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

[George Jakobsche]

I had a similar situation. I filed a declaration by the inventor/co-author declaring that the part of the paper being cited was authored/contributed by the inventor. The examiner withdrew the rejection.

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George
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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of Andrew Berks via Patentpractice <Patentpractice at oppedahl-lists.com>
Date: Saturday, February 17, 2024 at 9:55 AM
To: Patentpractice at oppedahl-lists.com <Patentpractice at oppedahl-lists.com>
Cc: Andrew Berks <andrew at berksiplaw.com>
Subject: [Patentpractice] Expansive MPEP Interpretation of 35 USC 102(b)(1) - not consistent with the statute; MPEP 2153.01(a)
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.



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

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