Appeal 2006-2328
Application 10/131,049
because it was not published. We noted to counsel that something can be
admitted prior art even if has not been published, and that something known
to the inventor can qualify as prior art under 35 U.S.C. §§ 102(f)/103(a). We
requested that counsel submit a paper within a week clarifying the nature of
the subject matter of Figures 1 and 2A-2C.
In a paper received by facsimile on December 15, 2006, counsel noted
that the original correspondence between the firm and the Korean firm
representing Appellant had been destroyed to make room for storing the
patented files. It was noted that an inquiry had been sent to the client, and
that he was waiting for a reply. In the meantime, it was noted, the issue of
whether figures labeled "background art" or termed "conventional" constitute
"prior art" had arisen in several applications and had been resolved by way of
petitions granted by the Office. It is argued that no section of § 102
disqualifies a patent application if the subject matter was based on what
anyone else in the foreign country may or may not have known. It is also
argued that § 102(f) does not concern itself with the knowledge "of another"
regarding the subject mater sought to be patented. It is argued that "whether
Figs, 1-2C constitute 'Prior Art' hinges only on an inquiry of whether or not
the subject matter of Figs. 1-2C was published in this or a foreign country, or
was known or used by others in this country." We have not heard anything
more from counsel, so we decide the case on the information before us.
The term "prior art" as used in 35 U.S.C. § 103 refers at least to the
statutory material named in 35 U.S.C. § 102. Riverwood Intern. Corp. v. R.A.
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