Appeal 2007-2225
Application 10/054,809
provisional applications thus predate the September 13, 2001 filing date of
Teodosiu.
The Examiner does not find that any of the claims rejected over the
prior art has an effective filing date later than the filing date of Teodosiu.
Therefore, the rejections over the prior art are based, conversely, on the
implicit findings that each of the claims that are rejected are fully supported
by provisional applications relied upon by Appellants. Although there are
no express findings, we assume that the Examiner has verified that every
claim rejected over the prior art finds support in the provisional applications.
The Examiner applies Teodosiu against the claims because, according
to the face of the published application, the application purports to be a
“Non-provisional” of two provisional applications filed on November 22,
2000, both of which predate all of Appellants’ provisional applications.
We will assume for the purposes of this appeal that U.S. provisional
applications can contribute to the effective filing date of a published
application. Appellants appear not to contend otherwise, but seem to argue
that the use of provisional applications is limited by In re Wertheim, 646
F.2d 527, 209 USPQ 554 (CCPA 1981), in much the same way that the
effective filing date of U.S. patents, as references, may be limited when
there is a continuation-in-part in a chain of priority under 35 U.S.C. § 120.
In light of the rejections set forth by the Examiner, however, we can
further assume, for the purposes of this appeal, that provisional applications
can have prior art effect to the greater extent described in the Manual of
Patent Examining Procedure (MPEP) § 706.02(f)(1) (Eighth Ed., Rev. 5,
Aug. 2006), “Example 2.” According to Example 2, a published U.S.
nonprovisional application that claims “benefit” under 35 U.S.C. § 119(e) to
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