Appeal 2007-0841
Application No. 10/823,849
Thus, the question is whether the Yang application should be given the
effective filing date of the '121 provisional application.
According to binding precedent,6 the purpose of §102(e) is the
codification of the Supreme Court's holding in Alexander Milburn Co. v.
Davis-Bournonville Co., 270 U.S. 390 (1926). The Wertheim court
explained that a benefit application can only provide an effective filing date
for a reference if, "'but for' the delays in the Patent Office, the patent would
have earlier issued and would have been prior art known to the public."7
Any delay in publishing the '121 provisional application can in no way be
attributed to the Office, however, since a provisional application is excepted
from publication.8 Similarly, any delay in issuing the '121 provisional
application cannot be attributed to the Office since provisional applications
do not automatically proceed to examination and thence issuance.9
The Examiner has the initial burden in making a rejection to set forth
the basis for the rejection. In the present case, the Examiner has not
articulated a theory on why the '121 provisional application would have been
available as a reference but for the delays of the Office. It appears that the
filers of the '121 provisional application chose a route that would ensure that
it not become available as a reference without some further action on their
part. Thus, even assuming that the '121 provisional application has the
6 Wertheim, 646 F.2d at 532, 209 USPQ at 559, binding in view of South
Corp. v. United States, 690 F.2d 1368, 1369-71, 215 USPQ 657, 657-58
(Fed. Cir. 1982) (en banc).
7 Wertheim, 646 F.2d at 536, 209 USPQ at 563.
8 35 U.S.C. 122(b)(2)(A)(iii).
9 35 U.S.C. 111(b)(5) (provisional applicant must request provisional
application be treated as an application or face abandonment).
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