MPEP Q & A 124: Situations Where the Examiner is Not Responsible for Examining the Sufficiency of the Showing



In what two situations is the examiner not responsible for examining the sufficiency of the showing?


The examiner is not responsible for examining the sufficiency of the showing except when:

  • The application claim is subject to a rejection under 35 U.S.C. 102(a) or (e) and the applicant files an interference suggestion instead of attempting to overcome the rejection.
    • In this case the examiner must decide if the applicant’s showing is sufficient to overcome the rejection.
      • If the examiner finds the showing not sufficient, then the rejection under 102(a) or (e) still holds true and the examination of the application is not complete (remember, interferences may not be called when the examination is not yet finished).
  • Compliance with 35 U.S.C. 135(b) is not met:
    • The application does not have a claim for “substantially the same subject matter” as the interfering patent or published application prior to one-year from the date on which the interfering patent or published application was granted or published.
    • If the applicant does not appear to have had a claim for “substantially the same subject matter” as at least one of the patent claims prior to the expiration of the one-year period, the examiner may require that the applicant explain how the requirements of 35 U.S.C. 135(b) are met, otherwise, a rejection under 35 U.S.C. 135(b) will be made.

Chapter Details:

The answer to this question can be found in chapter 2300 of the MPEP. This chapter covers Interference Proceedings.

The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 2304 of the MPEP.  The following is a brief summary of section 2304.

2304 Suggesting an Interference

An interference may be suggested by an applicant or an examiner. This section explains what happens depending on whether an applicant or an examiner calls the interference. It discusses the preliminary activities that need to happen before referring an interference to the Board. For instance, an interference search must be performed on each application in condition for allowance.

In addition, this section covers the difference between the proceedings when an applicant suggests an interference vs. when the examiner suggests an interference. For example, when an applicant suggests an interference, the examiner will need to review the suggestion to ensure it meets the requirements. A patentee may not suggest an interference. The only way is for the patentee to become an applicant by filing a reissue application. Further details for suggesting an interference are covered in this section.