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706.03(u) Disclaimer [R-3] - 700 Examination of Applications
706.03(u) Disclaimer [R-3]
Claims may be rejected on the ground that applicant has disclaimed the subject matter involved. Such disclaimer may arise, for example, from the applicant's failure to:
(A) make claims suggested for interference with another application under 37 CFR*> 41.202(c)< (See MPEP *> Chapter 2300<),
(B) copy a claim from a patent when suggested by the examiner (MPEP *> Chapter 2300<), or
(C) respond or appeal, within the time limit fixed, to the examiner's rejection of claims copied from a patent (see MPEP *> Chapter 2300<).
The rejection on disclaimer applies to all claims not patentably distinct from the disclaimed subject matter as well as to the claims directly involved.
Rejections based on disclaimer should be made by using one of Form Paragraphs 7.48 and 7.49.
**>¶ 7.48 Failure To Present Claims for Interference
Claim [1] rejected under 35 U.S.C. [2] based upon claim [3] of Patent No. [4].
Failure to present claims and/or take necessary steps for interference purposes after notification that interfering subject matter is claimed constitutes a disclaimer of the subject matter. This amounts to a concession that, as a matter of law, the patentee is the first inventor in this country. See In re Oguie, 517 F.2d 1382, 186 USPQ 227 (CCPA 1975).
Examiner Note
1. This form paragraph should be used only after applicant has been notified that interference proceedings must be instituted before the claims can be allowed and applicant has refused to copy the claims.
2. In bracket 2, insert --102(g)-- or --102(g)/103(a)--.
3. In bracket 4, insert the patent number, and --in view of _____-- if another reference is also relied upon. When the rejection is under 35 U.S.C. 103(a), the examiner's basis for a finding of obviousness should be included. Note that interferences may include obvious variants, see MPEP Chapter 2300.
¶ 7.49 Rejection, Disclaimer, Failure To Appeal
An adverse judgment against claim [1] has been entered by the Board. Claim [2] stand(s) finally disposed of for failure to reply to or appeal from the examiner's rejection of such claim(s) presented for interference within the time for appeal or civil action specified in 37 CFR 1.304. Adverse judgment against a claim is a final action of the Office requiring no further action by the Office to dispose of the claim permanently. See 37 CFR 41.127(a)(2).
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