2304.04(c) Rejections Based on Disclaimer [R-10.2019]
Claims may be rejected on the ground that applicant has disclaimed the subject matter involved. Such disclaimer may arise, for example, from the applicant’s failure to:
- (A) make claims suggested for interference with another application under 37 CFR 41.202(c) (See MPEP § 2304.04(b) ),
- (B) copy a claim from a patent when suggested by the examiner (MPEP § 2304.04(b) ), or
- (C) respond or appeal, within the time limit fixed, to the examiner’s rejection of claims copied from a patent (see MPEP § 2308).
The rejection on disclaimer applies to all claims not patentably distinct from the disclaimed subject matter as well as to the claims directly involved.
Rejections based on disclaimer should be made by using one of Form Paragraphs 7.48.aia, 7.48.fti and 7.49.
¶ 7.48.aia Failure To Present Claims for Interference
Claim [1] rejected under pre-AIA 35 U.S.C. [2] based upon claim [3] of Patent No. [4].
Failure to present claims and/or take necessary steps for interference purposes after notification that interfering subject matter is claimed constitutes a disclaimer of the subject matter. This amounts to a concession that, as a matter of law, the patentee is the first inventor in this country. See In re Oguie, 517 F.2d 1382, 186 USPQ 227 (CCPA 1975).
Examiner Note:
- 1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102/103 as amended by the Leahy-Smith America Invents Act, and the application also contains or contained at any time (1) a claim to an invention having an effective filing date as defined in 35 U.S.C. 100(i) that is before March 16, 2013, or (2) a specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application that contains or contained at any time such a claim.
- 2. This form paragraph should be used only after applicant has been notified that interference proceedings must be instituted before the claims can be allowed and applicant has refused to copy the claims.
- 3. In bracket 2, insert –102(g)– or –102(g)/103(a)–.
- 4. In bracket 4, insert the patent number, and –in view of _____– if another reference is also relied upon. When the rejection is under pre-AIA 35 U.S.C. 102(g)/103(a), the examiner’s basis for a finding of obviousness should be included. Note that interferences may include obvious variants, see MPEP Chapter 2300.
- 5. This form paragraph must be preceded by form paragraph 7.14.aia, or by form paragraph 7.103.
¶ 7.48.fti Failure To Present Claims for Interference
Claim [1] rejected under pre-AIA 35 U.S.C. [2] based upon claim [3] of Patent No. [4].
Failure to present claims and/or take necessary steps for interference purposes after notification that interfering subject matter is claimed constitutes a disclaimer of the subject matter. This amounts to a concession that, as a matter of law, the patentee is the first inventor in this country. See In re Oguie, 517 F.2d 1382, 186 USPQ 227 (CCPA 1975).
Examiner Note:
- 1. This form paragraph should be used only after applicant has been notified that interference proceedings must be instituted before the claims can be allowed and applicant has refused to copy the claims.
- 2. In bracket 2, insert –102(g)– or –102(g)/103(a)–.
- 3. In bracket 4, insert the patent number, and –in view of _____– if another reference is also relied upon. When the rejection is under pre-AIA 35 U.S.C. 103(a), the examiner’s basis for a finding of obviousness should be included. Note that interferences may include obvious variants, see MPEP Chapter 2300.
¶ 7.49 Rejection, Disclaimer, Failure To Appeal
An adverse judgment against claim [1] has been entered by the Board. Claim [2] stand(s) finally disposed of for failure to reply to or appeal from the examiner’s rejection of such claim(s) presented for interference within the time for appeal or civil action specified in 37 CFR 90.3. Adverse judgment against a claim is a final action of the Office requiring no further action by the Office to dispose of the claim permanently. See 37 CFR 41.127(a)(2).