Appeal No. 2006-2275 Page 4
Application No. 09/731,998
a copy of the provisional application relied upon to give prior art effect under 35 U.S.C.
§ 102(e).
Appellants assert that while the provisional application may be accessible today, it
was not accessible to appellants at the time of the final rejection of July 29, 2004 and at
the time appellants were required to make a decision as to whether to timely appeal the
rejection.
We agree that the examiner should have provided a copy of the provisional
application at the time of the final rejection or, in any event, at any time prior to the
November 23, 2004 OG notice. It was not proper for the examiner to withhold a
reference the examiner relied on for its effective filing date, even though, allegedly, this
reference had the same disclosure as the Watson Patent Application Publication.
That having been said and the examiner having put forth a reasonable rationale
for rejection based on a disclosure allegedly the same as the Watson reference (we note
that appellants do not question the substantive nature of the examiner’s rationale), it is
our view that the equities in the instant case favor the examiner’s position.
While it is true that the examiner should have provided a copy of the provisional
application to appellants, it is our view that appellants could/should have obtained a copy
of this reference for themselves when it became apparent that the disclosure of that
reference was the critical factor in the outcome of the case. Perhaps the document was
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