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2127 MANUAL OF PATENT EXAMINING PROCEDURE
577 F.2d 610, 613, 198 USPQ 601, 605 (9th Cir.
1978). An abandoned patent application becomes
available as prior art only as of the date the public
gains access to it. See 37 CPR 1.14(e) (2). However,
the subject matter of an abandoned application,
including both provisional and nonprovisional applications,
referred to in a prior art U.S. patent may be
relied on in a 35 U.S.c. 102(e) rejection based on that
patent if the disclosure of the abandoned application
is actually included or incorporated by reference in
the patent. Compare In re Lund, 376 F.2d 982, 991,
153 USPQ 625, 633 (CCPA 1967) (The court reversed
a rejection over a patentwhich was a continuation-inpart
of an abandoned application. Applicant's filing
date preceded the issue date of the patent reference.
The abandoned application contained subject matter
which was essential to the rejection but which was not
carried over into the continuation-in-part. The court
held that the subject matter of the abandoned application
was not available to the public as of either the
parent's or the child's filing dates and thus could not
be relied on in the 102(e) rejection.). See also MPEP
§ 901.02. See MPEP § 2136.02 and § 2136.03 for the
35 U.S.C. 102(e) date of a U.S. patent claiming priority
under 35 U.S.C. 119?r 120.
II. APPLICATIONS WHICH HAVE ISSUED
INTO U.S. PATENTS
A 35 U.S.C. I02(e) Rejection Cannot Rely on Matter
Which Was Canceled/rom the Application and Thus
Did Not Get Published in the Issued Patent
Canceled matter in the application file of a U.S.
patent cannot be relied upon in a rejection under
35 U.S.C.l02(e). Ex Parte Stalego, 154 USPQ 52,
53 (Bd. App. 1966). The canceled matter only
becomes available as prior art as of the date the application
issues into a patent since this is the date the
application file wrapper becomes available to the public.
In re Lund, 376 F.2d 982, 153 USPQ625 (tCPA
1967). For more information on available prior art for
use in 35 U.S.C. 102(e) rejections see MPEP
§ 2136.02.
August 2001
2100_64
III. FOREIGN APPLICATIONS OPEN FOR
PUBLIC INSPECTION (LAID OPEN AP·
PLICATIONS)
Laid Open Applications May Constitute "Published"
Documents
When the specification is not issued in printed form
but is announced in an official journal and anyone can
inspect or obtain copies, it is sufficiently accessible to
the public to constitute a "publication" within the
meaning of 35 U.S.C. 102(a) and (b). See In re )1yer,
655 F.2d 221,210 USPQ 790 (CCPA 1981).
Older cases have held that laid open patent applications
are not "published" and cannot constitute prior
art. Ex parte Haller, 103 USPQ 332 (Bd. App. 1953).
However, whether or not a document is "published"
for the purposes of 35 U.S.C. 102 and 103 depends
on how accessible the document.is to the public. As
technology has made reproduction of documents easier,
the accessibility of the laid open applications has
increased. Items provided in .easily reproducible form
have thus become "printed publications" as the phrase
is used in 35 U.S.C. 102. In re )1yer, 655 F.2d 221,
226, 210 USPQ 790, 794 (CCPA 1981) (Laid open
Australian patent application held to be a "printed
publication" even though only the abstract was published
because it was laid open for public inspection,
microfilmed, "diazo copies" were distributed to five
suboffices having suitable reproduction equipment
and the diazo copies were available for sale.). The
contents of a foreign patent application should not be
relied upon as prior art until the date of publication
(i.e., the insertion into the laid open application) can
be confirmed by an examiner's review of a copy of
the document. See MPEP § 901.05.
IV. PENDING U.S. APPLICATIONS
As specified in 37 CFR 1.14(a), all pending U.S.
applications are preserved in confidence except for
published applications, reissue applications, and
applications in which a request to open the complete
application to inspection by the public has been
granted by the Office (37 CFR Lllfbj), However, if
an application that has not been published has an
assignee or inventor in common with the application
being examined, a rejection will be proper in some
circumstances.Forinstance, when the claims between
the two applications are not independent or distinct, a