Appeal 2007-2517
Application 10/311,196
references1 are listed as having been published in 2001 (Reply Br. 2-3)
which is after the 2000 filing dates of the provisional applications. If
Appellants do not intend to rely on the 2000 provisional filing date as the
effective filing date of the instant application, they should have expressly
stated this during prosecution. It is crystal clear from the record that the
Examiner used the date of July 7, 2000 as the effective date of the instant
application based on the first disclosure of SEQ ID NO: 2 in Provisional
Application No. 60/216,595 (Office action, dated Feb. 9, 2005, at 3). Only
prior art available before this date was applied to the claims. Appellants’ did
not rebut or challenge the Examiner’s finding.
Although Appellants accepted the date of July 7, 2000 for the prior art
determination, it appears they now intend to rely on the later filing date of
June 15, 2001 (when International Application No. PCT/US01/19354 was
filed; Request for Updated Filing Receipt, dated May 9, 2005) for the
purposes of determining utility. Prior art and utility are determined on one
and the same date: the date on which the application was filed or the date of
an earlier filed application to which benefit is accorded under 35 U.S.C.
§ 119 or § 120.
If prosecution is resumed, the effective filing date of the application
must be clarified. If the filing date of June 15, 2001 is asserted, the
Examiner should consider all intervening prior art between July 7, 2000 and
June 15, 2001.
1 We have not considered these references because they constitute new
evidence. “A reply brief shall not include . . . any new . . . evidence.” 37
C.F.R. § 41.41(a)(1). “A reply brief that is not in compliance with
paragraph (a) of this section shall not be considered.” 37 C.F.R. § 41.41(b).
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