[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159. For a discussion of 37 CFR 1.130, affidavits or declarations of attribution or prior public disclosure in applications subject to the first inventor to file provisions of the AIA, see MPEP § 717. For a discussion of affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.]
The mere fact that the reference patent or application publication which shows but does not claim certain subject matter and the application which claims it are owned by the same assignee does not avoid the necessity of filing an affidavit or declaration under 37 CFR 1.131(a), in the absence of a showing under 37 CFR 1.132 that the patentee derived (in the context of pre-AIA law) the subject matter relied on from the applicant (MPEP § 716.10). The common assignee does not obtain any rights in this regard by virtue of common ownership which he or she would not have in the absence of common ownership. In re Frilette, 412 F.2d 269, 162 USPQ 163 (CCPA 1969); Pierce v. Watson, 275 F.2d 890, 124 USPQ 356 (D.C. Cir. 1960); In re Beck, 155 F.2d 398, 69 USPQ 520 (CCPA 1946). Where, however, a rejection is applied under pre-AIA 35 U.S.C. 102(f)/103 or pre-AIA 35 U.S.C. 102(g)/103, or, in an application filed on or after November 29, 1999, under pre-AIA 35 U.S.C. 102(e)/103 using the reference, a showing that the invention was commonly owned, or subject to an obligation of assignment to the same person, at the time the later invention was made would preclude such a rejection or be sufficient to overcome such a rejection. See MPEP §§ 2146.01 – MPEP § 2146.02. For applications subject to current 35 U.S.C. 102, see MPEP § 2154.02(c).