Appeal 2006-1776
Application 10/075,976
rejection. Because of the importance of the sole legal issue raised by the request,
the panel has been expanded to a 5-judge panel. For reasons which follow, we
(1) have considered the request on the merits, but (2) decline to withdraw the new
rejection based on Lively in view of Acker.
ISSUE ON REHEARING
In an opinion in support of the original panel decision, the panel entered a
new rejection, pursuant to 37 C.F.R. § 41.50(b), of the subject matter of
independent claims 1 and 8 under 35 U.S.C. § 103 as obvious over Lively in view
of Acker. Appellant limits the request for rehearing to a single issue: whether
Lively is prior art. According to the Appellant, Lively, a U.S. patent application
published under 35 U.S.C. § 122(b), is not prior art. Appellant reasons that
because both Lively [second Lively application] and its parent application [first
Lively application] were abandoned, the published second Lively application
cannot be afforded its effective filing date for prior art purposes. In particular, the
Appellant contends that
[a]s set forth in the . . . records from USPTO Public PAIR, Lively was
abandoned. The parent case, U.S. Application Serial No. 09/538,612,
relied on by the Board for an effective date, was also abandoned, and
was never published. Therefore, Lively is only available as a reference
as of its publication date of July 11, 2002, which is after Applicant's
filing date. See MPEP 2126.01 and 2127. Lively is not a proper
reference, and should be withdrawn.
(Request for Rehearing 1-2).
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