Appeal 2007-1268
Application 10/177,845
present application, and is owned by the same entity as the present
application. (Brief 4-5.)
We agree with the Examiner that Ohkado is not disqualified by 35
U.S.C. § 103(c) because it qualifies as prior art under 35 U.S.C. § 102(a).
(Answer 7.) As the Examiner correctly points out, 35 U.S.C. § 103(c) only
disqualifies a reference "which qualifies as prior art only under one or
more of subsections (e), (f), and (g) of section 102 of this title." (Answer 7
(quoting 35 U.S.C. § 103(c) with emphasis added).) There is no dispute that
Ohkado qualifies as prior art under 35 U.S.C. § 102(e). But Ohkado also
qualifies as prior art under § 102(a) because it was published on August 23,
2001, which is before the June 20, 2002 filing date of the present
application. As discussed below, Appellants have not made a sufficient
showing to disqualify Ohkado as a § 102(a) reference. Therefore, Ohkado is
not disqualified as a reference by 35 U.S.C. § 103(c) because it qualifies as
prior art under both § 102(a) and § 102(e).
Appellants contend that the Examiner improperly based the refusal to
remove Ohkado as a reference on the rationale that Appellants failed to
show a good and sufficient reason why the Section 132 Declaration was not
presented prior to the Final Office Action. (Brief 5-6.) Initially, we observe
that the "[r]eview of an examiner's refusal to enter an affidavit as untimely is
by petition and not by appeal to the Board of Patent Appeals and
Interferences." In re Deters, 515 F.2d 1152, 1156, 185 USPQ 644, 648
(CCPA 1975); see also MPEP § 1002.02(c) (petitions relating to formal
sufficiency and propriety of affidavits under 37 C.F.R. § 1.132 are decided
by Technology Center Directors); MPEP § 1201 ("The line of demarcation
between appealable matters for the Board of Patent Appeals and
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