Appeal 2006-2017
Application 09/784,284
1 Our review of the record leads us to conclude that this appeal is not in
2 a condition for a decision. Pursuant to 37 C.F.R. § 41.50, we order
3 appellants to submit a supplemental brief addressing the issue discussed
4 below.
5 The Examiner has rejected claims 2, 3, 8-10, 15-17, 22-24 and 29 over
6 Naiman (US Patent 5,607,607) under 35 U.S.C. § 102(e).
7 There is no dispute that Naiman describes the claimed subject matter.
8 The issue is whether Naiman is available as prior art under 35 U.S.C. §
9 102(e) such that Appellants may, as has been done here (see Declaration
10 filed October 8, 2002), submit an affidavit under 37 C.F.R. § 1.131 to
11 antedate Naiman and thus attempt to overcome the rejection.
12 It does not appear from the record that the effective filing date of the
13 claims on appeal has been determined. This is important because the
14 09/784,284 (‘284) application is stated to be a continuation-in-part of
15 application 09/500,038 (‘038), now U.S. Patent 6,419,491, filed February 8,
16 2000, and the ‘038 application is stated to be a continuation-in-part of
17 application 08/996,2441 (‘244), now abandoned, filed December 22, 1997.
18 See p. 1 of the specification of the ‘284 application. If the present claims are
19 not entitled to the benefit under 35 U.S.C. § 120 of the earlier filing dates of
20 the ‘038 and ‘244 applications, Naiman, which issued on March 4, 1997
21 qualifies as prior art under 35 U.S.C. § 102(b). In re Katz, 687 F.2d 450,
22 454, 215 USPQ 14, 17 (CCPA 1982). A patent describing the claimed
23 invention available as prior art under 35 U.S.C. § 102(b) stands as a
1 Page 1 of the Specification incorrectly refers to the application as
“08/996,224.”
2
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Last modified: September 9, 2013