Appeal No. 2004-0358 Page 9
Application No. 08/997,748
application under 35 U.S.C. § 120. Regardless of applicants’ suggestion in the “Issues”
section of their Appeal Brief, they have not established, on this record, that any
appealed claim is entitled to an effective filing date of “at least 1985.”
In any event, the § 103 obviousness question is not abstract, academic, deprived
of practical significance, or “moot.” We believe that applicants misuse that term in the
Appeal Brief, page 2, last line.
Applicants argue that “[w]ith respect to the secondary reference [Suzuki], again,
it is submitted that the entitlement of the present application to its priority dates obviates
this portion of the rejection” (Paper No. 39, page 6, penultimate paragraph). That
argument is remarkable for its brevity and lack of clarity. As best we can judge, the
usage “again” refers to the above-quoted passage in the “Issues” section of the Appeal
Brief, which we have already addressed.
Apparently, applicants’ position is that each appealed claim is entitled to the
benefit of an effective date earlier than Suzuki’s filing date, viz., February 1, 1989,
pursuant to the provisions of 35 U.S.C. § 120. According to applicants, therefore,
Suzuki does not constitute legally available prior art, and the examiner’s rejection,
based on a combination of Jacobsen and Suzuki, must fall. We reiterate, however, that
applicants do not mention 35 U.S.C. § 120 in their Appeal Brief; that applicants have
not engaged in a claim-by-claim analysis; and that applicants have not established that
any appealed claim is entitled to the benefit of a previously filed application under
35 U.S.C. § 120.
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