[Patentpractice] Prior Art Question re: intersection of incorporation by reference and priority

[Timothy Snowden]

Good point Rick – the assumption would be correct. In this hypothetical, PCT application duly entered national stage in both applications: Family A issued and Family B remained pending.

________________________________
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of Rick Neifeld via Patentpractice <patentpractice at oppedahl-lists.com>
Sent: Thursday, February 29, 2024 3:12 PM
To: patentpractice at oppedahl-lists.com <patentpractice at oppedahl-lists.com>
Cc: Rick Neifeld <rneifeld at neifeld.com>
Subject: Re: [Patentpractice] Prior Art Question re: intersection of incorporation by reference and priority

Review your emails and the responses from Scott and Bruce I note that you stated "US application A is duly filed and matures to patent" and you stated "US application B is duly filed and remains pending."
I assume that Scott and Bruce assumed what you meant was that PCT application A entered the US national stage and issued into a US patent, and that PCT application B entered the US national stage and remains pending.
However, your stated facts do not say that.



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On 2/29/2024 2:21 PM, Timothy Snowden via Patentpractice wrote:
I have a hypothetical that seems to be coming out one way, but I'm not trusting the outcome based on my reading of the law (as well as commentary). More specifically, I want to run my thought process by the group and see if I'm not thinking of an additional relevant code that may change the outcome.

Hypothetical Fact Pattern:

  1.
Provisional Application A is filed 1/1/2017 containing subject matter A
     *
PCT A is filed 12/31/2017
     *
US application A is duly filed and matures to patent
        *
claims are amended to further limit to variation A1 that excludes variation A2
        *
no continuation pending, broadening reissue date is past
  2.
Provisional Application B is filed 1/1/2018 (1 day after PCT A is filed, and within 1 year of Provisional A) describing subject matter A, D, and E but ALSO incorporating PCT A by reference
(nothing has been published from family A before Provisional B is filed)
     *
PCT B is duly filed
     *
US application B is duly filed and is still pending – claiming subject matter B (close relationship and roughly same physical structure to subject matter A, but different application / operation / optimization) – for this scenario, we don't care what happens to subject matter B.
  3.
CONTINUATION US Application B1 is filed (properly claiming priority to have an effective filing date of 1/1/2018) making use of the incorporation by reference to draw into the specification the description of features B & C from PCT A --- and CLAIM A, B, and C – specifically claiming variation C2.
     *
There is NO priority claim to the "A" family.

NOTE: Assume all applications have at least 1 common inventor, and all applications are owned by the same entity.

Question:

  *
Can any of the "A" family applications be used as prior art against the "B1" continuation application to reject the claim to subject matter variation A2? (other than double-patenting – which is fine)

My current thinking:

  *
Family A is not prior art to Continuation B1 under 35 USC 102(a)(1) because it was not published prior to filing
  *
Family A is prior art to Continuation B1 under 35 USC 102(a)(2) (because of 35 USC 102(d)) because it has been published by now (35 USC 122b) AND has an effective filing date (1/1/2017) prior to that of Continuation B1 (1/1/2018).
  *
Family A falls under the EXCEPTION in 35 USC 102(b)(2) because the applications are commonly owned by 1/1/2018.
(NOTE: I found one commentator that indicated there had to be different inventors for this exception, but I can't find that supported in the text?)
  *
I don't think the Paris Convention or PCT modifies this finding because:
     *
the priority claims were all proper for the various national stage applications
     *
this is a 'regular' US Continuation now under US law, properly claiming priority through the "US application in the PCT B bundle" to the Provisional B – therefore, 35 USC 102(b)(2) (taking into account 35 USC 102(d), which contemplates PCT priority) excludes the prior application as prior art.

Where are the holes in this line of thought?

Thanks!


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