Appeal No. 2004-0358 Page 10
Application No. 08/997,748
It is important to note here that the burden of persuasion rests on applicants.
Under the provisions of 35 U.S.C. §§ 102(e)/103, the Suzuki patent constitutes legally
available prior art as of the February 1, 1989, filing date of Application No. 07/304,477.
That filing date precedes applicants’ presumed date of invention, i.e., the December 24,
1997, filing of Application No. 08/997,748. Suzuki’s filing date also precedes the
September 8, 1989, filing of Application No. 07/404,543 (now abandoned), said to be a
continuation-in-part of Application No. 07/363,303, filed June 7, 1989, which, according
to applicants
is a continuation-in-part of Serial No. 07/102,754, filed September 24,
1987 (now abandoned), which is a continuation-in-part of Serial No.
06/800,840, filed November 22, 1987 (now abandoned), which have as
priority applications West German Applications P 34 43 251.5 of
November 23, 1984, P 34 43 252 of November 23, 1984 and P 35 08 000
of March 4, 1985. Application Serial Nos. 07/102,754, 06/800,840,
P 34 43 251.5, P 34 43 252 and P 35 08 000 are entirely incorporated
herein. [Paper No. 15, page 2, emphasis added]
On this record, applicants have not presented a showing under 35 U.S.C. § 120 which
would establish that any appealed claim is entitled to the benefit of an effective date
earlier than February 1, 1989. See In re Scheiber, 587 F.2d 59, 61, 199 USPQ 782,
784 (CCPA 1978)(“Unlike Rule 131, § 120 operates independently of the prior art, of
which it makes no mention, and it expressly requires an earlier application to disclose
the claimed subject matter in compliance with 35 U.S.C. § 112, first paragraph. Thus it
is entirely appropriate that the showing required under § 120 differs from that required
under Rule 131” [emphasis added]). Cf. Kawai v. Metlesics, 480 F.2d 880, 885,
178 USPQ 158, 162 (CCPA 1973), discussing the “right of priority” under 35 U.S.C.
§ 119 (“‘the right of priority’ accorded by section 119 can be aptly be described as a
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