Appeal No. 2005-2512
Reexamination Control No. 90/006,431
(10) Claims 7 and 8 stand rejected under § 103(a) over the Arcadia Manual in
view of the Railmill documents. Fin.Act. 39 para. 78.
(11) Claims 10 and 11 stand rejected under § 103(a) over the Arcadia Manual in
view of the Railmill documents. Fin.Act. 41 para. 84
(12) Claims 10 and 11 stand rejected under § 103(a) over the Arcadia Manual in
view of Mitsuhashi and further in view of Noguchi. Fin.Act. 42 para. 90.
(13) Claims 12-15 stand rejected under § 103(a) over the Arcadia Manual in
view of the RailMill documents. Fin.Act. 43 para. 95.
One of the principal questions before us, which affects all of the rejections except
the § 102(b) rejection based on Stark, is whether and to what extent the RailMill
documents, the Arcadia Manual, Tiwary, and Deng are available as printed publications
under 35 U.S.C. § 102(a), as argued by the examiner. Appellant makes two
arguments. The first, which applies to all six documents, is that the Ho declarations
establish that the subject matter relied on by the examiner in these documents was
invented by Ho and Tuan and thus is not available as prior art against appellant’s claims
under § 102(a). Br. 21. See In re Katz, 687 F.2d 450, 454, 215 USPQ 14, 17 (CCPA
1982) (“a printed publication cannot stand as a reference under §102(a) unless it is
describing the work of another”); see also MPEP § 716.10 (8th ed. rev. 4, Oct. 2005)
(discussing Rule 132 affidavits of the “attribution” type).
Regarding the three RailMill documents (but not the Arcadia Manual, Tiwary, or
Deng), appellant alternatively argues that the documents have not been shown to have
publication dates prior to appellant’s April 17, 1995, filing date.
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