Appeal No. 1998-2598
Application No. 08/549,078
In the Reply Brief appellant asserts that he was not supplied with any portion of the
application at issue, and maintains that the Rule 131 affidavit removes Butts ‘231 as a
reference. The instant application was remanded by a Program and Resource
Administrator of this Board (paper mailed Jul. 7, 2000) to indicate whether the Reply Brief
had been entered, and, if entered, what effect the Reply Brief has on the pending
rejections. In a communication mailed Sep. 13, 2000, the examiner stated that “[t]he reply
brief filed 6/18/97 has been entered and considered. The application has been forwarded
to the Board of Patent Appeals and Interferences for decision on the appeal.”
OPINION
At the outset, we note that although the rejection is ostensibly based upon 35 U.S.C.
§ 103, it is more properly viewed as a 35 U.S.C. § § 102(e)/103 rejection. This is so
because Butts ‘231 is considered to represent an invention described in “a patent granted
on an application for patent by another filed in the United States before the invention by the
applicant for patent.” See 35 U.S.C. § 102(e)(2). If shown to be a reference under section
102, then the teachings of Butts ‘231 may be combined with other teachings (e.g., those of
Widdoes, a reference under 35 U.S.C. § 102(b)), within the constraints of section 103, to
establish prima facie obviousness of the instantly claimed subject matter.
However, for reasons set forth in In re Wertheim, 646 F.2d 527, 531-39, 209 USPQ
554, 559-66 (CCPA 1981), when a patent disclosure relies on one or more continuation-
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