I came across a forum where a prosecuting attorney had posted a question regarding a 103 rejection. The question posted was:
“Has anyone ever seen a 103 rejection like this?
In a CIP, the independent claims were allowed with a terminal disclaimer and a number of the dependent claims were rejected under 103. The rationale the Examiner used is that the independent claims have a priority claim back to the parent and avoid the related prior art, but the dependent claims contain subject matter that was introduced in the CIP and thus cannot avoid the related prior art.
I've always thought under In re Fine (among other twenty year old Fed. Cir cases), without exception, a dependent claim cannot be rejected under 103 if the underlying independent claim is allowable. Has anyone seen anything different that they could cite to or identify?” [1]
After reading this post, I felt like I understood why the claims were rejected. It comes down to when the inventor had possession of the claimed invention.
First, let us define what a Continuation-In-Part (CIP) [3]: A CIP adds new matter to the specification, and the effective filing date of the CIP is determined for each claim based on the date which the claim can find support (i.e. satisfying the 112 ¶1 requirements [2])
see MPEP 201.08
see MPEP 201.08
Example 1:
Assume a parent application disclosed the corresponding structure of {A,B}, with sufficient written description and enablement. Later the inventor of the parent application discovers some enhancement to the previous invention, that is {A,Bsp}, where B is more specific.
He quickly files a CIP claiming priority to the previous application, however any claims directed towards Bsp would only receive the filing date of the CIP and NOT the parent. Since the Parent application does not support Bsp in view of 112 ¶1.
So assuming the parent application is filed in 01/2006 and the CIP is filed in 01/2007
Claim 1. An apparatus comprising:
A
B
Claim 2. The apparatus of Claim 1, wherein B is Bsp.
Thus,
Claim 1 would have a filing date of 01/2006
Claim 2 would have a filing date of 01/2007 - thus any prior art before this date could be used to reject the dependent claim, and Claim 1 could still be allowed - cool huh.
This example could be tweaked for other priority documents (foreign priority examples). I believe 112¶1 is quite clear what is required for determining possession of an invention.
For example an application claims priority to 2 foreign documents.
US Application filing date: 01/2006
Foreign Application 1: 01/2005
Foreign Application 2: 06/2005
Assuming sufficient support is each documents of the following features.
US Application discloses the features of {A,B,C,D,E}
Foreign Application 1 {A,B,C,E}
Foreign Application 2 {D,E}
Thus priority should be conducted on a claim by claim basis, if in the US application had the following claims
Claim 1. An apparatus comprising:
A;
B;
C; and
E.
Claim 2. The apparatus of Claim 1, further comprising D.
The priority (foreign date) would be extended to 01/2005 for claim 1, however Claim 2 would only receive the filing date of the US application. Since, both foreign priority documents fail to disclose a written description and enablement of the claimed apparatus that is how one skilled in the art would have constructed an apparatus comprising the elements {A-E}.
Assuming the examiner only discovered a single 102 prior art document that teaching the claimed invention {A-E} with a date on 05/2005. The examiner would allow claim 1. However, the examiner would reject the dependent claim 2, since the priority date is only 01/2006.
Sources:
Comments?
