¶ 8.27.aia Different Inventors, Common Assignee, Same Invention, Examined under First Inventor To File (FITF) Provisions of the AIA

Claim [1] directed to the same invention as that of claim [2] of commonly assigned [3]. Under 35 U.S.C. 101, more than one patent may not be issued on the same invention.

The USPTO may not institute a derivation proceeding in the absence of a timely filed petition. The U.S. Patent and Trademark Office normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). The applicant should amend or cancel claims such that the reference and the instant application no longer contain claims directed to the same invention.

Examiner Note:

• 1. Form paragraph 7.03.aia must be included in any Office action that contains this paragraph.
• 2. In bracket 3, insert the U.S. patent number or the copending application number.
• 3. The claims listed in brackets 1 and 2 must be for the same invention. If one invention would have been obvious in view of the other, do not use this form paragraph; see form paragraph 8.28.aia.
• 4. A provisional or actual statutory double patenting rejection should also be made using form paragraph 8.31 or 8.32.
• 5. If the commonly assigned application or patent is prior art under 35 U.S.C. 102(a)(2), a rejection may also be made using form paragraph 7.15.01.aia or 7.15.02.aia.

¶ 8.27.fti Different Inventors, Common Assignee, Same Invention, Examined Under Pre-AIA (First to Invent) Provisions

Claim [1] directed to the same invention as that of claim [2] of commonly assigned [3]. The issue of priority under pre-AIA 35 U.S.C. 102(g) and possibly pre-AIA 35 U.S.C. 102(f) of this single invention must be resolved.

The U.S. Patent and Trademark Office normally will not institute an interference between applications or a patent and an application having common ownership (see MPEP Chapter 2300). Either the applicant must amend or cancel claims such that the reference and the instant application no longer contain claims directed to the same invention, or the assignee must state which entity is the prior inventor of the commonly claimed subject matter. A terminal disclaimer has no effect in this situation since the basis for refusing more than one patent is priority of invention under pre-AIA 35 U.S.C. 102(f) or (g) and not an extension of monopoly.

Failure to comply with this requirement will result in a holding of abandonment of this application.

Examiner Note:

• 1. Form paragraph 7.03.fti must be included in any Office action that contains this paragraph.
• 2. In bracket 3, insert the U.S. patent number or the copending application number.
• 3. The claims listed in brackets 1 and 2 must be for the same invention. If one invention would have been obvious in view of the other, do not use this form paragraph; see form paragraph 8.28.fti.
• 4. A provisional or actual statutory double patenting rejection should also be made using form paragraph 8.31 or 8.32.
• 5. If the commonly assigned application or patent is prior art under pre-AIA 35 U.S.C. 102(e), a rejection may also be made using form paragraph 7.15.01.fti or 7.15.02.fti.

¶ 8.28.aia Different Inventors, Common Assignee, Inventions Not Patentably Distinct, No Evidence of Common Ownership Not Later Than the Effective Filing Date of the Claimed Invention, Examined Under First Inventor to File (FITF) Provisions of the AIA

Claim [1] directed to an invention not patentably distinct from claim [2] of commonly assigned [3]. Specifically, [4].

Examiner Note:

• 1. This form paragraph should be used when the application being examined is commonly assigned with an application or patent that includes claims patentably indistinct from those in the present application, but it has not been established that they were commonly owned or deemed to have been commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention. See 35 U.S.C. 102(b)(2)(C) and 35 U.S.C. 102(c).
• 2. A rejection under 35 U.S.C. 102(a)(2)/103 using form paragraph 7.21.aia, 7.21.01.aia or 7.21.02.aia also should be made, as appropriate.
• 3. In bracket 3, insert the number of the patent or application that includes claims patentably indistinct from those in the present application.
• 4. A nonstatutory double patenting rejection should also be included in the action using one of form paragraphs 8.34 to 8.37.
• 5. In bracket 4, explain why the claims in the present application and the reference patent or application are patentably indistinct.
• 6. Form paragraph 8.28.01.aia MUST follow this paragraph.

¶ 8.28.fti Different Inventors, Common Assignee, Inventions Not Patentably Distinct, No Evidence of Common Ownership at Time of Invention, Examined Under Pre-AIA (First To Invent) Provisions

Claim [1] directed to an invention not patentably distinct from claim [2] of commonly assigned [3]. Specifically, [4].

Examiner Note:

• 1. This form paragraph should be used when the application being examined is commonly assigned with an application or patent that includes claims patentably indistinct from those in the present application, but there is no indication that they were commonly assigned at the time the invention was made.
• 2. A rejection under pre-AIA 35 U.S.C. 102(e)/103(a) using form paragraph 7.21.fti, 7.21.01.fti or 7.21.02.fti also should be made, as appropriate. Rejections under pre-AIA 35 U.S.C. 102(e)/103(a) should not be made or maintained if the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.
• 3. In bracket 3, insert the number of the reference patent or application.
• 4. A nonstatutory double patenting rejection should also be included in the action using one of form paragraphs 8.34 to 8.37.
• 5. In bracket 4, explain why the claims in the present application and the reference patent or application are patentably indistinct.
• 6. Form paragraph 8.28.01.fti MUST follow this paragraph.

¶ 8.28.01.aia Advisory Information Relating to Form Paragraph 8.28.aia

The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned [1], discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.

In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.

A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.

Examiner Note:

This form paragraph should follow form paragraph 8.28.aia and should only be used ONCE in an Office action.

¶ 8.28.01.fti Advisory Information Relating to Form Paragraph 8.28.fti

The U.S. Patent and Trademark Office normally will not institute an interference between applications or a patent and an application of common ownership (see MPEP Chapter 2300). Commonly assigned [1], discussed above, may form the basis for a rejection of the noted claims under pre-AIA 35 U.S.C. 102 or 103(a) if the commonly assigned case qualifies as prior art under pre-AIA 35 U.S.C. 102(e), (f) or (g) and the patentably indistinct inventions were not commonly owned at the time the claimed invention in this application was made. In order for the examiner to resolve this issue the assignee can, under pre-AIA 35 U.S.C. 103(c) and 37 CFR 1.78(g), either show that the patentably indistinct inventions were commonly owned at the time the claimed invention in this application was made, or name the prior inventor of the subject matter at issue.

A showing that the inventions were commonly owned at the time the claimed invention in this application was made will preclude a rejection under pre-AIA 35 U.S.C. 103(a) based upon the commonly assigned application that qualifies as a reference under pre-AIA 35 U.S.C. 102(e), (f) or (g). Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.

Examiner Note:

This form paragraph should follow form paragraph 8.28.fti and should only be used ONCE in an Office action.

¶ 7.15.aia Rejection, 35 U.S.C. 102(a)(1)/102(a)(2)

Claim(s) [1] is/are rejected under 35 U.S.C. 102[2] as being [3] by [4].

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. This form paragraph must be preceded by form paragraph 7.03.aia.
• 2. In bracket 1, insert the claim numbers which are under rejection.
• 3. In bracket 2, insert either “(a)(1)” or “(a)(2)” or both. If paragraph (a)(2) of 35 U.S.C. 102 is applicable, use form paragraph 7.15.01.aia, 7.15.02.aia or 7.15.03.aia where applicable.
• 4. In bracket 3, insert either –clearly anticipated– or –anticipated– with an explanation at the end of the paragraph.
• 5. In bracket 4, insert the prior art relied upon.
• 6. This rejection must be preceded either by form paragraph 7.07.aia and form paragraphs 7.08.aia, and 7.12.aia as appropriate, or by form paragraph 7.103.
• 7. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.

¶ 7.15.fti Rejection, Pre-AIA 35 U.S.C. 102(a), (b) Patent or Publication, and (g)

Claim(s) [1] is/are rejected under pre-AIA 35 U.S.C. 102[2] as being [3] by [4].

Examiner Note:

• 1. In bracket 2, insert the appropriate paragraph letter or letters of pre-AIA 35 U.S.C. 102 in parentheses. If paragraph (e) of pre-AIA 35 U.S.C. 102 is applicable, use form paragraph 7.15.01.fti, 7.15.02.fti or 7.15.03.fti.
• 2. In bracket 3, insert either –clearly anticipated– or –anticipated– with an explanation at the end of the paragraph.
• 3. In bracket 4, insert the prior art relied upon.
• 4. This rejection must be preceded either by form paragraph 7.07.fti and form paragraphs 7.08.fti, 7.09.fti, and 7.14.fti as appropriate, or by form paragraph 7.103.
• 5. If pre-AIA 35 U.S.C. 102(e) is also being applied, this form paragraph must be followed by either form paragraph 7.15.01.fti, 7.15.02.fti or 7.15.03.fti.
• 6. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.

¶ 7.19.fti Rejection, pre-AIA 35 U.S.C. 102(f), Applicant Not the Inventor

Claim [1] is/are rejected under pre-AIA 35 U.S.C. 102(f) because the applicant did not invent the claimed subject matter. [2]

Examiner Note:

• 1. This paragraph must be preceded either by paragraphs 7.07.fti and 7.13.fti or by paragraph 7.103.
• 2. In bracket 2, insert an explanation of the supporting evidence establishing that applicant was not the inventor. See MPEP § 2137.

¶ 7.21.aia Rejection, 35 U.S.C. 103

Claim [1] is/are rejected under 35 U.S.C. 103 as being unpatentable over [2].

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. This form paragraph must be preceded by form paragraph 7.03.aia.
• 2. This form paragraph must be preceded by either form paragraph 7.20.aia or form paragraph 7.103.
• 3. An explanation of the rejection must follow this form paragraph. See MPEP § 2144.
• 4. If this rejection is a provisional 35 U.S.C. 103 rejection based upon a copending application that would constitute prior art under 35 U.S.C. 102(a)(2) if patented or published, use form paragraph 7.21.01.aia instead of this paragraph.
• 5. In bracket 1, insert the claim numbers which are under rejection.
• 6. In bracket 2, insert the prior art relied upon.
• 7. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.

¶ 7.21.fti Rejection, Pre-AIA 35 U.S.C. 103(a)

Claim [1] is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over [2].

Examiner Note:

• 1. This paragraph must be preceded by either form paragraph 7.20.fti or form paragraph 7.103.
• 2. An explanation of the rejection must follow this form paragraph. See MPEP § 2144.
• 3. If the rejection relies upon prior art under pre-AIA 35 U.S.C. 102(e), use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. In other words, use pre-AIPA 35 U.S.C. 102(e) only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000 or a continuing application claiming benefit under 35 U.S.C. 120, 121 or 365(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s 35 U.S.C. 102(e) date.
• 4. If the applicability of this rejection (e.g., the availability of the prior art as a reference under pre-AIA 35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(b)) prevents the reference from being disqualified under pre-AIA 35 U.S.C. 103(c), form paragraph 7.20.01.fti must follow this form paragraph.
• 5. If this rejection is a provisional pre-AIA 35 U.S.C. 103(a) rejection based upon a copending application that would comprise prior art under pre-AIA 35 U.S.C. 102(e) if patented or published, use form paragraph 7.21.01.fti instead of this paragraph.
• 6. In bracket 1, insert the claim numbers which are under rejection.
• 7. In bracket 2, insert the prior art relied upon.

¶ 7.15.01.aia Provisional Rejection, 35 U.S.C. 102(a)(2) – Common Assignee, Common Applicant, or At Least One Common (Joint) Inventor

Claim(s) [1] is/are provisionally rejected under 35 U.S.C. 102(a)(2) as being anticipated by copending Application No. [2] which has a common [3] with the instant application.

The copending application would constitute prior art under 35 U.S.C. 102(a)(2) if published under 35 U.S.C. 122(b) or patented under 35 U.S.C. 151. This provisional rejection under 35 U.S.C. 102(a)(2) is based upon a presumption of future publication or patenting of the copending application. [4].

This provisional rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the copending application was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the copending application and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.

This rejection may not be overcome by the filing of a terminal disclaimer. See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991).

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. This form paragraph must be preceded by form paragraph 7.03.aia.
• 2. This form paragraph is used to provisionally reject over a copending application that discloses the claimed invention and would constitute prior art under 35 U.S.C. 102(a)(2) if published under 35 U.S.C. 122 or patented. The copending application must have either a common assignee, common applicant (35 U.S.C. 118) or at least one common (joint) inventor.
• 3. 35 U.S.C. 102(a)(2) may be applied if the reference names another inventor (i.e., a different inventive entity) and is one of the following:
  • a U.S. patent granted under 35 U.S.C. 151 that has an effectively filed date earlier than the application;
  • a U.S. Patent Application Publication published under 35 U.S.C. 122(b) that has an effectively filed date earlier than the effective filing date of the claimed invention; or
  • a WIPO publication of an international application (PCT) or international design application that designates the United States where the WIPO publication has an effectively filed date earlier than the effective filing date of the claimed invention.

    If any of the three types of prior art documents under 35 U.S.C. 102(a)(2) issued or was published before the effective filing date of the claimed invention under examination, then the prior art document is also applicable under 35 U.S.C. 102(a)(1).

• 4. If the claims would have been obvious over the invention disclosed in the other copending application, use form paragraph 7.21.01.aia.
• 5. In bracket 1, insert claim number(s) under rejection.
• 6. In bracket 2, insert the application number.
• 7. In bracket 3, insert –assignee–, –applicant–, or –joint inventor–.
• 8. In bracket 4, provide an appropriate explanation of the examiner’s position on anticipation.
• 9. Under 35 U.S.C. 101, two patents are not permitted to issue on identical subject matter. Any claims in the instant application directed to the same invention claimed in the reference should be provisionally rejected using form paragraphs 8.30 and 8.32. Additionally, the applicant should be required to amend or cancel claims such that the applied reference and the instant application no longer contain claims directed to the same invention using form paragraph 8.27.aia.
• 10. Any claims in the instant application that are directed to subject matter that is not patentably distinct from an invention claimed in the reference should be rejected (or provisionally rejected if the reference has not yet issued as a patent) on the grounds of nonstatutory double patenting using form paragraph 8.33 and at least one of form paragraphs 8.34 – 8.39.
• 11. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.

¶ 7.15.01.fti Provisional Rejection, Pre-AIA 35 U.S.C. 102(e) – Common Assignee, Common Applicant, or At Least One Common (Joint) Inventor

Claim(s) [1] is/are provisionally rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by copending Application No. [2] which has a common [3] with the instant application.

The copending application would constitute prior art under pre-AIA 35 U.S.C. 102(e) if published under 35 U.S.C. 122(b) or patented. This provisional rejection under pre-AIA 35 U.S.C. 102(e) is based upon a presumption of future publication or patenting of the copending application. [4].

This provisional rejection under pre-AIA 35 U.S.C. 102(e) might be overcome either by a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the copending application was derived from the inventor of this application and is thus not the invention “by another,” or by an appropriate showing under 37 CFR 1.131(a).

This rejection may not be overcome by the filing of a terminal disclaimer. See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991).

Examiner Note:

• 1. This form paragraph is used to provisionally reject over a copending application that discloses the claimed invention and would constitute prior art under pre-AIA 35 U.S.C. 102(e) if published under 35 U.S.C. 122 or patented. The copending application must have either a common assignee, a common applicant (35 U.S.C. 118), or at least one common (joint) inventor.
• 2. Use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002 (form paragraph 7.12.fti) to determine the copending application’s prior art date, unless the copending application is based directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. If the copending application is either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000, or a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000, use pre-AIPA 35 U.S.C. 102(e) (form paragraph 7.12.01.fti). See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s 35 U.S.C. 102(e) date.
• 3. If the claims would have been obvious over the invention disclosed in the other copending application, use form paragraph 7.21.01.fti.
• 4. In bracket 3, insert –assignee–, –applicant–, or –joint inventor–.
• 5. In bracket 4, an appropriate explanation may be provided in support of the examiner’s position on anticipation, if necessary.
• 6. Under 35 U.S.C. 101, two patents are not permitted to issue on identical subject matter. Any claims in the instant application directed to the same invention claimed in the reference should be provisionally rejected using form paragraphs 8.30 and 8.32. Additionally, the applicant should be required to amend or cancel claims such that the applied reference and the instant application no longer contain claims directed to the same invention using form paragraph 8.27.fti.
• 7. Any claims in the instant application that are directed to subject matter that is not patentably distinct from an invention claimed in the reference should be rejected (or provisionally rejected if the reference has not yet issued as a patent) on the grounds of nonstatutory double patenting using form paragraph 8.33 and at least one of form paragraphs 8.34 – 8.39.
• 8. If evidence is additionally of record to show that either invention is prior art to the other under pre-AIA 35 U.S.C. 102(f) or (g), a rejection using form paragraphs 7.13.fti and/or 7.14.fti should also be made.
• 9. For applications with an actual filing date on or after March 16, 2013 that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.

¶ 7.15.02.aia Rejection, 35 U.S.C. 102(a)(2), Common Assignee, Applicant, or Joint Inventor(s)

Claim(s) [1] is/are rejected under 35 U.S.C. 102(a)(2) as being [2] by [3].

The applied reference has a common [4] with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.

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. This form paragraph must be preceded by form paragraph 7.03.aia.
• 2. This form paragraph is used to reject claims as anticipated over a U.S. patent, U.S. patent application publication, or WIPO publication with an earlier prior art date under 35 U.S.C. 102(a)(2). These references must have either a common assignee, a common applicant (35 U.S.C. 118), or at least one common (joint) inventor.
• 3. 35 U.S.C. 102(a)(2) may be applied if the reference names another inventor (i.e., a different inventive entity) and is one of the following:
  • a U.S. patent granted under 35 U.S.C. 151 that has an effectively filed date earlier than the effective filing date of the claimed invention;
  • a U.S. Patent Application Publication published under 35 U.S.C. 122(b) that has an effectively filed date earlier than the effective filing date of the claimed invention; or
  • a WIPO publication of an international application (PCT) or international design application that designates the United States where the WIPO publication has an effectively filed date earlier than the effective filing date of the claimed invention.

  If any of the three types of prior art documents under 35 U.S.C. 102(a)(2) was published before the effective filing date of the claimed invention under examination, then the prior art document is also applicable under 35 U.S.C. 102(a)(1).

• 4. In bracket 1, insert the claim numbers which are under rejection.
• 5. In bracket 2, insert either –clearly anticipated– or –anticipated– with an explanation at the end of the paragraph.
• 6. In bracket 3, insert the prior art relied upon.
• 7. In bracket 4, insert –assignee–, –applicant–, or –joint inventor–.
• 8. This form paragraph must be preceded by form paragraph 7.12.aia.
• 9. Under 35 U.S.C. 101, two patents are not permitted to issue on identical subject matter. Any claims in the instant application directed to the same invention claimed in the reference should be rejected (or provisionally rejected if the reference has not yet issued as a patent) on the grounds of statutory double patenting using form paragraphs 8.30 – 8.32. Additionally, the applicant should be required to amend or cancel claims such that the reference and the instant application no longer contain claims directed to the same invention using form paragraph 8.27.aia.
• 10. Any claims in the instant application that are directed to subject matter that is not patentably distinct from an invention claimed in the reference should be rejected (or provisionally rejected if the reference has not yet issued as a patent) on the grounds of nonstatutory double patenting using form paragraph 8.33 and at least one of form paragraphs 8.34 – 8.39.
• 11. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.

¶ 7.15.02.fti Rejection, Pre-AIA 35 U.S.C. 102(e), Common Assignee, Applicant, or Joint Inventor

Claim(s) [1] is/are rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by [2].

The applied reference has a common [3] with the instant application. Based upon the pre-AIA 35 U.S.C. 102(e) date of the reference, it constitutes prior art. This rejection under pre-AIA 35 U.S.C. 102(e) might be overcome either by a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the reference was derived from the inventor or joint inventors (i.e., the inventive entity) of this application and is thus not the invention “by another,” or if the same invention is not being claimed, by an appropriate showing under 37 CFR 1.131(a).

Examiner Note:

• 1. This form paragraph is used to reject over a patent or patent application publication that is prior art under pre-AIA 35 U.S.C. 102(e) to the claimed invention. The patent or patent application publication must have either a common assignee, a common applicant (35 U.S.C. 118), or a common (joint) inventor.
• 2. Pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act of 1999 (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002 (form paragraph 7.12.fti) must be applied if the reference is by another and is one of the following:
  • a U.S. patent or a publication of a U.S. application for patent filed under 35 U.S.C. 111(a);
  • a U.S. patent issued directly or indirectly from, or a U.S. or WIPO publication of, an international application (PCT) if the international application has an international filing date on or after November 29, 2000;
  • a U.S. patent issued from, or a WIPO publication of, an international design application that designates the United States.

  See the Examiner Notes for form paragraph 7.12.fti to assist in the determination of the pre-AIA 35 U.S.C. 102(e) date of the reference.

• 3. Pre-AIPA 35 U.S.C. 102(e) (form paragraph 7.12.01.fti) must be applied if the reference is a U.S. patent issued directly, or indirectly, from an international application filed prior to November 29, 2000. See the Examiner Notes for form paragraph 7.12.01.fti to assist in the determination of the pre-AIPA 35 U.S.C. 102(e) date of the reference.
• 4. In determining the pre-AIA 35 U.S.C. 102(e) date, consider benefit claims to earlier-filed U.S. provisional applications under 35 U.S.C. 119(e), and to earlier-filed U.S. nonprovisional applications and international applications under 35 U.S.C. 120, 121, 365(c), or 386(c) if the subject matter used to make the rejection is appropriately supported in the relied upon earlier-filed application’s disclosure (and any intermediate application(s)). A benefit claim to a U.S. patent of an earlier-filed international application, which has an international filing date prior to November 29, 2000, may only result in a prior art date under pre-AIPA 35 U.S.C. 102(e) as of the date the requirements of 35 U.S.C. 371(c)(1), (2) and (4) were fulfilled. Do NOT consider any benefit claims to U.S. applications which are filed before an international application that has an international filing date prior to November 29, 2000. Do NOT consider foreign priority claims under 35 U.S.C. 119(a) – (d), 365(a) or (b), or 386(a) or (b).

  In addition, a reference (i.e., a U.S. patent, published U.S. patent application, or WIPO publication) is entitled to the benefit of the filing date of a provisional application only if at least one of the claims in the reference is supported by the written description of the provisional application in compliance with pre-AIA 35 U.S.C. 112, first paragraph or 35 U.S.C. 112(a). See Dynamic Drinkware, LLC, v. National Graphics, Inc., 800 F.3d 1375, 116 USPQ2d 1045 (Fed. Cir. 2015) and Amgen v. Sanofi, 872 F.3d 1367, 1380 (Fed. Cir. 2017).

• 5. If the reference is a publication of an international application (PCT), including voluntary U.S. publication under 35 U.S.C. 122 of the national stage or a WIPO PCT publication, that has an international filing date prior to November 29, 2000, did not designate the United States or was not published in English by WIPO, do not use this form paragraph. Such a reference is not a prior art reference under pre-AIA 35 U.S.C. 102(e). The reference may be applied under pre-AIA 35 U.S.C. 102(a) or (b) as of its publication date. See form paragraphs 7.08.fti and 7.09.fti.
• 6. In bracket 3, insert –assignee–, –applicant–, or –joint inventor–.
• 7. This form paragraph must be preceded by either of form paragraphs 7.12.fti or 7.12.01.fti.
• 8. Patent application publications may only be used if this form paragraph was preceded by form paragraph 7.12.fti.
• 9. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06.
• 10. Under 35 U.S.C. 101, two patents are not permitted to issue on identical subject matter. Any claims in the instant application directed to the same invention claimed in the reference should be rejected (or provisionally rejected if the reference has not yet issued as a patent) using form paragraphs 8.30 – 8.32. Additionally, the applicant should be required to resolve any issue of priority under pre-AIA 35 U.S.C. 102(g) and possibly pre-AIA 35 U.S.C. 102(f) using form paragraph 8.27.fti. See MPEP § 804, subsection II.A.
• 11. Any claims in the instant application that are directed to subject matter that is not patentably distinct from an invention claimed in the reference should be rejected (or provisionally rejected if the reference has not yet issued as a patent) on the grounds of nonstatutory double patenting using form paragraph 8.33 and at least one of form paragraphs 8.34 – 8.39.

¶ 7.21.01.aia Provisional Rejection, 35 U.S.C. 103, Common Assignee, Common Applicant, or at Least One Common (Joint) Inventor

Claim [1] is/are provisionally rejected under 35 U.S.C. 103 as being obvious over copending Application No. [2] which has a common [3] with the instant application. The copending application would constitute prior art under 35 U.S.C. 102(a)(2) if published or patented. This provisional rejection under 35 U.S.C. 103 is based upon a presumption of future publication or patenting of the copending application. [4]

This provisional rejection might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the copending application was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the copending application and the claimed invention either were owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.

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. This form paragraph must be preceded by form paragraph 7.03.aia.
• 2. This form paragraph is used to provisionally reject claims over a copending application that discloses the claimed invention and would constitute prior art under 35 U.S.C. 102(a)(2) if published under 35 U.S.C. 122 or patented. The copending application must have either a common assignee, common applicant ( 35 U.S.C. 118 ) or at least one common (joint) inventor.
• 3. If the claimed invention is fully disclosed in the copending application, use form paragraph 7.15.01.aia.
• 4. In bracket 1, insert the claim number(s) which is/are under rejection.
• 5. In bracket 2, insert the application number.
• 6. In bracket 3, insert –assignee–, –applicant–, or –joint inventor–.
• 7. In bracket 4, insert an explanation of obviousness. See MPEP § 2144.
• 8. If the claimed invention is not patentably distinct from the invention claimed in the copending application, a provisional nonstatutory double patenting rejection should additionally be made using form paragraphs 8.33 and 8.37.

¶ 7.21.01.fti Provisional Rejection, Pre-AIA 35 U.S.C. 103(a), Common Assignee, Common Applicant, or at Least One Common (Joint) Inventor

Claim [1] is/are provisionally rejected under pre-AIA 35 U.S.C. 103(a) as being obvious over copending Application No. [2] which has a common [3] with the instant application. The copending application would constitute prior art under pre-AIA 35 U.S.C. 102(e) if published or patented. This provisional rejection under pre-AIA 35 U.S.C. 103(a) is based upon a presumption of future publication or patenting of the copending application. [4]

This provisional rejection might be overcome either by a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the copending application was derived from the inventor or joint inventors (i.e., the inventive entity) of this application and is thus not the invention “by another,” or by a showing of a date of invention for the instant application prior to the pre-AIA 35 U.S.C. 102(e)date of the copending application under 37 CFR 1.131(a). This rejection might also be overcome by showing that the copending application is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a rejection under pre-AIA 35 U.S.C. 103(a). See MPEP § 2146 et seq.

Examiner Note:

• 1. This paragraph is used to provisionally reject claims not patentably distinct from the disclosure in a copending application that would be prior art under pre-AIA 35 U.S.C. 102(e) to the claimed invention if published or issued as a patent and also has either a common assignee, a common applicant (35 U.S.C. 118), or at least one common (joint) inventor. This form paragraph should not be used when the copending application is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection. See MPEP § 2146.03(a).
• 2. Use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act (AIPA) to determine the copending application’s prior art date, unless the copending application is based directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. If the copending application is either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000, or a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000, use pre-AIPA 35 U.S.C. 102(e) to determine the copending application’s prior art date. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s pre-AIA and pre-AIPA 35 U.S.C. 102(e) dates, respectively.
• 3. If the claimed invention is fully disclosed in the copending application, use paragraph 7.15.01.fti.
• 4. In bracket 1, insert the claim number(s) which is/are under rejection.
• 5. In bracket 2, insert the application number.
• 6. In bracket 3, insert –assignee–, –applicant–, or –joint inventor–.
• 7. In bracket 4, insert an explanation of obviousness. See MPEP § 2144.
• 8. If the claimed invention is not patentably distinct from the invention claimed in the copending application, a provisional obviousness double patenting rejection should additionally be made using form paragraphs 8.33 and 8.37.
• 9. A rejection should additionally be made under pre-AIA 35 U.S.C. 103(a) using form paragraph 7.21.fti if:
  • evidence indicates that the copending application is also prior art under pre-AIA 35 U.S.C. 102(f) or (g) (e.g., applicant has named the prior inventor in response to a requirement made using form paragraph 8.28.fti); and
  • the copending application has not been disqualified as prior art in a pre-AIA 35 U.S.C. 103(a) rejection pursuant to pre-AIA 35 U.S.C. 103(c).

¶ 7.21.02.aia Rejection, 35 U.S.C. 103, Common Assignee, Common Applicant, or at Least One Common (Joint) Inventor

Claim [1] is/are rejected under 35 U.S.C. 103 as being obvious over [2].

The applied reference has a common [3] with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). [4]

This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.

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. This form paragraph must be preceded by form paragraph 7.03.aia.
• 2. This paragraph is used to reject over a reference (patent or published application) that discloses the claimed invention, and that ONLY qualifies as prior art under 35 U.S.C. 102(a)(2). If the reference qualifies as prior art under 35 U.S.C. 102(a)(1), then this form paragraph should not be used (form paragraph 7.21.aia should be used instead). The reference must have either a common assignee, a common applicant (35 U.S.C. 118 ), or at least one common (joint) inventor. This form paragraph should not be used in applications when the reference is not prior art in view of the 35 U.S.C. 102(b)(2)(C) exception.
• 3. In bracket 3, insert –assignee–, –applicant–, or –joint inventor–.
• 4. In bracket 4, insert an explanation of obviousness. See MPEP § 2144.

¶ 7.22.aia Rejection, 35 U.S.C. 103, Further in View Of

Claim [1] is/are rejected under 35 U.S.C. 103 as being unpatentable over [2] as applied to claim [3] above, and further in view of [4].

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. This form paragraph must be preceded by form paragraph 7.03.aia.
• 2. This form paragraph must be preceded by form paragraph 7.21.aia.
• 3. An explanation of the rejection must follow this form paragraph. See MPEP § 2144.

¶ 7.21.02.fti Rejection, pre-AIA 35 U.S.C. 103(a), Common Assignee, Common Applicant, or at Least One Common (Joint) Inventor

Claim [1] is/are rejected under pre-AIA 35 U.S.C. 103(a) as being obvious over [2].

The applied reference has a common [3] with the instant application. Based upon the pre-AIA 35 U.S.C. 102(e) date of the reference, it constitutes prior art. This rejection under pre-AIA 35 U.S.C. 103(a) might be overcome by: (1) a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the reference was derived from the inventor of this application and is thus not an invention “by another”; (2) a showing of a date of invention for the claimed subject matter of the application which corresponds to subject matter disclosed but not claimed in the reference, prior to the pre-AIA 35 U.S.C. 102(e) date of the reference under 37 CFR 1.131(a); or (3) an oath or declaration under 37 CFR 1.131(c) stating that the application and reference are currently owned by the same party and that the inventor or joint inventors (i.e., the inventive entity) named in the application is the prior inventor under pre-AIA 35 U.S.C. 104 as in effect on March 15, 2013, together with a terminal disclaimer in accordance with 37 CFR 1.321(c). This rejection might also be overcome by showing that the reference is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a rejection under pre-AIA 35 U.S.C. 103(a). See MPEP § 2146 et seq. [4]

Examiner Note:

• 1. This paragraph is used to reject over a reference (patent or published application) that discloses the claimed invention, and that only qualifies as prior art under pre-AIA 35 U.S.C. 102(e). If the reference qualifies as prior art under pre-AIA 35 U.S.C. 102(a) or (b), then this form paragraph should not be used (form paragraph 7.21.fti should be used instead). The reference must have either a common assignee, a common applicant (35 U.S.C. 118), or at least one common (joint) inventor. This form paragraph should not be used in applications when the reference is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection. See MPEP § 2146.03.
• 2. Pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act of 1999 (AIPA) must be applied if the reference is by another and is one of the following:
  • a U.S. patent or a publication of a U.S. application for patent filed under 35 U.S.C. 111(a);
  • a U.S. patent issued directly or indirectly from, or a U.S. or WIPO publication of, an international application (PCT) if the international application has an international filing date on or after November 29, 2000;
  • a U.S. patent issued from, or a WIPO publication of, an international design application that designates the United States.

  See the Examiner Notes for form paragraph 7.12.fti to assist in the determination of the pre-AIA 35 U.S.C. 102(e) date of the reference.

• 3. Pre-AIPA 35 U.S.C. 102(e) must be applied if the reference is a U.S. patent issued directly, or indirectly, from an international application filed prior to November 29, 2000. See the Examiner Notes for form paragraph 7.12.01.fti to assist in the determination of the pre-AIPA 35 U.S.C. 102(e) date of the reference.
• 4. In bracket 1, insert the claim number(s) which is/are under rejection.
• 5. In bracket 2, insert the prior art reference(s) relied upon for the obviousness rejection.
• 6. In bracket 3, insert –assignee–, –applicant–, or –joint inventor–.
• 7. In bracket 4, insert an explanation of obviousness. See MPEP § 2144.