Appeal No. 1996-0160
Application 07/898,691
Again, the appellants acknowledge that “the phrase ‘which is an ester or an amide’
was inadvertently not deleted from claim 2,” in their amendment filed under
37 CFR § 1.116. Brief (Paper No. 21), p. 16. Thus, since the appellants and the examiner
are in agreement that the claim language is improper, the rejection is affirmed.
Rejections IV and V
As a preliminary matter we note that the examiner states that claims 1 through 5, 7,
9 through 12, 14 through 17, 19 through 22 and 24 “may only have the present filing date
(June 15, 1992) as the effective filing date.” Answer (Paper No. 25), p. 8. We understand
the examiner’s statement to mean that the effective filing date of the referenced claims is
June 15, 1992. The appellants have not contested this date.
In the case before us, the examiner has rejected the claims over an abstract, dated
May 11-13, 1992, and co-authored by Corbin, Ruff, and Rodgers-Johnson. Thus, since, on
its face, the reference appears to have been published “by others,” less than one year
before the effective filing date of the present application, it is available as prior art under
35 U.S.C. § 102(a). However, since an applicant’s own work within one year of the filing
date of his patent application cannot be used against him under
§ 102(a), an applicant can have the publication removed as a reference by filing an
affidavit which establishes that the relevant portions of the publication originated with, or
were obtained from, him. To that end, the appellants have filed a declaration by Dr. Pert
and Mr. Ruff, executed September 17, 1993, which they contend is an “In re Katz
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