Appeal 2006-1776
Application 10/075,976
for subject matter described in both applications in the manner required by 35
U.S.C. § 112, first paragraph.
The Appellant contends that an abandoned published patent application is not
afforded the earlier filing date or effective filing date. We disagree. Certainly, if
the published second Lively application had issued as a patent, there would be no
question but that it would be afforded the earlier effective filing date of its parent
application under 35 U.S.C. § 102(e). See In re Wertheim, 646 F.2d 527, 209
USPQ 554 (CCPA 1981). The applicability of this statutory provision was
extended by the AIPA, supra, to U.S. patent application publications.
In support of his contentions, the Appellant directs our attention to MPEP
§ 2126.01, which refers to the date a foreign patent is effective as a reference, and
MPEP § 2127, which refers to the date abandoned patent applications (as
contrasted with U.S. patent application publications) become effective as prior art.
These sections are not relevant to U.S. patent application publications such as the
second Lively application. Instead, MPEP §§ 706.02(f)(I)(B) and 2136.02 provide
the advisory propositions of law pertinent to U.S. patent application publications,
as in this case, and the application of those advisory propositions of law parallel
the analysis we have drawn above.
Because the effective filing date of the second Lively application antedates
the filing of the application on appeal, we conclude that the second Lively
application is prior art vis-à-vis the subject matter of independent claims 1 and 8.
Accordingly, we maintain the rejection of the subject matter of independent claims
1and 8 under 35 U.S.C. § 103 as being obvious over the second Lively application
in view of Acker.
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