Appeal No. 2005-2463
Application No. 10/235,443
When this case is returned to the jurisdiction of the examiner
for further disposition, the examiner should consider rejecting the
appealed claims for obviousness under 35 U.S.C. § 102(e)/103 based
upon Bennett and in view of our discussion, supra, highlighting the
prima facie case for obviousness. In this regard, the examiner
must first determine whether Bennett constitutes prior art against
the instant claims under 35 U.S.C. § 102(e), viz. whether the
Bennett disclosure is entitled to an effective filing date of
December 17, 1996, the purported filing date of parent application
60/033,656.
Moreover, the examiner should also consider rejecting the
appealed claims under 35 U.S.C. § 102(e) as being anticipated by
Bennett since appellants apparently concede on page 7 of their
brief that Bennett’s compound “A” is within the scope of the
present claims. Compound A is identified in column 18 of Bennett.
Furthermore, the examiner should consider the possibility of
placing the instant application in interference with Bennett even
in the event that Bennett is not considered to have an earlier
effective filing date since both appear to be claiming the “same
patentable invention”. See 35 U.S.C. § 102(g) and 37 CFR
§ 1.601(i) and (n).
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