The Subject Patent Already Has Underlining or ... - Bayhdolecentral

as of the date patent rights are granted. In re Kathawala,
9 F.3d 942, 28 USPQ2d 1789 (Fed.Cir.1993).
See MPEP § 2135 - § 2135.01 for more information
on 35 U.S.c. 102(d).
2126.01 Date of Availability of a Patent
as a Reference
PATE FOREIGN PATENT IS EFFECTivE AS'\'
REFERENCE, IS" USUALLY .THE , pATE
PATENT RIGHTS ARE FORMALLY AWARDED
TO ITS APPLICANT
The date the patent is available as a reference is
generally the date that the patent becomes enforceable.
This date is the date the sovereign formally
bestows patents rights to the applicant. In' re Monks,
588 F.2d 308, 200 USPQ 129 (CCPA 1978),There is
an exception to this rule when the patent is secret as of
the date the rights are awarded. In re Ekenstam,
256 F.2d 321, 118 USPQ 349 (CCPA 1958).
Note that MPEP §901.05summarizes in tabular
form dates of patenting for many foreign patents:
Chisum, Patents § 3.06[4] n.2 gives a good summary
of decisions which specify reference availability dates
for specific classes of foreign patents;' A copy of
Chisum is kept in the law library of the Solicitor's
Office and in the Lutrelle F. Parker, Sr.,· Memorial
Law Library located in CPKI-520:
2126.02 Scope of Reference's Disclosure
Which Can Be Used to Reject
Claims Wbenthe Reference Is a
"Patent"but Not a "Publication"
OFTEN UNCLAIMED DETAILS FOUND IN
THE PATENT SPECIFICATION CAN BE RE­
LIED ON EVEN IF PATENT IS SECRET
When the patented document is used as a patent and
not as a publication, the examiner is not restticted to
the information conveyed by the patent claims but
may use any information provided in the specification
which relates to the subject matter of the patented
claims when making a rejection under 35 U.S.c.
102(a), (b) or (d). Ex parte Ovist, 152 USPQ 709, 710
(Bd. App. 1963) (The claim of an Italian patent was
generic and thus embracedthe species disclosed in the
examples, the Board added that the entire specifica,
PATENTABILITY 2126.01
tion was germane to the claimed invention and upheld
the examiner's 35 U.S.C. 102(b) rejection.); In re
Kathawala.B F.3d942, 28 USPQ2d.1785 (Fed. Cir.
1993) (The chums at issue where rejected under
35 U.S.C.I02(d) by applicant's own parent afplica,
tions in Greece and Spain. The applicant argued that
the "invention ... patented in Spain was not the same
'invention' claimed in the U.S. application because
the Spanish patent claimed processes for making
[compounds for itlhibition ofcholesterol biosynthesis]
and claimsI and 2 were directed to the compounds
themselv,es."9 F.3d at 944, 28 USPQ2d at 1786. The
Federal Circuit held that "when an applisant files a
foreign application fully disclosing his inventionand
having the potential to claim hisinvention ill a Hum- '
berof ways, the reference in section 102(d) to 'invention
'" patented' necessarily includes all 'disclosed
aspects of the invention." 9F.3d at 945-46,
28 USPQ2d at 1789:)
In re Fuge, 272F.2d 954,957, 124 USPQ 105, 107
(CCPA 1959)"doeS not conflict with the abovedecisions.
This decisionsimplystatest'that, at the least,
the scope of the patentembraces everything included
in the [claim]." (emphasis added),
Note that the, courts have interpreted the phrase
"invention .... pate!1\ed" in 102(a), (b), and (d) the,
same way and have cited decisions without regard to
which of these subsections of 35 U.S.C. 102 was at
issue in the particular case at hand. Therefore, it does
not seem to matter to which subsection of102 the
cases are directed; the court decisions are interchangeable
as to this issue.
2127 Domestic and Foreign Patent
Applicatipnsas Priol' Art
I. AMNDONEDAPPLICATIONS,I1'ICLUD.
ING PROVISIONAL APPLICATIONS
AbaniimedApplicatlons Disclosed to the Public
Can Be Used as Prior Art '
"An abandoned patent application may become evidence
of prior art only when it has been appropriately
disclosed, as, for example, when the abandoned patent
[application] is reference[d]in the disclosure of
another patent, in a publication, or by voluntary disclosure
under [fomer Defensive Publication rule]
37 CFR 1.139." Lee Pharmaceutical v. Kreps,
2100-63 August 2001