References in Support of Obviousness Rejections

As a general matter, the 102 sections listed in this chapter may be applied to show that a later filed patent application lacks novelty, is obvious, or both. A rejection of patentability under one or more of the 102 sections alleging that the claimed invention is not novel is usually referred to simply as a 102 rejection, referenced to whatever sections the prior art belongs to. For example, if a prior art nonpatent publication by another more than 1 year before the application in question was alleged to defeat the novelty of the applicant s claimed invention then a rejection under 102(b) could be brought this would be called 102(b) rejection for lack of novelty.42 For a rejection to be made solely upon a 102 reference, a single prior art reference must disclose every element of the patent application claim. If a combination of multiple prior art references is needed to disclose the entirety of the invention, this cannot be the basis for a novelty rejection. However, multiple references may be used to reject a patent application claim as being obvious —that is, the invention may be technically novel, but still not patentable. 

Rejections alleging nonpatentability due to obviousness are referred to as 103 rejections and will be discussed extensively in Chapter 8. The general rule is that rejections made under 103 will rely on the same prior art references as do 102 novelty rejections, with a couple of narrow but important exceptions. Section 103 is composed of sections (a), (b), and (c) but most obviousness rejections pertaining to chemical cases are made under section (a), which states the statutory definition of obviousness.43 In regard to our discussion of prior art, the narrow and important exceptions to this prior art rule fall under section (c)(1) and (c)(2)  

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 

For purposes of this subsection, subject matter developed by another person and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person if— 

44 If the earlier patent application was to the same inventive entity then 102(a) and 102(e) would not apply since those sections apply to the work of another. However, exclusions under 103(c)/102(e) draw their usefulness from the fact that very often in an organization or within a group working together under a research collaboration, different or at least overlapping groups of inventors may work on related aspects of a project such that multiple patent applications may be filed over a period of time where each patent application lists a different inventive entity. In addition, the publication date of the first application is also important since it cannot be antedated in the patent world outside the United States. 

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