Appeal No. 2005-0371
Application No. 10/210,313
b) the published European application matured from European
Application No. 01113607.4, and lists Italian Application No.
BO000357 as a priority document;
c) the published European application has a publication
date, Dec. 19, 2001, which is less than one year prior to the
filing date of the instant application, August 1, 2002; and
d) the published European application reflects the
appellant’s own work.
In rejecting claims 1 through 10 as being anticipated by the
published European application, the examiner reasons that
[s]ince there is no priority claim to either of
applicant’s earlier applications Italy B[O]000357 or
European 01113607.4, the publication EP1164099 A1
[i.e., the published European application] is useable
as a reference. Note that under 35 U.S.C. 102(a) the
issue is not “invention “by others””. The issue is
“know[n] by others...or described in a printed
publication in...a foreign country, before the
invention” (U.S. filing date) “by applicant”. Due to
the lack of diligence in filing the U.S. application,
applicant has lost the right to a U.S. patent [answer,
page 3].
The examiner’s position here has no basis in law. As stated
by the predecessor of our reviewing court in In re Katz, 687 F.2d
450, 454, 215 USPQ 14, 17 (CCPA 1982):
It may not be readily apparent from the statutory
language that a printed publication cannot stand as a
reference under §102(a) unless it is describing the
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