Appeal No. 2002-0867
Application No. 08/738,659
patent’s chain of priority -- whether the patent disclosure represents “secret prior art” as
to the application at issue, and thus whether or not effective as a reference.
If...[the USPTO] wishes to utilize against an applicant a part of that patent
disclosure found in an application filed earlier than the date of the
application which became the patent, it must demonstrate that the
earlier-filed application contains §§ 120/112 support for the invention
claimed in the reference patent.
Wertheim, 646 F.2d at 537, 209 USPQ at 564.
The determinative question is whether the invention claimed in Naugle finds a
supporting disclosure, in the earlier-filed application in question, in compliance with
section 112, as required by section 120, so at to entitle that invention as “prior art” to the
filing date of the patent’s earlier-filed application. See id. The only date a patent has
under section 102(e)(2) is the filing date of the application on which the patent issued.
“Any earlier U.S. filing date for the patent necessarily depends on further compliance
with §§ 120 and 112.” Wertheim, 646 F.2d at 538, 209 USPQ at 565.
Naugle, if considered a reference, would appear to be material to patentability of
instant claims 10, 16, 36, 42, 74, 78, 82, and 86. For that reason, if the examiner has
not done so, the examiner should inspect the file wrapper of the Naugle patent and
determine if the earlier-filed application contains §§ 120/112 support for the invention
claimed in the patent.5
5 If rejection over Naugle is indicated, to make a prima facie case for unpatentability -- without
relying on an admission by appellant that Naugle is prior art -- any statement of rejection must include
findings with respect to how the earlier-filed application contains §§ 120/112 support for the invention
claimed in Naugle.
-14-
Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Next
Last modified: November 3, 2007