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

[Bryan McWhorter]

As I was thinking about this today and reading a bit more, I came across a
relevant Patently-O article (
https://patentlyo.com/patent/2022/05/inventive-publication-another.html).
In particular, the article discusses changes due to the AIA, the legal
uncertainty on this issue post-AIA, and the PTO's current position that the
relevant line of pre-AIA cases still applies.  Perhaps of interest to those
that face this question going forward.

On Sat, Feb 17, 2024 at 9:56 AM bill--- via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> These type of rejections can be overcome with so-called “*In re Katz*”
> declarations. See MPEP 2155.01.
>
>
>
> *From:* Patentpractice <patentpractice-bounces at oppedahl-lists.com> *On
> Behalf Of *Andrew Berks via Patentpractice
> *Sent:* Saturday, February 17, 2024 9:55 AM
> *To:* 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.
>
>
>
>
>
>
> *Andrew Berks, Ph.D., J.D.* *| Partner*
>
> *Patent Attorney and IP Licensing*
>
> FRESH IP PLC
>
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>
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>
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>
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>
>
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