Question: Johnson invented an improved hose clamp for use on automobile radiator hoses and retained the services of a registered patent agent to obtain patent protection for his invention. The agent prepared the application and filed it in the PTO on June 20, 1994. On October 23, 1996, the patent agent filed a continuation application claiming the benefit of priority under 35 U.S.C.  120, and thereafter permitted the parent application to become abandoned. During prosecution of the continuation application, the primary examiner rejected all the claims under 35 U.S.C. § 103 as unpatentable over Johnson's issued patents, specifically, Johnson '012 in view of Johnson '004. The Johnson '012 patent issued on November 12, 1991, on an application filed on April 18, 1990. The Johnson '004 patent issued on January 10, 1995, on an application filed on December 3, 1992. Following the filing of a reply traversing the examiner's rejection of the claims, the examiner issued a final rejection. Johnson has now learned that his patent agent has suffered a stroke and is unable to continue representing him, and asks you for your opinion as to whether there is a reasonable chance of overcoming the examiner's rejection.Based on the following opinions, which do you believe is the best answer and most consistent with PTO practice and procedure?
A. There is little likelihood of overcoming the primary examiner's rejection because both references issued more than a year prior to the filing date of the continuation application. This is supported by 35 U.S.C.  102, which states, "A person shall be entitled to a patent unless - .. . (b) the invention was patented . .. in this .. . country .. . more than one year prior to the date of the application for patent in the United States . . . ."
B. There is little likelihood of overcoming the primary examiner's rejection because the primary reference, i.e., Johnson '012 patent, issued more than a year prior to the filing date of the parent application, and the secondary reference, i.e., Johnson '004, was filed more than a year prior to the filing date of the parent application. This is supported by 35 U.S.C. § 102, which states, "A person shall be entitled to a patent unless - . . . (b) the invention was patented. . . in this . . . country . . . more than one year prior to the date of the application for patent in the United States . . . or . . . (e) the invention was described in a patent granted on an application for patent . . . filed in the United States before the invention thereof by the applicant for patent. . . ."
C. There is a reasonable chance of overcoming the primary examiner's rejection because the secondary reference, i.e., Johnson 004 patent, is Johnson's own patent and does not qualify as prior art under 35 U.S.C. § 102(a) or (e). Also, since the Johnson '004 patent issued after the filing date of the parent application, and since the continuation application is simply a continuation of the parent application, the Johnson '004 patent does not constitute prior art under 35 U.S.C. §102(b). Accordingly, the Johnson '004 patent does not qualify as prior art to support a rejection under 35 U.S.C. § 103.
D. There is a reasonable chance of overcoming the primary examiner's rejection because the secondary reference, i.e., Johnson 004 patent, was first patented prior to the filing date of the continuation application for patent in the United States on an application for patent filed more than twelve months before the filing date of the continuation application for patent in the United States. This is supported by 35 U.S.C. § 102, which states, "A person shall be entitled to a patent unless - . . . (d) the invention was first patented . . . by the applicant . . . in a foreign country prior to the date of the application for patent in this country on an application for patent . . . filed more than twelve months before the filing of the application in the United States . . . ."
(category: patent, Chinese translation: 专利)