Appeal No. 2006-2275 Page 3
Application No. 09/731,998
filing date of the instant application, and the June 30, 2000 date of the provisional
application No. 60/215,774 cannot be used to anticipate or make obvious the instant
claimed subject matter because the effective filing date of a provisional application upon
which priority is based is the filing date of the provisional application for any claims
which are fully supported under the first paragraph of 35 U.S.C. § 112 by the provisional
application.
Thus, appellants argue, to the extent the examiner relies on the provisional
application filing date of June 30, 2000, the examiner has failed to establish that this
provisional application is fully supported under the first paragraph of 35 U.S.C. § 112
with respect to the subject matter of the Watson reference which the examiner relies on to
reject the claims. It is appellants’ contention that the examiner has the burden to establish
enablement of the provisional application before the filing date of that provisional
application can be used, and, as such, the examiner can only use the filing date of
Watson, the non-provisional application, which is June 29, 2001, which date does not
predate the filing date of the instant application.
We AFFIRM.
The United States Patent and Trademark Office OG Notice of November 23,
2004, a copy of which is attached to appellants’ reply brief, indicated that since
applicants would now have access to the Pubic PAIR website at
http://portal.uspto.gov/external/portal/pair, the Office has ended the practice of supplying
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