Appeal 2006-2432
Application 10/021,200
US 6,417,246 B1, published July 9, 2002, to Jia as a reference (Substitute
Br. 6-7). As Appellants point out (id.), the Examiner held that the “[i]nstant
invention, as per affidavit, was reduced to practice prior to September 21,
2000 but not prior to September 21, 1999” in the Office action mailed
January 16, 2004, at page 3. The former date is the filing date of published
application 09/660,111, and the latter date is the filing date of provisional
application 60/155,292.
In order to apply on a document as prior art with respect to the claims
under 35 U.S.C. §§ 102(e) (2002) and 103(a), the Examiner must establish
that the document is in fact applicable as prior art to the claims. Here,
Appellants contend that in order to rely on the filing date of the Provisional
Application under 35 U.S.C. § 102(e) (2002), the Examiner must establish
that the provisional application in fact supports the invention in the
published application (Substitute Br. 7). The Examiner does not address the
issue in the Answer.
We agree with Appellants. We find that Jia claims benefit of the
provisional application under 35 U.S.C. § 119(e) (1999) and accordingly, the
Examiner must establish on the record that the subject matter disclosed by
Jia is properly supported in the provisional application as provided in this
statutory provision in order to rely on that date under 35 U.S.C.
§ 102(e) (2002). 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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