Appeal No. 00-0910
Application No. 08/821,176
to the Figures 16 and 17 embodiment) would have an effective
filing date that corresponds to the filing date of the
continuing application, such that the 35 U.S.C. § 102(e) date4
of the Scharboneau patent in that instance would predate the
effective filing date of the claim. However, the Scharboneau
patent under those circumstances would not anticipate the
claim because the subject matter to which the claim is
directed is not disclosed in the Scharboneau patent. Thus, in
either case, the Scharboneau patent would not constitute a
proper anticipatory reference.5
We therefore shall not sustain the anticipation rejection
of the appealed claims based on Scharboneau.
4See In re Van Langenhoven, 458 F.2d 132, 137, 173 USPQ
426, 429 (CCPA 1972) (As to any given claimed subject matter,
only one effective date is applicable; the fact that some
elements of a claim have descriptive support in a parent
application does not change the result.)
5In that the effective filing date of any appealed claim
directed specifically to the embodiment of Figures 16 and 17
would be the filing date of the present continuing
application, the examiner may wish to consider whether any
such claim would have been obvious under 35 U.S.C. § 103 in
view of the disclosure of the Scharboneau patent.
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