In Ex parte Yamaguchi (Appeal 2007-44 12 Application 101862,079; Decided: August 29,2008), where the cited reference to Narayanan was filed on December 7, 2001-a date prior to the effective filing date of the present application, but after its foreign priority date. But Narayanan claims benefit under fj 1 19(e) to a provisional application filed December 8, 2000-a date before the present application’s foreign priority date.
Examiner found that the provisional application “clearly shows the same subject matter as applied from the Narayanan et al. patent in the art rejections of the present application”
Regarding the anticipation rejection of representative independent claim 9, Appellants argue that Narayanan is not a proper reference since the effective filing date of the present application is prior to Narayanan7s filing date of December 7, 2001. Appellants acknowledge Narayanan7s underlying provisional application-a provisional application whose filing date antedates the earliest effective filing date of the present application.
Nevertheless, Appellants take the position that since the Examiner failed to (1) furnish a copy of the provisional application, and (2) show how the provisional application properly supports the subject matter relied upon to make the rejection in compliance with 35 U.S.C. 5 1 12, first paragraph, Narayanan is not an available reference. Therefore, Appellants argue, the rejection based on Narayanan is improper (App. Br. 4; Reply Br. 1-2).
Based on this express intent to apply the provisions of Title 35 relating to “applications for patent” to provisional applications (except for four enumerated sections noted in 5 11 1 (b)(8)), a provisional application can therefore be reasonably considered an “application for patent” within the meaning of fj 102(e). The plain meaning of these provisions of Title 35 as noted above is outlined in MPEP 2136.03(111) for establishing the critical reference date under 5 102(e) of a U.S. patent or U.S. application publication that is entitled to the benefit of the filing date of a provisional application under 5 119(e). Based on the statutory scheme of Title 35, we hold that Appellants have not shown harmful error in the rejections on appeal.
This rationale forms the basis for fj 102(e), and is based on the notion that by filing a patent application with the USPTO, applicants have done all they can do to publicize their invention disclosure. Therefore, assuming a patentable invention is claimed in such an application, the inherent administrative delays in the patent process should not penalize the applicant, at least with respect to the date of invention. As such, the applicant’s U.S. filing date is the date of invention irrespective of when the patent actually issues.
Board of Patent Appeals and Interferences held that U.S. provisional patent applications act as prior art under 35 U.S.C. ยง102(e) as their filing date, rather than the year-later filing date of any corresponding utility patent application.
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