`IF THERE IS ANY DIFFERENCE IN THE INVEN-
`TIVE ENTITY, THE PATENT REFERENCE IS “BY
`ANOTHER”
`
`“Another” means other than applicants, In re Land, 368
`F.2d 866, 151 USPQ 621 (CCPA 1966), in other words, a
`different inventive entity. The inventive entity is different if
`not all inventors are the same. The fact that the application
`and patent have one or more inventors in common is imma-
`terial. Ex parte DesOrmeaux, 25 USPQ2d 2040 (Bd. Pat.
`App. & Inter. 1992) (The examiner made a 35 U.S.C.
`102(e) rejection based on an issued U.S. patent to three
`inventors. The rejected application was a continuation-in-
`part of the issued parent with an extra inventor. The Board
`
`found that the patent was “by another” and thus could be
`used in a 35 U.S.C. 102(e)/103 rejection of the applica-
`tion.).
`
`A DIFFERENT INVENTIVE ENTITY IS PRIMA
`FACIE EVIDENCE THAT THE U.S. PATENT IS “BY
`ANOTHER”
`
`As stated by the House and Senate reports on the bills
`enacting section 35 U.S.C. 102(e), this subsection of 102
`codifies the Milburn rule of Milburn v. Davis- Bournon-
`ville, 270 U.S. 390 (1926). The Milburn rule authorized the
`use of a U.S. patent containing a disclosure of the invention
`as a reference against a later filed application as of the U.S.
`patent filing date. The existence of an earlier filed U.S.
`application containing the subject matter claimed in the
`application being examined indicates that applicant was not
`the first inventor. Therefore, a U.S. patent by a different
`inventive entity, whether or not the application shares some
`inventors in common with the patent, is prima facie evi-
`dence that the invention was made “by another” as set forth
`in section 102(e). In re Mathews, 408 F.2d 1393, 161 USPQ
`276 (CCPA 1969); In re Facius, 408 F.2d 1396, 161 USPQ
`294 (CCPA 1969); Ex parte DesOrmeaux, 25 USPQ2d
`2040 (Bd. Pat. App. & Inter. 1992). See MPEP § 2136.05
`for discussion of methods of overcoming 102(e) rejections.
`
`2136.05 Overcoming a Rejection Under
`35 U.S.C. 102(e) [R-1]
`
`102(e) REJECTION CAN BE
`A 35 U.S.C.
`OVERCOME BY ANTEDATING THE FILING DATE
`OR SHOWING THAT DISCLOSURE RELIED ON IS
`APPLICANT'S OWN WORK
`
`is not a statutory bar, a
`When a prior U.S. patent
`35 U.S.C. 102(e) rejection can be overcome by antedating
`the filing date (see MPEP § 2136.03 regarding critical ref-
`erence date of a U.S. patent) of the U.S. patent reference
`by submitting an affidavit or declaration under 37 CFR
`1.131 or by submitting an affidavit or declaration under
`37 CFR 1.132 establishing that the relevant disclosure is
`applicant’s own work. In re Mathews, 408 F.2d 1393, 161
`USPQ 276 (CCPA 1969). The filing date can also be ante-
`dated by applicant’s earlier foreign priority application or
`provisional application if 35 U.S.C. 119 is met and the for-
`