the definition of

ChrisWh...

Was an assignment made in the parent case ?   If so, was assignment made in the second ?  Was there an obligation of the inventors to assign ownership to a common entity ?  If not, this is a good way to have case #2 rejected on prior art of case #1.  The inventive entity ABCD is different than ABC.  Expect to see a provisional ODP rejection in the second case.  A terminal disclaimer could overcome it, provided you have common ownership at the time invention #2 was made sufficient to enable you to file the TD.  Otherwise, prepare to argue around a rejection under section 103.

Y.P.Grace

But it is a 102(a) rejection instead of 102(e). I thought common ownership argument can only be established for references under 102(e). Isn't it?

Isaac

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ChrisWh...

In the predominance of cases involving rejections based on close inventive entities where there is a 102, there is often, usually, a 103 or a combined 102/103. ? If there are two pending applications or one application pending and the reference is an issued patent, ODP rejections may be applicable. ? ?
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More frequently than not, by a long shot, references cited by Examiners are issued patents and patent publications which themselves are often pending apps. ?The OP's reference is in all likelihood a patent document, unless the inventors are so unsavvy as to have made a disclosure that constitutes a statutory bar, which I tend to assume is not the case when dealing with professionals; but, assumptions can be incorrect. ? ?
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Few of the postings on this board are complete with all details necessary for complete response. ? ?
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I predict there is about an 80 + % chance that the OP will run into an obviousness rejection at some stage if the reference is close enough that a 102 was made. ? If claim amendments are made to overcome the 102, the ?
next OA could contain a final rejection, if the new grounds of rejection, 103, was necessitated by Applicant's amendment in an attempt to overcome a 102. ?Indeed, there are many possibilities.

biopico

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biopico

Sorry I meant to add the following:

If the reference is disclosing applicant's own work as derived from him or her, applicant may submit either a 37 CFR 1.131 affidavit to antedate the reference or a 37 CFR 1.132 affidavit to show derivation of the reference subject matter from applicant and invention by applicant.

ChrisWh...

Those are good points, which could be applicable.  Thank you for sharing. ?Indeed, there are many possibilities. ?

Assuming ABCD is the correct inventive entity of the claimed subject matter in the instant case, and the reference cited is authored by ABC, then necessarily D has made an inventive contribution not present in the reference of ABC; otherwise D is not properly listed as an inventor. ?If ABCD is the true inventive entity, then it is not likely that a reference by ABC would anticipate D's contribution, provided that D's contribution is positively recited in the claims. ?I believe most Examiners would belikely to levy a 103 rejection in such circumstance.

Absent knowledge of the inventor D's contribution and the claim language, I find myself unable to answer the OP's question of  "can I argue that this reference is not invented by "others" because the inventors A+B+C in the references are the same inventors A+B+C as the present application although inventor D has been added?" it depends on the contribution of D, viz, if D only contributed to claim 666, then in some cases it could be a good idea to delete claim 666 and remove D as an inventor and make the argument the OP suggests, depending on D's contribution.  There are many possibilities and more info is needed for a complete answer.  

and regarding  "if I can prove that the inventive concepts and/or embodiment of the references actually come from A+B+C of the present application, can I get rid of this reference based on "not by another" argument?? "   I believe the answer in many cases would be no.  ABCD is a different inventive entity than ABC.  You might need to weight the contribution of D and determine whether it is worth keeping, in view of the rejection and whether cancelling D's claimed subject matter is worth obviating the rejection,  if that is possible given the dates and other facts in the case.  

Y.P.Grace

Well, we thought about file a CIP to includes the claims contribued by D to get rid of the cited reference. However, after consuling with the clients, D contributed much more than we through he did. D provides part of the inventive concept of the broadest claim 1. Therefore, we are now trying to find any case laws that can provides us any other manner to get rid of the rejection.