Appeal No. 2006-2679
Application No. 10/359,882
OPINION
Based on appellants’ remarks in the Brief, we will select claims 1 and 15 as
representative in deciding this appeal. See 37 CFR § 41.37(c)(1)(vii).
The examiner finds that Sawaya describes the invention of instant claim 1 except
for printing “immediately after receipt of a first ring signal.” (Answer at 8.) The examiner
refers to Asano’s ¶ 46, which teaches that caller ID information is typically sent in
telephone networks between the first and the second rings.
We observe that the instant application was filed February 6, 2003 and claims
the benefit under 35 U.S.C. § 119(e) for U.S. provisional application 60/384,141, filed
May 29, 2002. The Asano application was filed July 26, 2002, but purports to be a
continuation-in-part of application number 10/150,769, filed May 17, 2002. Based on
this information, Asano may or may not be a reference. The first question would be
which, if any, of the instant claims are entitled to the effective filing date of May 29, 2002
by applicants having met all of the statutory requirements of 35 U.S.C. § 119(e) -- e.g.,
the claims are supported by the provisional application in accordance with the
requirements of the first paragraph of § 112. See 35 U.S.C. § 119(e)(1). The second
question would be what effect, if any, the Wertheim rule with respect to “secret prior art”
might have on the determination of the effective date of the published application. See
In re Wertheim, 646 F.2d 527, 537, 209 USPQ 554, 564 (CCPA 1981) (“If...[the USPTO]
wishes to utilize against an applicant a part of that patent disclosure found in an
application filed earlier than the date of the application which became the patent, it must
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