Appeal 2006-1736
Application 10/471,180
Nor has the Examiner furnished a detailed analysis substantiating that
each of Appellants’ rejected claims are fully supported in the earlier filed
§ 119(a) benefit application.
Consequently, we remand this application to the Examiner to cause a
further development of the written record of this application as to this
foreign priority benefit issue. The development on this record of the foreign
priority issue is only a first step here because, as both Appellants and the
Examiner have recognized, the resolution of that matter does not resolve the
issue of the availability of Gabrys as § 102(e) prior art to the here claimed
subject matter. This is so because of an earlier filed provisional application
benefit referred to in Gabrys.
If the Examiner determines that the § 119(a) benefit claimed by
Appellants is substantiated on the written record or if Appellants are known
to be in disagreement with the Examiner’s contrary determination
concerning this matter, the Examiner should revisit the related earlier filed
provisional application referred to in the Gabrys’ patent, which provisional
application was assigned an earlier filing date than Appellants’ claimed
earliest foreign priority date. The Examiner should further explain how and
where that provisional application supports, in the manner provided by
§ 112, first paragraph the subject matter of the relied upon Gabrys’ patent
invention such that a § 102(e) date based on that earlier provisional
application filing may be accorded the Gabrys’ patented subject matter
relied upon by the Examiner in rejecting the claims. See 35 U.S.C.
§ 119(e)(1).
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