Appeal 2007-0841
Application No. 10/823,849
requisite anticipating disclosure, it does not follow that it provides an
effective date for the published application.
The Wertheim court complained that the Examiner had done nothing
to establish the earlier date other than noting 35 U.S.C. 120.10 In the present
case, the Examiner's answer is silent and the final rejection merely says "See
MPEP 706.02(f)(1)[R-3]; for example, see Example 2."11 Currently
(revision 5), Example 2 under §706.02(f)(1) of the Manual of Patent
Examining Procedure (MPEP) states—
For reference publications and patents of patent applications
filed under 35 U.S.C. 111(a), the prior art dates under 35 U.S.C.
102(e) accorded to these references are the earliest effective
U.S. filing dates. Thus, a publication and patent of a 35 U.S.C.
111(a) application, which claims *>benefit< under 35 U.S.C.
119(e) to a prior U.S. provisional application or claims the
benefit under 35 U.S.C. 120 of a prior nonprovisional
application, would be accorded the earlier filing date as its prior
art date under 35 U.S.C. 102(e), assuming the earlier-filed
application has proper support for the subject matter as required
by 35 U.S.C. 119(e) or 120.
The only change from revision 3 on which the examiner relied appears to be
the substitution of "*>benefit<" for "priority". Note that the MPEP example
treats a benefit claim to a provisional application under 35 U.S.C. 119(e) as
equivalent to a benefit claim to a prior application under §120.
Section 119(e)(1) reinforces this parallelism by using language functionally
equivalent to the language of §120.12 The problem with the Examiner's
position is that neither §119(e)(1) nor the MPEP address the but-for
10 Wertheim, 646 F.2d at 535, 209 USPQ at 562.
11 Final rejection at 7.
12 Compare §119(e)(1) with §120.
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