Appeal No. 2005-0977 Page 2
Application No. 09/840,488
Claims 1-9 stand rejected under 35 U.S.C. § 102(e) as anticipated by Pfrengle.
Appellants do not dispute that Pfrengle describes the claimed fungicidal compounds,
but assert that “the present application is entitled to an effective filing date which is prior
to the earliest U.S. filing date of Pfrengle” (Brief, page 4).
As explained by the examiner, “to antedate the [Pfrengle] reference, appellants
need [the] benefit of [PCT/US/98/05615,] which was not mentioned in the parent
[application no. 09/272,916, filed March 19, 1999, now U.S. Patent No. 6,255,309]”
(Answer, page 3). Appellants indicate that they “have submitted an application to
reissue U.S. Patent No. 6,255,309 which . . . aims to correct the claim to priority in the
parent case to include a claim to the priority of PCT/US98/05615, filed on March 23,
1998” (Brief, page 4). According to appellants, with “the corrected claim to priority, the
present application is entitled to an effective filing date which is prior to the earliest U.S.
filing date of Pfrengle, and the teaching of Pfrengle is no longer applicable under
Section 102(e)” (id.).
While we note appellants’ request in the Brief that the issue of anticipation be
held in abeyance pending resolution of the application to reissue U.S. Patent No.
6,255,309 (Brief, page 4), we also note that no petition for suspension of action (e.g.,
under 37 CFR § 1.103) has been submitted in the instant application. As matters now
stand, Patent No. 6,255,309 has not been reissued; Pfrengle’s filing date (September
25, 1998) still antedates the effective filing date of the instant application (March 19,
1999); prosecution in both cases is ongoing; and the examiner’s rejection in the instant
application is before us for review. Therefore, we will proceed to a decision on the
merits.
It is undisputed that Pfrengle describes the claimed subject matter. Inasmuch as
Pfrengle is presently available as prior art under 35 U.S.C. § 102(e), the rejection of
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