Ex Parte Creux et al

Board of Patent Appeals and Interferences

Jun 30, 2008

10129265 (B.P.A.I. Jun. 30, 2008)

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