PTAB.US: Decisions of PTAB Patent Trial and Appeal Board Updated Daily.

Friday, September 4, 2009


1700 Chemical & Materials Engineering
Ex Parte Bastioli et al OWENS 102(b)/103(a) CONNOLLY BOVE LODGE & HUTZ LLP

2400 Networking, Mulitplexing, Cable, and Security
Ex Parte Paden et al BARRY 102(e) AT&T Legal Department - AS

2800 Semiconductors, Electrical and Optical Systems and Components
Ex Parte Eckhart HOFF 35 U.S.C. § 135(b)(2)/102(e) SCHIFF HARDIN, LLP

35 U.S.C. § 135(b)(2) reads:

A claim which is the same as, or for the same or substantially the same subject
matter as, a claim of an application published under section 122(b) of this
title may be made in an application filed after the application is published
only if the claim is made before 1 year after the date on which the application
is published.

35 U.S.C. § 120 states, in pertinent part:

An application for patent for an invention disclosed in the manner provided
by the first paragraph of section 112 … in an application previously filed in
the United States … shall have the same effect, as to such invention, as though
filed on the date of the prior application ….

The Board of Patent Appeals and Interferences has previously held that § 135(b)(2) need not explicitly recite "effective filing date" for the provisions of § 120 to apply to it. See Ryan v. Young, Interference 105,504, Paper 116, pp. 25-27 (Bd. Pat. App. & Int. 2008); Ding v. Singer, Interference 105,436, Paper 36, pp. 8-13 (Bd. Pat. App. & Int. 2007). Both § 120 and § 135(b)(2) use the word "application" and there is no reason to believe that Congress intended to have "application" mean one thing in § 135(b)(2) and something else in § 120, thereby excluding the earlier filing date benefits of § 120 to applications filed after an application is published. Ryan, p. 26. § 120 does not require another statutory section to make an express reference to it before its provision comes to life; there are many examples [e.g., §§ 102(b), 102(d), and 102(e)] of applying the effective filing date of § 120 without any specific reference to § 120. Ding, p. 12.

3600 Transportation, Construction, Electronic Commerce, Agriculture, National Security, and License & Review
Ex Parte Lee et al TURNER 102(e) Haynes and Boone, LLP

3700 Mechanical Engineering, Manufacturing, and Products & Designs
Ex Parte Woltman et al GRIMES 102(e)/103(a) KIMBERLY-CLARK WORLDWIDE, INC.


1600 Biotechnology and Organic Chemistry
Ex Parte Ashraf et al GREEN 103(a)/nonstatutory double patenting HOWSON & HOWSON LLP / WYETH

2600 Communications
Ex Parte Parthasarathy HOFF 102(e)/103(a) HONEYWELL INTERNATIONAL INC.

3700 Mechanical Engineering, Manufacturing, and Products & Designs
Ex Parte Worthington GREEN 102(b)/103(a) KOLISCH HARTWELL, P.C.

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