Ex Parte Mok et al

Board of Patent Appeals and Interferences

May 10, 2007

10823849 (B.P.A.I. May. 10, 2007)

The opinion in support of the decision being
entered today is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte YEUK-FAI EDWIN MOK and SON T. NGUYEN
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Appeal 2007-0841
Application 10/823,849
Technology Center 2818
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Decided: May 10, 2007
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Before RICHARD E. SCHAFER, RICHARD TORCZON, and CAROL A.
SPIEGEL, Administrative Patent Judges.

TORCZON, Administrative Patent Judge.
DECISION ON APPEAL
INTRODUCTION
The claimed invention generally relates to a system for annealing
semiconductor substrates. The Examiner found that a published application1
anticipated all pending claims under 35 U.S.C. 102(e). The Applicants
(Mok) have appealed. We reverse.

1 Michael X. Yang et al., "Multi-chemistry plating system", US
2004/0016637 A1 (published 29 January 2004) (Yang).
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Application No. 10/823,849

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BACKGROUND
Mok's application was filed 13 April 2004.2 Mok claims the benefit
of a provisional application filed 18 April 2003. The Examiner does not
contest Mok's benefit claim.
The Office published the Yang application on 29 January 2004.3 The
Yang application was filed on 8 July 2003 and claims the benefit of
numerous applications including a provisional application, 60/435,121, filed
19 December 2002.4 The Examiner relies on the provisional application to
establish an effective filing date for purposes of §102(e).
ANALYSIS
Section 102(e)(1) provides in relevant part that an Applicant is not
entitled to a patent if the claimed invention—
was described in (1) an application for patent, published under
section 122(b), by another filed in the United States before the
invention by the applicant for patent….
As a threshold matter, we must be satisfied that the Yang published
application qualifies as prior art under §102(e)(1). The Yang published
application does not, on its face, have a sufficiently early filing date to
anticipate Mok's claims. The '121 provisional application cannot itself be
the basis of the rejection since it was not published as §102(e) requires.5

2 Application, certificate of mailing.
3 Yang, coversheet.
4 Yang, coversheet.
5 In re Wertheim, 646 F.2d 527, 535, 209 USPQ 554, 562 (CCPA 1981)
(criticizing the board opinion because "an abandoned [benefit] application
by itself can never be a reference").
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Thus, the question is whether the Yang application should be given the
effective filing date of the '121 provisional application.
According to binding precedent,6 the purpose of §102(e) is the
codification of the Supreme Court's holding in Alexander Milburn Co. v.
Davis-Bournonville Co., 270 U.S. 390 (1926). The Wertheim court
explained that a benefit application can only provide an effective filing date
for a reference if, "'but for' the delays in the Patent Office, the patent would
have earlier issued and would have been prior art known to the public."7
Any delay in publishing the '121 provisional application can in no way be
attributed to the Office, however, since a provisional application is excepted
from publication.8 Similarly, any delay in issuing the '121 provisional
application cannot be attributed to the Office since provisional applications
do not automatically proceed to examination and thence issuance.9
The Examiner has the initial burden in making a rejection to set forth
the basis for the rejection. In the present case, the Examiner has not
articulated a theory on why the '121 provisional application would have been
available as a reference but for the delays of the Office. It appears that the
filers of the '121 provisional application chose a route that would ensure that
it not become available as a reference without some further action on their
part. Thus, even assuming that the '121 provisional application has the

6 Wertheim, 646 F.2d at 532, 209 USPQ at 559, binding in view of South
Corp. v. United States, 690 F.2d 1368, 1369-71, 215 USPQ 657, 657-58
(Fed. Cir. 1982) (en banc).
7 Wertheim, 646 F.2d at 536, 209 USPQ at 563.
8 35 U.S.C. 122(b)(2)(A)(iii).
9 35 U.S.C. 111(b)(5) (provisional applicant must request provisional
application be treated as an application or face abandonment).
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Application No. 10/823,849

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requisite anticipating disclosure, it does not follow that it provides an
effective date for the published application.
The Wertheim court complained that the Examiner had done nothing
to establish the earlier date other than noting 35 U.S.C. 120.10 In the present
case, the Examiner's answer is silent and the final rejection merely says "See
MPEP 706.02(f)(1)[R-3]; for example, see Example 2."11 Currently
(revision 5), Example 2 under §706.02(f)(1) of the Manual of Patent
Examining Procedure (MPEP) states—
For reference publications and patents of patent applications
filed under 35 U.S.C. 111(a), the prior art dates under 35 U.S.C.
102(e) accorded to these references are the earliest effective
U.S. filing dates. Thus, a publication and patent of a 35 U.S.C.
111(a) application, which claims *>benefit< under 35 U.S.C.
119(e) to a prior U.S. provisional application or claims the
benefit under 35 U.S.C. 120 of a prior nonprovisional
application, would be accorded the earlier filing date as its prior
art date under 35 U.S.C. 102(e), assuming the earlier-filed
application has proper support for the subject matter as required
by 35 U.S.C. 119(e) or 120.
The only change from revision 3 on which the examiner relied appears to be
the substitution of "*>benefit<" for "priority". Note that the MPEP example
treats a benefit claim to a provisional application under 35 U.S.C. 119(e) as
equivalent to a benefit claim to a prior application under §120.
Section 119(e)(1) reinforces this parallelism by using language functionally
equivalent to the language of §120.12 The problem with the Examiner's
position is that neither §119(e)(1) nor the MPEP address the but-for

10 Wertheim, 646 F.2d at 535, 209 USPQ at 562.
11 Final rejection at 7.
12 Compare §119(e)(1) with §120.
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requirement of extending back reference filing dates under §102(e). Nothing
in §119(e)(1) expressly or even implicitly overturns the binding precedent.
It is tempting to say that Wertheim was wrong to import a but-for
requirement into §102(e) or that subsequent amendments to §102(e) have
eviscerated Wertheim. The time to make those arguments, however, is when
the rejection is made. On the present record, the '121 provisional application
does not appear to be available to back-date the Yang published application.
The Yang published application is not sufficiently early to anticipate on its
own. Consequently, we have no proper prior art for the §102(e) rejection.
REVERSED

hlj

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