Appeal No. 2003-0949
Application 09/164,517
of U.S. patent 5966465 to Keith et al (Keith) and “US 5966465,
has all the limitations the examiner used to reject claims 1-7.”
For these reasons, the Examiner viewed Boliek as entitled to an
effective filing date of May 3, 1996. (Final rejection, paper
number 14, page 2) Appellants repeat their above position before
the Board in the brief at page 3. The Examiner responded with a
more detailed analysis of where various limitations of Boliek can
be found in the Keith reference. (Answer, page 8)
The question before us is whether and to what extent Boliek
constitutes legally available prior art under 35 U.S.C. 102(e).
Based on the evidence before us, we find Appellants’ argument
persuasive. In order to carry back the 35 U.S.C. § 102(e)
critical date of the U.S. patent reference to the filing date of
a parent application, the parent application must support the
invention claimed as required by 35 U.S.C. § 112, first
paragraph. See MPEP § 2136.03 (IV).
The Examiner has shown where the Boliek limitations can be
found in the parent application. However, there is no showing of
how the disclosure of the Keith patent supports the invention of
Boliek as required by 35 U.S.C. § 112, first paragraph. This
showing is a prerequisite to showing where the Boliek limitations
can be found in Keith. Our review of the claims in Boliek and
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