102(a) references

42. Which of the following can never properly be available as prior art for purposes of a

rejection under 35 U.S.C. § 102(a)?

(A) A drawing, labeled “Prior Art,” submitted by the applicant.

(B) Canceled matter in an application that matured into a U.S. patent where the matter

is not published in the patent.

(C) An abandoned patent application referenced in a publication available to the

public.

(D) The combination of two references, where one of the references is used merely to

explain the meaning of a term used in the primary reference.

(E) A reference authored only by applicant, and published less than one year prior to

the effective filing date of applicant’s patent application.

42. ANSWER: (E) is the correct answer. (A) is incorrect since admissions, including figures

labeled “prior art” may be used. MPEP 2129. (B) is incorrect since canceled matter in the

application file of a U.S. patent becomes available as prior art as of the date the application

issues into a patent. See MPEP 2127, and Ex parte Stalego, 154 USPQ 52, 53 (Bd. App. 1966)

cited therein. (C) is incorrect since an abandoned patent application may become evidence of

prior art when it has been appropriately disclosed, as, for example, when it is referenced in a

publication. See 37 C.F.R. § 1.14(a)(3)(iv); MPEP 2127; and Lee Pharmaceutical v. Kreps, 577

F.2d 610, 613, 198 USPQ 601, 605 (9th Cir. 1978) cited in MPEP 2127. (D) is incorrect because

multiple reference rejections under 35 U.S.C. § 102 may be used where one reference is used to

merely explain a term used in the primary reference. See MPEP 2131.01 and In re Baxter

Travenol Labs., 952 F.2d 388, 21 USPQ2d 1281 (Fed. Cir. 1991) cited therein. (E) is correct

since the reference is not by “another.”