Appeal 2007-1268
Application 10/177,845
We find this argument somewhat disturbing. Although the Examiner
based the anticipation rejection in the Non-Final Office Action solely upon
§ 102(e) rather than upon both § 102(a) and § 102(e) (Finding of Fact 1), 3
the error -- if any -- is harmless. Appellants distinguished Ohkado as a
§ 102 reference by amending the independent claims in the Response to
Non-Final Office Action.4 Upon receiving the new ground of rejection
under 35 U.S.C. § 103(a) in the Final Office Action (Finding of Fact 3), we
believe that Appellants should not only have recognized that Ohkado
qualifies as prior art under 35 U.S.C. § 102(e), but also should have
recognized that Ohkado qualifies as prior art under 35 U.S.C. § 102(a)
because the publication date of August 23, 2001 -- which is prior to the
filing date of the present application -- appears on the face of Ohkado.
In order to disqualify Ohkado as a reference, Appellants have the
burden to prove that Ohkado is not prior art under § 102(a).5 It is simply not
reasonable for Appellants to rely on a prior ground of rejection that only
applied Ohkado as an anticipating reference under § 102(e) as a reason not
to address the qualification of Ohkado as prior art under § 102(a) when
attempting to disqualify it as a reference in connection with a new ground of
rejection under § 103(a).
3 See MPEP § 706.02(a) ("Even if the reference is prior art under 35 U.S.C.
102(e), the examiner should still consider 35 U.S.C. 102(a).").
4 Appellants could not have overcome Ohkado as an anticipating reference
by affidavit alone because Ohkado's filing date of February 15, 2001 is more
than one year prior to the June 20, 2002 filing date of the present
application.
5 See MPEP § 706.02(b) ("A rejection based on 35 U.S.C. 102(a) can be
overcome by: . . . (C) Filing an affidavit or declaration under 37 CFR 1.131
showing prior invention.")
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