Ex parte May

Informative decision only: persuasive authority, not binding precedent. When a U.S. patent application publication under 35 U.S.C. § 122(b) claims § 120 benefit of a parent and the relied-upon subject matter is described in the parent in compliance with § 112, first paragraph, its § 102(e) prior art date is its earliest effective U.S. filing date, and the Board may apply it under § 103. Whether the published application or its parent was later abandoned is not relevant to its prior art status. No prior precedent directly addressed this issue, as far as the text shows; the Board treated published applications like issued patents, which may be prior art as of a parent's date under In re Wertheim. An examiner or the Board may rely on a published continuation-in-part as of its parent's filing date, even if both applications were abandoned and the parent was never published, so long as the parent supports the cited subject matter. An applicant cannot defeat such a reference by pointing to abandonment or to the reference's later publication date. The Board relied on In re Wertheim, 646 F.2d 527 (CCPA 1981), and on Hazeltine Research, Inc. v. Brenner, 382 U.S. 252 (1965), and In re Zenitz, 333 F.2d 924 (CCPA 1964), for applying § 102(e) art in § 103 rejections. It found MPEP 2126.01 and 2127 inapplicable to published applications. LEGAL TEST OR STANDARD: The § 102(e) date of a published U.S. application that did not result from, or claim the benefit of, an international application is its earliest effective U.S. filing date, taking into consideration (1) any proper benefit claims to a prior U.S. application under 35 U.S.C. § 120 (or § 119(e), not at issue) and (2) whether any prior application describes in compliance with 35 U.S.C. § 112, first paragraph, the subject matter used to make the rejection. TRIGGERING FACTS: Lively's first application was filed March 29, 2000. Its continuation-in-part, claiming § 120 benefit, was filed March 14, 2002 and published July 11, 2002 under § 122(b). The first application was abandoned and the second later abandoned, with the parent never published. The appealed application was filed Feb. 14, 2002 with no earlier benefit claim. The relied-upon portions were fully described in the parent, and appellant did not contend otherwise. KEY QUOTE: "Whether the published application, or its parent application, was abandoned is not relevant to the prior art status of the published U.S. patent application." (p. 9) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board followed In re Wertheim, 646 F.2d 527, 209 USPQ 554 (CCPA 1981), and found MPEP 2126.01 and 2127 not relevant to published applications. PRACTICE TIP: Do not argue that abandonment of a published application or its parent removes its prior art status or limits it to its publication date. Instead, contest the § 120 benefit claim or whether the parent supports the cited subject matter under § 112, first paragraph, and the examiner should map the cited passages to the parent.