Appeal 2006-1776
Application 10/075,976
(section-by-section analysis of S. 1948 printed in the Congressional Record at the
request of Senator Lott) (“Section 4505 amends section 102(e) of the Patent Act to
treat an application published by the USPTO in the same fashion as a patent
published by the USPTO. Accordingly, a published application is given prior art
effect as of its earliest effective U.S. filing date against any subsequently filed U.S.
applications.”)
Section 102(e)(1) gives prior art effect to U.S. patent application publications,
such as the published second Lively application, as of the earliest U.S. effective
filing date. Congress in making a published application prior art as of its filing
date adopted for published applications the same prior art status that it previously
adopted for patents which are prior art. A patent which is prior art under § 102(e)
may be prior art as of the date of its parent if the subject matter claimed in the
patent is described in the parent. In re Wertheim, 646 F.2d 527, 209 USPQ 554
(CCPA 1981). In making published applications prior art as of their filing date,
and recognizing that patents could be prior art as of some parent date, Congress
made no distinction between published applications and issued patents with respect
to earlier filed applications of either published applications or patents. Had
Congress wished to limit a published application to its own filing date, and not
some earlier filing date based on a parent application, it would have explicitly said
so. There is no cogent basis for treating issued patents and published applications
differently when it comes to the effective filing date of either. Section 120 affords
an earlier prior art date to the published application as of the earliest date of those
applications upon which the application publication claims priority in which
support under 35 U.S.C. § 112, first paragraph is found. Prior art under 35 U.S.C.
§ 102(e) can be applied in rejections under 35 U.S.C. § 103. See Hazeltine
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