Appeal No. 2006-2051
Application No. 10/396,955
APA, Chan and Jayaraman. Particularly, the Examiner relies
upon APA (drawing figures 1 and 2, specification page 5, line 27
through page 6, line 8 of Appellants’ written description) as a
primary reference to establish a prima facie case of obviousness
against the cited claims.
Under current patent law, a statement by an applicant
during prosecution identifying the work of another as “prior art”
is an admission that that work is available as prior art against
the claims, regardless of whether the admitted prior art would
otherwise qualify as prior art under the statutory categories of
35 U.S.C. 102. Riverwood Int ’l Corp. v. R.A. Jones & Co., 324
F.3d 1346, 1354, 66 USPQ2d 1331, 1337 (Fed Cir. 2003). However,
even if labeled as “prior art,” the work of the same inventive
entity may not be considered prior art against the claims unless
it falls under one of the statutory categories. Id.; see also
Reading & Bates Construction Co. v. Baker Energy Resources
Corp., 748 F.2d 645, 650, 223 USPQ 1168, 1172 (Fed. Cir. 1984)
(“[W]here the inventor continues to improve upon his
own work product, his foundational work product should not,
without a statutory basis, be treated as prior art solely because
he admits knowledge of his own work. It is common sense that an
inventor, regardless of an admission, has knowledge of his own
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