Appeal No. 94-0825
Application 07/908,860
view that under these circumstances, 35 U.S.C. 102(g) does not
provide a proper basis for rejecting the claims on appeal.”
These circumstances were the same as the rejection in this
application, as detailed on page 235 of Smolka:
In the event that the Examiner’s rejection is
construed as being based upon a foreign patent
publication which is relying for priority upon an
abandoned United States application, the rejection
would be clearly improper. The courts in such cases
as Monarch Marking System v. Dennison Mfg. Co.,
92 F.2d 90, 34 USPQ 85 (6th Cir. 1937) and Joseph
Bancroft & Sons Co. v. Brewster Finishing Co., Inc.,
113 F. Supp. 714, 98 USPQ 187 (D.N.J. 1953), aff’d,
210 F.2d 677, 100 USPQ 365 (3rd Cir. 1954), have long
held that the foreign patent document and its prior
abandoned United States counterpart application do not
provide a proper basis for rejecting claims in an
application filed prior to the publication date of the
foreign document but subsequent to the filing date of
the United States application.
Although the examiner’s rejection under § 102(g) is improper
in this application, there are references available under 35
U.S.C. § 102(e) for the examiner’s consideration. Upon return 5
of the application, the examiner should review these three
patents and determine whether they adversely affect the
patentability of the pending claims.
5U.S. Patent Nos. 4,859,759, 4,920,168, and 4,923,914 have
issued from related applications to abandoned application
07/181,623. All of these patents, copies of which accompany this
decision, contain disclosure corresponding to that found in the
abandoned application.
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