Appeal 2007-2225
Application 10/054,809
a prior U.S. provisional application is to 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). . . .” “[T]he subject matter” must refer to whatever subject
matter in a published application that is relied upon in a rejection over the
prior art. “[B]enefit” under § 119 requires, inter alia, an invention disclosed
in the provisional application “in the manner provided by the first paragraph
of section 112” (35 U.S.C. § 119(e)(1)), so “proper support” must refer to at
least written description support as required by 35 U.S.C. § 112, first
paragraph.
Appellants allege (Appeal Br. 15-18; Reply Br. 3-6) that the Teodosiu
provisional applications vary greatly from the published utility application,
and that a comparison between the published application and the provisional
applications shows that the teachings in the published application on which
the rejection relies are largely missing from the provisional applications.
The Examiner’s statements of rejection over the prior art (Answer 5-
12) refer to text in Teodosiu, and appear not to mention the provisional
applications that are the basis for alleging that Teodosiu can be considered
prior art. With respect to Appellants’ arguments regarding the deficiencies
of the Teodosiu provisional applications, the Examiner responds that “the
provisional” and the published application of Teodosiu disclose the same
invention. “Even though, the Provisional application is shorter, but it
provided the base for the published application. Under U.S.C.112, it does
not mention that the provisional application and the utility application have
to be the same length or exactly the same word by word with the utility
application.” (Answer 15.)
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