Ex Parte Monti

Board of Patent Appeals and Interferences

Feb 24, 2005

10210313 (B.P.A.I. Feb. 24, 2005)

The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte GIUSEPPE MONTI
_______________

Appeal No. 2005-0371
Application No. 10/210,313
_______________
ON BRIEF
_______________
Before COHEN, MCQUADE, and NASE, Administrative Patent Judges.
MCQUADE, Administrative Patent Judge.
DECISION ON APPEAL

Giuseppe Monti appeals from the final rejection of claims 1
through 10, all of the claims pending in the application.
THE INVENTION
The invention relates to “a method for transferring blister
packs from the outlet line of a blistering machine to the feeding
line of a packaging machine, and a device for carrying out the
method” (specification, page 1). Claims 1 through 8 are directed
to the method and claims 9 and 10 are drawn to the device.
Appeal No. 2005-0371
Application No. 10/210,313
1 35 U.S.C. § 102(a) provides that a person shall be entitled to a patent unless “(a) the
invention was known or used by others in this country, or patented or described in a printed
publication in this or a foreign country, before the invention thereof by the applicant for patent.”
2
THE REFERENCE
The reference relied on by the examiner to support the final
rejection is:
Monti, Published European 1 164 099 Dec. 19, 2001
Patent Application
THE REJECTION
Claims 1 through 10 stand rejected under 35 U.S.C. § 102(a)1
as being anticipated by the published European application.
Attention is directed to the main and reply briefs (filed
August 3, 2004 and September 29, 2004) and the answer (mailed
September 10, 2004) for the respective positions of the appellant
and the examiner regarding the merits of this rejection.
DISCUSSION
On the record before us, the following facts are not in
dispute:
a) the published European application discloses each and
every element of the subject matter recited in appealed claims 1
through 10;
Appeal No. 2005-0371
Application No. 10/210,313
3
b) the published European application matured from European
Application No. 01113607.4, and lists Italian Application No.
BO000357 as a priority document;
c) the published European application has a publication
date, Dec. 19, 2001, which is less than one year prior to the
filing date of the instant application, August 1, 2002; and
d) the published European application reflects the
appellant’s own work.
In rejecting claims 1 through 10 as being anticipated by the
published European application, the examiner reasons that
[s]ince there is no priority claim to either of
applicant’s earlier applications Italy B[O]000357 or
European 01113607.4, the publication EP1164099 A1
[i.e., the published European application] is useable
as a reference. Note that under 35 U.S.C. 102(a) the
issue is not “invention “by others””. The issue is
“know[n] by others...or described in a printed
publication in...a foreign country, before the
invention” (U.S. filing date) “by applicant”. Due to
the lack of diligence in filing the U.S. application,
applicant has lost the right to a U.S. patent [answer,
page 3].
The examiner’s position here has no basis in law. As stated
by the predecessor of our reviewing court in In re Katz, 687 F.2d
450, 454, 215 USPQ 14, 17 (CCPA 1982):
It may not be readily apparent from the statutory
language that a printed publication cannot stand as a
reference under §102(a) unless it is describing the
Appeal No. 2005-0371
Application No. 10/210,313
4
work of another. A literal reading might appear to
make a prior patent or printed publication “prior art”
even through the disclosure is that of the applicant’s
own work. However, such an interpretation of this
section of the statute would negate the one year period
afforded under §102(b)[footnote omitted] during which
an inventor is allowed to perfect, develop and apply
for a patent on his invention and publish descriptions
of it if he wishes. Illinois Tool v. Solo Cup Co., 461
F.2d 265, 172 USPQ 385 (CA 7), cert. denied, 407 U.S.
916 (1972).
Thus, one’s own work is not prior art under
§102(a) even though it has been disclosed to the public
in a manner or form which otherwise would fall under
§102(a). Disclosure to the public of one’s own work
constitutes a bar to the grant of a patent claiming the
subject matter so disclosed (or subject matter obvious
therefrom) only when the disclosure occurred more than
one year prior to the date of the application, that is,
when the disclosure creates a one-year time bar,
frequently termed a “statutory bar,” to the application
under §102(b). As stated by this court in In re
Facius, 56 CCPA 1348, 1358, 408 F.2d 1396, 1406, 161
USPQ 294, 302 (1969), “But certainly one’s own
invention, whatever the form of disclosure to the
public, may not be prior art against oneself, absent a
statutory bar.”
Hence, the published European application is not prior art
under § 102(a) with respect to the subject matter recited in
claims 1 through 10. Accordingly, we shall not sustain the
standing 35 U.S.C. § 102(a) rejection of these claims.
Appeal No. 2005-0371
Application No. 10/210,313
5
SUMMARY
The decision of the examiner to reject claims 1 through 10
is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. MCQUADE ) APPEALS
Administrative Patent Judge ) AND INTERFERENCES
)
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
JPM/kis
Appeal No. 2005-0371
Application No. 10/210,313
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WILLIAM J. SAPONE, ESQ.
THE OFFICES OF COLEMAN,
SUDOL, SAPONE, P.C.
714 COLORADO AVENUE
BRIDGEPORT, CT 06605