Monday, September 8, 2008

Co owned patent Cannot use patent as 103 reference

Lawler, U.S. Patent 5,907,323, Cannot Be Used as a 103 Reference.
35 U.S.C. §103(c)(1) states:
Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.
The instant application was assigned to Microsoft (through its parent application, No. 09/870,267, now issued as U.S. Patent 7,383,564), on June 21, 2004, at reel 014754, frames 0553-0565. Lawler, patent 5,907,323 (“Lawler ‘323”) (Application number 08/969,979) also is assigned to Microsoft, as can be seen on the front of the Lawler patent.
Lawler ‘323 qualifies as prior art to the instant application only under subsection (e) of section 102, as Lawler’s first publication date was its issue date of May 25, 1999. The priority date of the instant application is November 30, 1998. Further, Lawler ‘323 and the instant application were, to the knowledge of the undersigned attorney, at the time the claimed invention was made, both owned by Microsoft. Therefore, Lawler ‘323 cannot be used by the Office as a 35 U.S.C. §103 prior art reference. Lawler ‘323 is incorporated into the instant application by reference in the Specification on page 9, lines 24 through 26 as application number 08/969,979.

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