Ex Parte Creux et alDownload PDFBoard of Patent Appeals and InterferencesJun 30, 200810129265 (B.P.A.I. Jun. 30, 2008) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES _______________ Ex parte SOPHIE CREUX, MICHEL LECLERCO, and PASCAL FOURNIER ______________ Appeal 2007-1173 Application 10/129,265 Technology Center 1700 _______________ Decided: June 30, 2008 _______________ Before CHARLES F. WARREN, THOMAS A. WALTZ, and JEFFREY T. SMITH, Administrative Patent Judges. WARREN, Administrative Patent Judge. DECISION ON APPEAL Applicants appeal to the Board from the decision of the Primary Examiner rejecting for at least the second time claims 1 and 3 through 15 in the Office Action mailed June 3, 2005. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a) (2005). The appeal was heard June 17, 2008. Appeal 2007-1173 Application 10/129,265 We reverse the decision of the Primary Examiner. Appellants request review of the two grounds of rejection under 35 U.S.C. § 103(a) over Wallenberger (US 2003/0207748 A1 Publication Date: November 6, 2003) as the principal reference. Supp. App. Br. 4; Ans. 3 and 4. Appellants contend that the sole prior document in the Wallenberger linage which precedes the priority date of the claimed invention is Provisional Application 60/136,538 filed May 28, 1999. Supp. App. Br. 6. The Examiner does not dispute Appellants’ contention and relies on this document to establish the effective date of certain disclosure in Wallenberger. Ans. 6. Our review of the official electronic records of the USPTO reveals that Wallenberger’s Published Application is in part a continuation-in-part of Application 09/980,248, which is a national stage entry under 35 U.S.C. § 371 of PCT/US00/14155, filed May 23, 2000, that claims priority from Provisional Application 60/136,538. We note that 35 U.S.C. § 102(e) has an effective date of November 29, 2000, pursuant to sec. 13205 of Pub. L. 107-273 (2002). Thus, an application published pursuant to 35 U.S.C. § 122(b) resulting from an international application filed before this date is not effective as prior art as of the filing date of the international application. Therefore, this published application is not effective as prior art under § 102(e)(1) as of the filing date of a provisional application the benefit of which is claimed by the international application. See Manual of Patent Examining Procedure §§ 706.02(f)(1), Example 6, and 2136.03, III. Priority from provisional application under 35 U.S.C. § 119(e) (8th ed., Rev. 6, Sept. 2007). 2 Appeal 2007-1173 Application 10/129,265 Accordingly, Wallenberger is not available as prior art with respect to the claimed invention on appeal and thus, the Examiner has failed to establish a prima facie case of obviousness under 35 U.S.C. § 103(a). The Primary Examiner’s decision is reversed. REVERSED tf/ls OBLON, SPIVAK, MCCLELLAND, MAIER & NEUSTADT, P.C. 1940 DUKE STREET ALEXANDRIA, VA 22314 3 Copy with citationCopy as parenthetical citation