Question: As patent counsel for the Apex Biotechnoligy Corporation, you filed a patent application in the PTO on January 2, 1998, naming Smith as inventor, with claims directed to a method for recovering a purified eucaryotic growth hormone or an analog thereof from a bacterial cell. The growth hormone or analog thereof is produced in the bacterial cell via expression of a DNA sequence encoding the hormone or analog. A primary patent examiner initially rejected all the claims as obvious under 35 U.S.C. §§ 102(e)/103 in view of a commonly assigned application Serial No. 0X/XXX,XXX (the 'XXX application), filed December 29, 1995 naming Jones as inventor. The rejection was "provisional" in the sense that the 'XXX application had not yet issued as a patent. After consultations with Smith and Apex management, you filed a terminal disclaimer complying with 37 CFR § 1.321(c) disclaiming that part of the term of the Smith application which would extend beyond the expiration date of the commonly assigned, copending 'XXX application. Upon the 'XXX application becoming abandoned, in favor of a Continued Prosecution Application (CPA), filed June 4, 1998, the examiner withdrew the rejection and substituted the following two rejections in the Smith application: (1) A rejection of all the claims under 35 U.S.C. § 102(e)/103 as obvious over commonly-assigned U.S. Patent No. A,AAA,AAA to Able in view of U.S. Patent No. B,BBB,BBB to Baker, and (2) A "provisional" rejection of all the claims under 35 U.S.C. § 102(e)/103 as obvious over of the CPA application in view U.S. Patent No. B,BBB,BBB to Baker. The examiner correctly noted that both the Able patent and the CPA application disclose, but do not claim, the subject matter of the abandoned 'XXX application, and that the application which matured into the Able patent was assigned to Apex and was filed in the PTO on December 29, 1995. The invention claimed in the Smith application is patentably distinct from the inventions claimed in the Able patent and the CPA application.Which of the following actions and/or arguments is most likely to overcome the examiner's rejections?
A. File a reply arguing (1) that the terminal disclaimer should be effective to overcome the 35 U.S.C. § 102(e)/103 rejection based on the public policy implicit in 35 U.S.C. § 103(c), which precludes citation as prior art of commonly-owned subject matter developed by another person, and (2) that Smith, Able, and Jones are "other persons."
B. File a declaration under 37 CFR § 1.132 by Smith unequivocally declaring that he conceived or invented the subject matter disclosed but not claimed in the references.
C. File a reply arguing that the terminal disclaimer should be effective to overcome the 35 U.S.C. § 102(e)/103 rejection based on the analogy of such rejection to a double patenting situation, citing In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed.Cir. 1985), wherein the court characterized an obviousness-type double patenting rejection as "analogous" to a 35 U.S.C. § 103 rejection.
D. File an affidavit under 37 CFR  1.131 by Smith including facts that Smith conceived the claimed invention in a NAFTA member country in August 1993, that Smith moved to Hawaii in 1994 and began working on his conception in earnest during the period December 1994 until December 1, 1995, when he moved to a WTO member country other than a NAFTA country, where he successfully reduced his invention to practice on December 28, 1995. Accompany the affidavit with the argument that the affidavit effectively "swears back" of such references.
(category: patent, Chinese translation: 专利)