REVERSED
1700 Chemical & Materials Engineering
1763 Ex Parte Devlin et al 10/991,124 FREDMAN 103(a) CIBA VISION CORPORATION EXAMINER CANO, MILTON I
Put another way, underlying similarity in a scientific principle of operation does not necessarily mean that an inventor in one field would have considered a reference pertinent which had applied the principle in other fields. The Van Wanderham case is illustrative.
In Van Wanderham, an inventor claimed a rocket propelled missile booster cryogenic liquid propellant flow system having an insulating layer. Prior art that described material used in making cutlery was argued to show obviousness. The court found the determination “not without difficulty,” but found the reference not analogous, explaining that “the difficulty arises from not considering the subject matter as a whole and instead focusing on the scientific principle involved.” In re Van Wanderham, 378 F.2d 981, 988 (CCPA 1967). “Considering the facts of record, we are of the view that appellants, in view of the conditions set forth in section 103, are not chargeable with the knowledge set forth in the cutlery art.” (Id.)
2100 Computer Architecture and Software
2178 Ex Parte Shimizu et al 10/560,358 BARRY 102(e)/103(a) RADER FISHMAN & GRAUER PLLC EXAMINER STORK, KYLE R
3700 Mechanical Engineering, Manufacturing, and Products & Design
3742 Ex Parte Paquette 11/656,071 SONG 102(b)/103(a) Patrick S. Yoder FLETCHER YODER EXAMINER MAYE, AYUB A
1763 Ex Parte Devlin et al 10/991,124 FREDMAN 103(a) CIBA VISION CORPORATION EXAMINER CANO, MILTON I
Put another way, underlying similarity in a scientific principle of operation does not necessarily mean that an inventor in one field would have considered a reference pertinent which had applied the principle in other fields. The Van Wanderham case is illustrative.
In Van Wanderham, an inventor claimed a rocket propelled missile booster cryogenic liquid propellant flow system having an insulating layer. Prior art that described material used in making cutlery was argued to show obviousness. The court found the determination “not without difficulty,” but found the reference not analogous, explaining that “the difficulty arises from not considering the subject matter as a whole and instead focusing on the scientific principle involved.” In re Van Wanderham, 378 F.2d 981, 988 (CCPA 1967). “Considering the facts of record, we are of the view that appellants, in view of the conditions set forth in section 103, are not chargeable with the knowledge set forth in the cutlery art.” (Id.)
2100 Computer Architecture and Software
2178 Ex Parte Shimizu et al 10/560,358 BARRY 102(e)/103(a) RADER FISHMAN & GRAUER PLLC EXAMINER STORK, KYLE R
3700 Mechanical Engineering, Manufacturing, and Products & Design
3742 Ex Parte Paquette 11/656,071 SONG 102(b)/103(a) Patrick S. Yoder FLETCHER YODER EXAMINER MAYE, AYUB A
AFFIRMED-IN-PART
1700 Chemical & Materials Engineering
1725 Ex Parte Durvasula 11/146,875 GAUDETTE 103(a) GENERAL ELECTRIC COMPANY (PCPI) C/O FLETCHER YODER EXAMINER TRINH, THANH TRUC
2100 Computer Architecture and Software
2178 Ex Parte Carrier 10/712,544 BARRY 101/103(a) CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP STEVEN M. GREENBERG EXAMINER PATEL, MANGLESH M
"[A]n applicant is not entitled to a patent if another’s patent discloses the same invention, which was carried forward from an earlier U.S. provisional application or U.S. non-provisional application." In re Giacomini, No. 2009-1400, 2010 WL 2674461, at *2 (Fed. Cir. July 7, 2010).
The 35 U.S.C. 102(e) critical reference date of a U.S. patent or U.S. application publications and certain international application publications entitled to the benefit of the filing date of a provisional application under 35 U.S.C. 119(e) is the filing date of the provisional application with certain exceptions if the provisional application(s) properly supports the subject matter relied upon to make the rejection in compliance with 35 U.S.C. 112, first paragraph. MPEP § 2136.03 (III)
AFFIRMED
1600 Biotechnology and Organic Chemistry
1648 Ex Parte Widegren et al 10/206,557 LANE 102(e) BOYLE FREDRICKSON S.C. EXAMINER LUCAS, ZACHARIAH
Even if a process is carried out for a different reason, if it is the same process, the same product is necessarily
produced. Mehl/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1366 (Fed. Cir. 1999).
1616 Ex Parte White et al 11/471,285 FREDMAN 102(b)/103(a) OLYMPIC PATENT WORKS PLLC EXAMINER CHOI, FRANK I
2600 Communications
2617 Ex Parte Meyers et al 11/221,329 MacDONALD 102(b)/103(a) CARLSON, GASKEY & OLDS, P.C. EXAMINER BALAOING, ARIEL A
