Ex Parte Eckhart

Board of Patent Appeals and Interferences

Sep 3, 2009

10863322 (B.P.A.I. Sep. 3, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ANDREW KARL ECKHART
____________________

Appeal 2009-003907
Application 10/863,3221
Technology Center 2800
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Decided: September 4, 2009
____________________

Before ROBERT E. NAPPI, MARC S. HOFF, and CARLA M. KRIVAK,
Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 59, 61, 63-67, and 69-111.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.

1 The real party in interest is Switchcraft, Inc.
2 Claims 13, 22, 31, 40, 60, 62, and 68 have been cancelled. Claims 1-12,
14-21, 23-30, 32-39, 41-58 stand allowed.
Appeal 2009-003907
Application 10/863,322

Appellant’s invention relates to a dual, switch actuated, normalling
audio jack (Spec. 1).
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Follingstad US 6,992,257 B2 Jan. 31, 2006
(hereinafter, “the Follingstad patent”)
Follingstad US 2002/0173188 A1 Nov. 21, 2002
(hereinafter, “the Follingstad application”)
Claims 59, 61, 63-67, and 69-111 stand rejected under 35 U.S.C.
§ 135(b)(2) on the basis that the claims were not copied within one year of
the publication date of the Follingstad application.
Claims 59, 61, 63-67, and 69-111 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by the Follingstad patent.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed April 24, 2008) and the Examiner’s Answer (“Ans.,”
mailed June 2, 2008) for their respective details.
ISSUES
Appellant argues that the filing date of his application for the purposes
of applying 35 U.S.C. § 135(b)(2) is the effective filing date, rather than the
actual filing date, and thus the Examiner’s reliance on the actual filing date
is erroneous (Br. 15).
With respect to the rejection of claims under § 102, Appellant argues
that because he has complied with all applicable provisions of 37 CFR
§ 41.202, he has established prima face prior inventorship relative to the
Follingstad patent, thus overcoming the rejection.
The contentions of Appellant present us with the following two issues:
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Appeal 2009-003907
Application 10/863,322

1. Has Appellant shown that the Examiner erred in finding that
“filed” in § 135(b)(2) refers to the actual filing date of the application in
which claims are copied from a published application, rather than the
effective filing date of the application?
2. Has Appellant shown that the Examiner erred in finding that the
Follingstad patent qualifies as prior art against claims 59, 61, 63-67, and 69-
111?
FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. According to Appellant, the invention concerns a dual, switch
actuated, normalling audio jack (Spec. 1).
2. Appellant filed the subject application, designated Application
No. 10/863,322, on June 8, 2004.
3. The subject application is a continuation of Application No.
10/264,744, filed October 4, 2002, abandoned October 1, 2004.
The Follingstad Application and Patent
4. Michael Follingstad et al. filed Application No. 09/828,706 on
April 6, 2001.
5. Follingstad’s application was published as U.S. Patent
Application Publication No. 2002/0173188 on November 21, 2002.
6. Application No. 09/828,706 issued as U.S. Patent No.
6,992,257 on January 31, 2006.

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Appeal 2009-003907
Application 10/863,322

PRINCIPLES OF LAW
35 U.S.C. § 135(b)(2) reads:
A claim which is the same as, or for the same or
substantially the same subject matter as, a claim of an
application published under section 122(b) of this title may be
made in an application filed after the application is published
only if the claim is made before 1 year after the date on which
the application is published.

35 U.S.C. § 120 states, in pertinent part:
An application for patent for an invention disclosed in the
manner provided by the first paragraph of section 112 … in an
application previously filed in the United States … shall have
the same effect, as to such invention, as though filed on the date
of the prior application ….

ANALYSIS
SECTION 135(B)(2) REJECTION
The Examiner rejects claims 59, 61, 63-67, and 69-11 under
§ 135(b)(2), reasoning that (a) the present application was filed on June 8,
2004 (FF 2); (b) that filing date is subsequent to the November 21, 2002
publication of the Follingstad application (FF 5); and (c) Appellant copied
claims from the Follingstad application on May 3, 2005, which is more than
one year after the publication of the Follingstad application (Ans. 3).
Appellant argues that § 135(b)(2) and its requirement of copying
within one year of publication do not apply to the instant application,
because the instant application is a continuation of Application No.
10/264,744, filed October 4, 2002 (i.e., one month before publication of the
Follingstad application) (Br. 9, FF 3). The instant application is thus entitled
under 35 U.S.C. § 120 to the benefit of the earlier filing date (Br. 15).
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Appeal 2009-003907
Application 10/863,322

Because the effective filing date of the application is not after publication of
the Follingstad application, the threshold condition of § 135(b)(2) is not met,
and the one-year restriction on copying does not apply to this application
(see Br. 16).
We agree with Appellants. The Board of Patent Appeals and
Interferences has previously held that § 135(b)(2) need not explicitly recite
“effective filing date” for the provisions of § 120 to apply to it. See Ryan v.
Young, Interference 105,504, Paper 116, pp. 25-27 (Bd. Pat. App. & Int.
2008); Ding v. Singer, Interference 105,436, Paper 36, pp. 8-13 (Bd. Pat.
App. & Int. 2007). Both § 120 and § 135(b)(2) use the word “application”
and there is no reason to believe that Congress intended to have
“application” mean one thing in § 135(b)(2) and something else in § 120,
thereby excluding the earlier filing date benefits of § 120 to applications
filed after an application is published. Ryan, p. 26. § 120 does not require
another statutory section to make an express reference to it before its
provision comes to life; there are many examples [e.g., §§ 102(b), 102(d),
and 102(e)] of applying the effective filing date of § 120 without any
specific reference to § 120. Ding, p. 12.
In applying § 120 to the facts of this case, because we consider
Appellant’s filing date for the purposes of § 135(b)(2) to be Appellant’s
effective filing date of October 4, 2002, one month prior to the publication
date of the Follingstad application, we find that Appellant’s application is
not “an application filed after the application [from which claims are copied]
is published.” As a result, § 135(b)(2)’s requirement to copy claims within
one year of the application’s publication date does not apply to the instant
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application. The Examiner’s rejection of claims 59, 61, 63-67, and 69-111
under § 135(b)(2) is in error, and we will not sustain the rejection.
SECTION 102 REJECTION
The Examiner finds claims 59, 61, 63-67, and 69-111 anticipated by
the Follingstad patent because Appellant has not satisfied the conditions of
§ 135(b)(2) and has not established prima facie prior inventorship (Ans. 6).
As explained supra, we agree with Appellant that § 135(b)(2) does not apply
to an application having an effective filing date prior to the publication date
of the application from which claims are copied (i.e., the Follingstad
application).
The Examiner states that Appellant’s declarations filed October 31,
2005, fail to establish prima facie prior inventorship, in that Appellant filed
declarations under 37 CFR § 1.131, and such declarations are not permitted
to overcome a rejection based on 35 U.S.C. § 102(e) since Appellant is
claiming interfering subject matter (Ans. 7). The Examiner’s
characterization of the filed declarations is inaccurate, however. Appellant
explicitly refers to the filed declarations as being “for satisfaction of
§ 41.202(a)(4)” (Response filed Oct. 31, 2005, p. 64).
The Examiner further states that “the Exhibits of the affidavits filed
on October 31, 2005 are different from the invention of the present
application disclosed in the originally filed disclosure because the Exhibits
shows [sic] a card edge connector structure, wherein the invention of the
present application does not have a card edge connector structure.” Ans. 7.
Under MPEP 2304.02(c), however, “the examiner is not responsible for
examining the substantive sufficiency of the showing” under 37 CFR
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Application 10/863,322

§ 41.202, but is to merely “review the suggestion to verify that the
applicant’s showing, taken at face value is sufficient to overcome the
rejection.”
Thus, we find error in the Examiner’s findings that Appellant has not
satisfied 35 U.S.C. § 135(b)(2). With respect to the rejection under § 102(e)
and Appellant’s request for an interference, we are forwarding the
application to the Trial Division for consideration of an interference.
CONCLUSIONS OF LAW
1. Appellant has shown that the Examiner erred in finding that
“filed” in § 135(b)(2) refers to the actual filing date of the application in
which claims are copied from a published application, rather than the
effective filing date of the application.
2. Appellant has shown that the Examiner erred in finding that the
Follingstad patent qualifies as prior art against claims 59, 61, 63-67, and 69-
111.
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Appeal 2009-003907
Application 10/863,322

ORDER
The Examiner’s rejection of claims 59, 61, 63-67, and 69-111 is
reversed.
REVERSED

ELD

SCHIFF HARDIN, LLP
PATENT DEPARTMENT
233 S. WACKER DRIVE-SUITE 6600
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