Appeal No. 2004-0770
Application No. 09/795,310
A. The Availability of the Cheng Reference
Before discussing the merits of the examiner’s rejection, we
must first address appellants’ argument that Cheng is not entitled
to the 35 U.S.C. § 102(e) date of May 13, 1999, and thus is not
available as a reference against the claimed subject matter (Brief,
pages 9-12; Reply Brief, page 7).
The following facts are not in dispute: (1) the filing date
of Cheng is May 12, 2000, the filing date of the non-provisional
application; (2) the filing date of the provisional application of
Cheng is May 13, 1999; (3) appellants have claimed priority under
35 U.S.C. § 119 to Japanese Application No. 2000-076238, filed Mar.
17, 2000; (4) a certified English translation of this Japanese
document has been made of record; (5) the provisional application
of Cheng discloses verbatim the disclosure and claims of the Cheng
non-provisional application and patent; and (6) the Cheng non-
provisional application for patent contains a specific reference to
the provisional application (Brief, pages 9-10; Answer, page 7;
Reply Brief, page 7). There is similarly no dispute that Cheng, in
the provisional and non-provisional applications, fulfills the
requirements of the first paragraph of 35 U.S.C. § 112 (id.).
Accordingly, we agree with the examiner that Cheng has fulfilled
the requirements of 35 U.S.C. § 111(b)(1999) and 35 U.S.C. §
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