← all examsAugust 1997 · Morning Session
UNITED STATES PATENT AND TRADEMARK OFFICEREGISTRATION EXAMINATIONAUGUST 1997MORNING SESSION
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On March 20, 1997, inventor B filed a patent application in the PTO claiming invention X. Inventor B did not claim priority based on a foreign application filed by inventor B on June 3, 1996, in the Patent Office of Germany. In the foreign application, inventor B disclosed and claimed invention X, which inventor B had conceived on October 10, 1995, and reduced to practice on January 5, 1996, all in Germany. The patent examiner issued an Office action where all the claims in the patent application were properly rejected under 35 U.S.C. § 102(a) and (e) as being anticipated by a U.S. patent granted to inventor Z on November 5, 1996, on a patent application filed in the PTO on February 6, 1995. There is no common assignee between Z and B, and they are not obligated to assign their inventions to a common assignee. Moreover, inventor Z, independently of inventor B, invented invention X, and did not derive anything from inventor B. The U.S. patent discloses, but does not claim, invention X. Which of the following is/are appropriate response(s) which could overcome the rejections under § 102(a) and (e) when timely filed?