Appeal No. 2002-0986 Page 6
Application No. 09/222,282
application 60/070,405 of which the instant application claims benefit under 35 U.S.C.
§ 119(e)) but did not issue until after the effective filing date of the instant application.
Consequently, it is appellants’ position that these patents are not available as prior art
against the claims of this application for obviousness considerations under 35 U.S.C.
§ 103. This issue, however, has already been addressed and expressly rejected by the
United States Supreme Court. See Hazeltine Research, Inc. v. Brenner, 382 U.S. 252,
253-56, 147 USPQ 429, 430-31 (1965), rehearing denied, 382 U.S. 1000 (1966) (patent
which issued from earlier-filed application of "another" constitutes part of "prior art" as
that term is used in 35 U.S.C. § 103 and as such is available for consideration in a 35
U.S.C. § 103 "obviousness" rejection, notwithstanding that it did not issue until after the
filing date of the later-filed application). Even assuming that the instant application is
entitled to the benefit of the provisional application, both Bailey and Kanbar are
available as prior art in considering the issue of obviousness of the subject matter of
claim 1 of this application.
Appellants’ second argument, that the applied patents provide no teaching or
suggestion to modify Bailey to arrive at the invention recited in claim 1, on the other
hand, is well taken. In particular, while a worm gear and rotary motor arrangement of
the type taught by Kanbar could be used to rotate, and thus index, the knives 47 of
Bailey, we find no suggestion in either Kanbar or Bailey to do so. The mere fact that
the prior art could be so modified would not have made the modification obvious unless
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