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If I add my recently issued patent as an argument or citation for patentability and non-obviousness in support of a claim rejection on a nonfinal first office action, will the patent have to go through a reexamination?

Helmuth

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  • You need to add more context to get a good answer but I do not see any reason for a reexamination, off hand. What is the relative timing between the issued patent and current application? (Filing, publishing dates ). Is the current application a child of the application that led to the issued patent? Could the grace period be a factor ?
    – George White ♦
    Nov 17, 2021 at 20:07
  • Hi George, The issued patent was publishing and issued during examination of the current application and was filed several months before the current application. The current application is not a child of the application put does share two almost identical dependent claims that are rejected for unpatentability and obviousness.
    – Helmuth Bachmann
    Nov 17, 2021 at 20:28

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The section of the law (102) on prior art says:

(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention

The previous application was not published or issued before the second was filed so the only basis to call it prior art would be that it filed earlier by another inventor. If both are yours as sole inventor that is improper. It would be proper if there are different co-inventors. Once properly determined to be prior art it is no different from any other prior art unless there is a double patenting issue.

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  • Ok. Thanks! One more question: Would it be improper to introduce the issued patent only as an argument in the response to the rejection of a claim and not as prior art?
    – Helmuth Bachmann
    Nov 18, 2021 at 19:50
  • Why would something that was published after your filing be relevant?
    – George White ♦
    Nov 18, 2021 at 19:53
  • I would use it as an argument that the dependent claim (a device used) that is the same as in the currently issued patent was patentable and non-obvious.
    – Helmuth Bachmann
    Nov 18, 2021 at 20:47
  • You would probably need to ask a new question with a lot more details. And you might nit want to provide details.
    – George White ♦
    Nov 18, 2021 at 21:05
  • Ok. Thank you for all the information.
    – Helmuth Bachmann
    Nov 18, 2021 at 21:51

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