Appeal 2007-0841
Application No. 10/823,849
BACKGROUND
Mok's application was filed 13 April 2004.2 Mok claims the benefit
of a provisional application filed 18 April 2003. The Examiner does not
contest Mok's benefit claim.
The Office published the Yang application on 29 January 2004.3 The
Yang application was filed on 8 July 2003 and claims the benefit of
numerous applications including a provisional application, 60/435,121, filed
19 December 2002.4 The Examiner relies on the provisional application to
establish an effective filing date for purposes of §102(e).
ANALYSIS
Section 102(e)(1) provides in relevant part that an Applicant is not
entitled to a patent if the claimed invention—
was described in (1) an application for patent, published under
section 122(b), by another filed in the United States before the
invention by the applicant for patent….
As a threshold matter, we must be satisfied that the Yang published
application qualifies as prior art under §102(e)(1). The Yang published
application does not, on its face, have a sufficiently early filing date to
anticipate Mok's claims. The '121 provisional application cannot itself be
the basis of the rejection since it was not published as §102(e) requires.5
2 Application, certificate of mailing.
3 Yang, coversheet.
4 Yang, coversheet.
5 In re Wertheim, 646 F.2d 527, 535, 209 USPQ 554, 562 (CCPA 1981)
(criticizing the board opinion because "an abandoned [benefit] application
by itself can never be a reference").
2
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