Appeal 2006-1736
Application 10/471,180
In this regard, in order to rely on a document as prior art with respect to the
appealed claims under 35 U.S.C. §§ 102(e) and 103(a), the Examiner must
establish that the document is in fact applicable as prior art to the claims.
In this regard, we are cognizant that the Examiner referred to page 3,
lines 40-45, page 4, lines 34-43 and other sections of the provisional
application referenced in Gabrys in the Answer. However, the Examiner has
not fully explained how those portions of the provisional application furnish
§ 112, first paragraph support for at least the inventive teachings that the
Examiner relies upon in rejecting the appealed claims, which are disclosed
in the Gabrys’ patent. See In re Wertheim 646 F.2d 527, 537, 209 USPQ
554, 564 (CCPA 1981)(“[T]he determinative question here is whether the
invention claimed in the Pflunger patent finds a supporting disclosure in
compliance with § 112, as required by § 120, in the 1961 Pflunger I
application so as to entitle that invention in the Pflunger patent, as “prior
art,” to the filing date of Pflunger I. Without such support, the invention,
and its accompanying disclosure, cannot be regarded as prior art as of that
filing date.”). In responding to this Remand, the Examiner should review
Wertheim respecting the determination of a § 120/§ 102(e) prior art date
therein and consider how the court’s reasoning set forth in that decision may
or may not analogously apply to the present § 102(e) /§ 119(e) prior art date
sought to be accorded the applied patent by the Examiner. Also, see MPEP
§ 706.02, subsection V. (D), and § 706.02(f)(1), subsection II., Example 2
(8th ed., Rev. 3, August 2005).
Accordingly, the Examiner is required to take appropriate action
consistent with current examining practice and procedure to address the
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