SECTION 102 REFERENCES IN SUPPORT OF OBVIOUSNESS REJECTIONS - Patent law

As a general matter, the 102 sections listed in this chapter may be applied to show that a later filed patent application lacks novelty, is obvious, or both. A rejection of patentability under one or more of the 102 sections alleging that the claimed invention is not novel is usually referred to simply as a §102 rejection, referenced to whatever sections the prior art belongs to. For example, if a prior art non patent publication by another more than 1 year before the application in question was alleged to defeat the novelty of the applicant’s claimed invention then a rejection under §102(b) could be brought; this would be called §102(b) rejection for lack of novelty. For a rejection to be made solely upon a §102 reference, a single prior art reference must disclose every element of the patent application claim. If a combination of multiple prior art references is needed to disclose the entirety of the invention,this cannot be the basis for a novelty rejection. However, multiple references may be used to reject a patent application claim as being “obvious”—that is, the invention may be technically novel,but still not patentable.
Rejections alleging nonpatentability due to obviousness are referred to as §103rejections and will be discussed extensively in Chapter 8. The general rule is that rejections made under §103 will rely on the same prior art references as do §102novelty rejections, with a couple of narrow but important exceptions. Section 103is composed of sections (a), (b), and (c) but most obviousness rejections pertaining to chemical cases are made under section (a), which states the statutory definition of obviousness.43 In regard to our discussion of prior art, the narrow and important exceptions to this prior art rule fall under section (ac)(1) and (c)(2):
U.S.C. 103 (c) (1):
Subject matter developed by another person, which qualifies as prior art only under oneor more of subsections (e), (f), and (g) of section 102 of this title, shall not precludepatentability under this section where the subject matter 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;
U.S.C. 103 (c) (2):
For purposes of this subsection, subject matter developed by another person and aclaimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person if—

  1. the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made;

  2. the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and

  3. the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

Under the §103(c) subsections, we find that prior art defined by §102(e), (f), and (g)will not be applied against an organization or the members of a research collaboration regarding their own (102(e), 102(f), and 102(g)) prior art. Of particular importance regarding §103 (c)(1) and (c)(2) is that an organization (or collaboration under ajoint research agreement) that files a patent application and then files another patent application before that first application being published will not have the earlier application used against them for obviousness when the patent ability of the invention in the later filed application is determined. This is an important consideration since very often an organization, or one or more collaborators working together under a research agreement, will discover an invention and quickly file a patent application to cover what they have done while they continue to work in the same research area to further improve on their original filed invention. If they make such an improvement and file the patent application before the time the initial application publishes, even if the improvement invention is an obvious variation of what is disclosed in the earlier filed application, the earlier application can be ignored for the purpose of determining obviousness. This means that once a patent application is filed, the inventors (and their attorney) might wish to pay attention to the expected publication date to be certain to file, before that date, any additional applications that might be obvious from the disclosure of the first application and any other applicable art the earlier filed application might be combinable with. Once their patent application publishes,it is not only prior art under §102(e) traceable to the application’s filing date but also might be available under section §102(a).


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