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BPAI: 102(e) art can be effective prior art as of provisional priority date

October 29, 2008
Post by Blog Staff

In a decision recently designated precedential, the Board of Patent Appeals and Interferences considered the question of whether a reference that is prior art under § 102(e) is prior art as of its provisional priority date or the actual filing date of the reference. In affirming the examiner, the Board determined the reference was prior art as of its provisional date, as long as the relied-upon disclosure in the reference was sufficiently supported in the provisional filing.Based on language in the opinion, Examiners have the initial burden of showing the reference's entitlement to the provisional date. The Board stated (emphasis added):

Although the Examiner's statement regarding the correspondence between the Narayanan patent and its underlying provisional application is somewhat terse and conclusory, the Examiner nonetheless found that both documents "clearly show the same subject matter"—a factual finding. By making this factual finding, the Examiner then shifted the burden to Appellants to show why such a factual finding was erroneous.
More detail of Ex parte Yamaguchi after the jump.The applicants, Yamaguchi (and others) filed an application directed to a method for forming bumps on a semiconductor device for use in a flip-chip technique. Some claims were rejected as anticipated under § 102(e) by Narayanan, and the remainder as obvious over Narayanan in combination with Endo. The relevant timeline of applications is as follows:
  • December 8, 2000: Narayanan provisional application filed
  • March 6, 2001: Yamaguchi Japanese priority application filed
  • December 7, 2001: Narayanan nonprovisional filing date
  • March 1, 2002: Yamaguchi U.S. nonprovisional application filed
  • July 22, 2003: Narayanan patent issues
  • June 7, 2004: Yamaguchi application on appeal filed (divisional)
On appeal, the applicants argued because the Examiner did not furnish a copy of the provisional application or show how it supported the subject matter relied upon to make the rejection in compliance with § 112, the rejection was improper. The applicants did admit they were able to obtain a copy of the provisional application from other sources. As a result, the "pivotal issue" was whether the reference date of Narayanan was the provisional application filing date.The Board held that the Examiner's reliance on Narayanan's provisional application to establish the critical reference date under § 102(e) fully comported with the plain meaning of the statute, in that § 102(e)(2)'s recitation of "application" applied equally to provisional applications pursuant to § 111(b). The Board distinguished In re Wertheim, decided in 1981 (before provisional applicants and pre-grant publications). The Board held that when filing for a patent application the Applicant has done all they can do to publicize their invention disclosure, as such the inherent administrative delays in the patent process should not penalize the applicant. The Board held that the filing of a provisional application that meets the statutory requirements, en effect, provides a self-authenticating instrument establishing the date of disclosure for the subject matter claimed within the instrument, and that this authenticated disclosure serves as prima facie evidence that the applicant was in possession of the subject matter disclosed. While the Board acknowledged the public is not notified of this disclosure when it is made, but instead is notified only after the applicant pursues a nonprovisional application and that application is either published or issued, there was no legal reason why the disclosure in a provisional application should not be permitted to be relied upon as the effective date for a prior art reference, assuming it contains the relevant disclosure. The Board affirmed the Examiner's determination that Narayanan was effective prior art as of its provisional filing date, December 8, 2000. While noting that the Examiner's statement regarding the correspondence between Narayanan and its underlying provisional was somewhat terse, it was sufficient to shift the burden to application to show why such the determination was clearly erroneous. The applicants argued that the provisional did not "identically track" the nonprovisional, but the Board held this conclusory statement, without more, was insufficient to show the Examiner's determination was incorrect. Further, the Examiner relied upon three figures in the nonprovisional, and each of these figures and their corresponding descriptions were present in the provisional application.The applicants also argued that because the Examiner failed to provide a copy of the provisional application, the rejection was improper. The Board held first that even if the Examiner had a duty to provide a copy of the underlying provisional application, such a deficiency would be a matter for petition, not for appeal, and second with PAIR, applicants already have access to provisional applications. Thus, there was no merit to this argument.As a result, the Board affirmed the Examiner's anticipation rejections. With regard to the obviousness rejections, the applicants argued there was no teaching in a second reference, Endo, to provide a reason to combine Endo and Narayanan. The Board pointed out the Examiner asserted the motivation was found in Narayanan, not Endo, and that the combination was amply supported by the collective teachings of the prior art references. As a result, the Board also affirmed the obviousness rejections.To read the full decision in Ex parte Yamaguchi, click here.


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