[Patentpractice] Expansive MPEP Interpretation of 35 USC 102(b)(1) - not consistent with the statute; MPEP 2153.01(a)

[Andrew Berks]

 I got an obviousness rejection based in part on a paper published 6 months
before the patent application filing date. The paper had 8 authors, 2 of
whom were inventors on the patent.
I asserted that the paper was not prior art based on 35 USC 102(b)(1) - a
paper published less than one year before the filing date made by the
inventor or joint inventor is an exception to 102(a)(1).
The examiner refused to discount the paper b/c of the other authors. This
is part of MPEP 2153.01(a), explaining that a disclosure is not prior art
if it (1) was made one year or less before the effective filing date of the
claimed invention; (2) names the inventor or a joint inventor as an author
or an inventor; and (3) does not name additional persons as authors on a
printed publication or joint inventors on a patent.
My view is that the MPEP takes an expansive reading of the statute. The
statute is silent as to the case, where as here, there are additional
authors on a paper that names the inventors as authors and was published
less than one year before the priority date. The MPEP reads in a
requirement that is not part of the statute. Moreover, the MPEP cites no
precedent for this added requirement.
I'm going to make this argument on appeal to the PTAB, which is the next
step in this application.



Andrew Berks, Ph.D., J.D. | Partner

Patent Attorney and IP Licensing

FRESH IP PLC

28 Liberty St 6th Fl

New York NY 10005 (US)

Main office: 11710 Plaza America Drive, Suite 2000, Reston, VA 20190 USA
e: andrew at freship.com | w: www.freship.com berksiplaw.com

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