the Board rejected Patent Owner’s attempt to antedate 102(a) prior art under the Doctrine of Inurement, finding that insufficient evidence supported a finding that the work of a third party inured to the benefit of Patent Owner.
More specifically, Patent Owner argued that it had communicated the design of the subject matter later claimed in the subject patent (design for a multiple-crock buffet server) to a third party for manufacture of a prototype.
, the first IPR final decision, the PTAB rejected the patent owner’s corroborating documents, declaration, and deposition testimony introduced to prove that he was first to invent the claimed speed limit indicator technology.
Under pre-AIA law, inventors can disqualify prior art references by proving an earlier date of invention.
Cuozzo testified that he received a preliminary patentability report in “January 2001,” analyzed it, and return-corresponded on March 2.
Characterizing “January 2001” as vague and noting “Cuozzo would benefit with a later date of receipt of the preliminary report,” the Board assigned “the earliest day in January,” as the receipt date.
102(e) rejection can be overcome by antedating the filing date (see MPEP § 2136.03 regarding critical reference date of pre-AIA 35 U. In re Mathews, 408 F.2d 1393, 161 USPQ 276 (CCPA 1969). 119 is met and the foreign application or provisional application “supports” (conforms to 35 U.
to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq.
102(e) REJECTION CAN BE OVERCOME BY ANTEDATING THE FILING DATE OR SHOWING THAT DISCLOSURE RELIED ON IS APPLICANT'S OWN WORK When a prior U.
The first prototype was then manufactured and sent to Patent Owner by the third party months prior to the date of the prior art references relied upon in this challenge.
There were no design changes in taking the prototype to the present day commercial model. Patent Owner, assuming conception was established by photographs of the prototype and business records, argued that reduction to practice was achieved prior to the date of the prior art, as evidenced by several commercial product description documents which antedate the prior art by a few months. Petitioner responded by rebutting Patent Owner’s argument the doctrine of inurement applied (that acts by others working explicitly or implicitly at the inventor’s request will inure to the inventor’s benefit).