Appeal No. 2004-1112 Page 5
Application No. 09/829,707
public, and therefore not available as prior art under 35 U.S.C. § 102(a), until it
issued as a patent.
Since Rosner did not issue until after the filing date of the instant
application, it does not qualify as prior art under § 102(a). The correct statute for
applying a patent that was filed before, but issued after, a given application filing
date is 35 U.S.C. § 102(e). See In re Lund, 376 F.2d 982, 988, 153 USPQ 625,
630 (CCPA 1967) (“It is, of course, incontrovertible that a description of an
invention of another in an application filed before an applicant's date of invention,
upon which application a patent is issued, constitutes a bar to the issuance of a
valid patent for the same invention, Alexander Milburn Co. v. Davis-Bournonville
Co., 270 U.S. 390, 46 S.Ct. 324, 70 L.Ed. 651 (1926), codified by § 102(e).”). See
also id. at 992 n.12, 153 USPQ 625, 633 n.12 (“Inasmuch as § 102(e) makes a
description in a patent available as evidence of prior knowledge as of the effective
filing date of the application on which the patent issues, it should be regarded as
an exception to the general rule that prior knowledge must be public in order to
defeat another’s patent rights.”).
2. Bremer
The examiner rejected claims 15-27 as anticipated by Bremer, on the
basis that Bremer “discloses glucosidase and/or amylase inhibitors that can be
manufactured as pharmaceutical compositions for the combined use with a
lipase inhibitor.” Examiner’s Answer, pages 4-5. The examiner pointed out that
Bremer suggests acarbose as one of the inhibitors that can be included in the
disclosed compositions, and concluded that the “pharmaceutical composition that
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